A One person UDRP panel rejected the claim of Navista S.A. of Perpignan, France on the domain name Navista against the domain holder/Respondent, Virtual Point Inc. dba CrossPath, who was represented by Mike Rodenbaugh.
Virtual Point, Inc. says it has been involved in the development of several sites including UDRPSearch.com
The domain holder has already filed a federal lawsuit in the District Court to halt any transfer ordered by the Panel and to recover certain compensation from the Complainant, and contends that the proceeding under the Policy should be terminated or suspended as pointless.
This is the same strategy Mr. Rodenbaugh used in the Vanity.com case to strategy in the Vanity.com case.
However like the Vanity.com case the UDRP panel chose to hear the case.
It appears at some point the domain holder asked if the UDRP panel was going to hear the case they wanted a three member panel but the Panel rejected the timing and procedure of how the three member panel was requested and therefore like the Vanity.com case, this case wound up being heard by a one member panel.
The difference from the Vanity case is that this one member panel rejected the arguments by the trademark holder and decided in favor of the domain holder.
The decision has some interesting language about why is chose to hear the case even through a complaint was already filed with the federal court and why it rejected the request for a three member panel.
Here are the relevant facts and findings by the panel”
“It would appear that the Complainant has traded under the trademark NAVISTA since at least as early as 2000. Currently the Complainant holds 96 domain names incorporating the trademark NAVISTA alone or in combination.
The Complainant holds the following trademarks:
Registered at the Office for Harmonization in the Internal Market (OHIM):
NAVISTA, registration No. 4023628, registered November 10, 2005, classes 35, 38, 42;
NAVISTA, registration No. 4383501, registered September 1, 2006, classes 9, 38, 42;
Registered at the Institut National de la Propriété Industrielle, France (INPI):
NAVISTA, registration No. 3032301, deposited or registered May 30, 2000, published July 13, 2000, classes 9, 35, 38, 41, 42.
The Respondent owns and develops domain names in the normal course of its business. Because of the Respondent’s interests in automotive navigation technology, it chose the disputed domain name and also other uncontested domain names with a navigational connotation.
The disputed domain name was registered on June 19, 1998.”
“The Complainant says that the Respondent, although passively, has intended to sell the disputed domain name at a price that exceeds the documented costs of registration. There were negotiations in which the Complainant variously offered USD 1,500.00 and later USD 3,000.00, and the Respondent asked for variously USD 25,000.00 and USD 18,000.00.”
“The Complainant says it is clear that by the Respondent’s provision of links to other businesses, many having nothing to do with the Complainant, the Respondent has tried to benefit commercially and to attract visitors by confusion with the Complainant and its trademark.”
“In the event that the Panel decides to proceed to a decision on the merits, the dispute should be decided by a three-member Panel.”
“The Respondent further contends that it has rights and legitimate interests in the disputed domain name through its own goodwill and usage and that the Complainant has not substantiated otherwise. The word “Navista” incorporated into the disputed domain name is relevant to the Respondent’s interests in automotive navigation. The Respondent, a California corporation, was unaware of the Complainant, a European company.”
“The Respondent says the name “Navista” is not exclusive to the Complainant. Records are produced comprising copies of Trademark Electronic Search System (TESS) entries at the United States Patent and Trademark Office (USPTO) principal register for trademarks incorporating “Navista” belonging to Navista, Inc. Corporation Virginia, in the sphere of public affairs, filed April 25, 2000, published January 15, 2002, registered April 9, 2002 and May 14, 2002.”
“The Respondent lists 13 domain names incorporating “Navista” that it contends have no relationship to the Complainant. Screen captures are produced of some of the associated websites including “www.navista.co.in”, which offers electronic menus for restaurants; “www.navista.com.tr” which hosts Navista Marine Services; and “www.navista.co.uk” which offers bar code scanners. A list of 36 domain names is supplied, arranged alphabetically from <avista.com> and <aavista.net> to <zavista.com>, in a contention that any resemblance between the disputed domain name and the Complainant’s name is coincidental.”
“Initially, the Respondent replied to the Complaint by submitting to the Center, inter alia, a “Notice of civil action and request for dismissal without prejudice or in the alternative, stay of administrative proceedings” (the “Notice”). The Respondent attached copies of documents filed with the District Court, bearing the stamp of the Clerk of the Court, dated June 6, 2012. In the Notice the Respondent describes its Court filing as “a civil action against Complainant in the United States District Court, Central District of California, for a declaratory judgment of non-infringement with respect to Respondent’s registration and use of the domain name at issue in this case.” Thus the Respondent’s intention is that the District Court shall rule on what the Respondent refers to as the “same issues brought in Complainant’s Complaint” and further says that “a ruling by that court will take precedence over any ruling by this Panel”.
The Policy protects the rights of the parties to engage in alternative court action, stating at paragraph 4(k):
“Availability of Court Proceedings.
“The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel’s decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details.) If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel’s decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name.”
“The Panel’s discretion in the event that either party engages in court action is specified in paragraph 18(a) of the Rules:
“Effect of Court Proceedings
“(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
“The Respondent in its Notice, under the heading “The Instant Proceeding Should Be Dismissed”, has argued that the Panel in this case should exercise its discretion to terminate the proceeding; or in the first alternative, should stay the proceeding for the pendency of the action in the District Court; or at least, should grant further time for the filing of a Response.
“In arguing for a termination of the proceeding, the Respondent invites the Panel to draw precedent from, inter alia, the decision in DNA (HOUSEMARKS) LIMITED V. TUCOWS.COM CO., WIPO Case No. D2009-0367 (DNA), in which the respondent instituted court action and the final decision of the respected panelist was:
“The Panel hereby orders, pursuant to paragraph 18(a) of the Rules, that this proceeding be terminated. This termination shall be without prejudice to Complainant’s filing a new complaint under the Policy at any time following termination of the pending Declaratory Judgment Action in Canada, but with prejudice if filed before that lawsuit is terminated.”
“The Respondent seeks to remind this Panel of certain of the many valuable and well reasoned points of argument made by the respected panelist in DNA in support of not proceeding to a decision in that particular case. These included, among many others, the inadvisability of a panel producing a decision on the papers alone that might be taken as presuming to give advice to a court that may hear the case in more detail, with the benefit of evidence presented and contested in open court. The panelist in DNA also took into consideration the relevant respondent’s clean hands in apparently not having tried to game the system, for instance by creating intentional delay.
“With the greatest respect to the respected panelist in DNA, the Panel in the present case can see balancing arguments that may support proceeding to a Decision. A proceeding under the UDRP is not, and is different from, the envisaged proceeding in the District Court. A proceeding under the UDRP is intended in both letter and spirit to provide the Parties with a swift and timely decision according to a tight schedule and a limited series of pleadings. Significantly, the equivalent of the statute applicable under the UDRP is the Policy itself, read in the context of chiefly the Rules, the Supplemental Rules, and the contract between the registrant and the registrar. The decision-making process, whilst aiming for consistency, is essentially fact-specific and is not strictly precedential.”
“By contrast the proceeding in the District Court will be based on applicable United States and Californian law, procedure and precedent. Thus, it may be noted that the Respondent’s pleadings before the District Court include matters of trademark infringement, unfair competition under the California Business & Professions Code, and the (USA) Anticybersquatting Consumer Protection Act. ”
“The UDRP is concerned with abusive registration, legitimate use, bad faith, and specific criteria surrounding the possible confusion of a disputed domain name with a trademark.”
“According to circumstances, UDRP panels have decided to terminate, suspend or proceed with a decision. The balance, in the face of a respondent’s court action, was discussed in BD Real Hoteles, SA de C.V. v. Media Insights aka Media Insight, WIPO Case No. D2009-0958, in which the respected panelist said “The Panel’s view is that the Policy generally obliges a Panel to make a decision on a complaint”.
“The present Panel takes the view that the Complainant has made a valid Complaint under the UDRP and, absent circumstances to the contrary, is entitled to a decision on the merits of its Complaint without delay. ”
“The Panel entertains no notion of what may be done with the Decision after the Panel is functus officio and does not address its Decision to the attention of any other forum. The Panel is also concerned that as a general principle, and without any aspersion as to the motivation of either Party in this case, diversions that may create inordinate delay, and thereby negate the best intentions of the UDRP, should be avoided unless the circumstances are exceptional. Partly for this reason the Panel does not consider a significant stay of the proceeding to be a viable option.”
“The Request for Dismissal or Stay is denied. The Panel will proceed to a Decision.”
“ii. Respondent’s Request for a Three-Member Panel
“It was not until July 13, 2012, in reply to the duly appointed Panel’s Procedural Order No. 1, that the Respondent first asked for a three-member Panel. ”
“In this Panel’s assessment, having been duly appointed and having exceptionally granted the Respondent an additional period to make submissions, nothing in the Rules (paragraphs 5 and 6) or the Policy provides for either party mandating during the course of the deliberations a switch from a sole Panelist to a three-member Panel (Facebook, Inc. v. Amjad Abbas, WIPO Case No. DME2010-0005).”
The Panel finds that the disputed domain name <navista.com> is identical to the trademark NAVISTA in which the Complainant presently has rights as required under paragraph 4(a)(i) of the Policy.
“It has been recognized that the requirement to prove both registration and use is conjunctive, and that in order for a complainant to be able to succeed registration in bad faith must be proven independently.
“The disputed domain name was registered in the name of the Respondent on June 19, 1998, prior to the implementation of the UDRP in 1999, by which the Respondent is nevertheless bound by reference. ”
“The Complainant has produced copies of three trademark registrations held in its name for NAVISTA, the earliest being the INPI registration having a date of deposition or registration of May 30, 2000, which was published on July 13, 2000. ”
“Thus the earliest date for which the Complainant has asserted prior existence of its trademark, whether registered or otherwise, is nearly two years after the Respondent registered the disputed domain name.”
“Logically, a complainant is unlikely to be able to prove that a domain name was registered with the intention to conflict in bad faith with a complainant’s trademark that did not exist at that time. In the event that the disputed domain name might hypothetically have conflicted with a similar trademark held by an entity unrelated to the Complainant, that is not a matter before the Panel.”
“The matter does not necessarily end there, however, as there might be circumstances in which a domain name could be registered in bad faith in order intentionally to exploit some informed anticipation that a similar trademark would be registered in the future. There is no evidence or suggestion in this case that the Respondent may have anticipated the Complainant’s trademark plans, for example through inside knowledge, a predictable new company name, or the expectation of a future product.”
“On occasions the character of use of a domain name may in itself provide a retrospective source of evidence of a registrant’s intentions at the time of registration, on the balance of probabilities, particularly where the usage has been immediate, material, and in self-evidently bad or good faith. Irrespective of the use of the presently disputed domain name over the years since its registration, there is no evidence pointing to any original intention to target the Complainant, especially given the gap of nearly two years between the registration dates of the disputed domain name and the Complainant’s trademark respectively.”
“The Complainant lists 78 domain names in its ownership comprising the trademark NAVISTA standing alone followed by a top or second level directory, such as <navista.asia> and <navista.za.com>, together with 18 domain names incorporating a combined form of the trademark such as <navistabox.com> and <navista-services.fr>, a total of 96 domain names. ”
“As the Complainant itself says, “It is abundantly clear that NAVISTA S.A. has attempted to maintain a policy of protecting its registered trademark, not only by registering its trademarks, but also by processing the greatest possible number of domains in as many countries as possible; for that reason, it is reasonable to think that the domain NAVISTA.COM is also claimed by NAVISTA S.A.”
“The Complainant’s determined pursuit of a comprehensive Internet presence since at least as early as 2007 is illustrated by the registration dates of its domain names, some of which date back to 2007 including <navista.ch>, <navista.name>, <navista.mobi>, <navista.us>, <navista-ns1.com> and <navista-ns2.com>.
“The Respondent has countered with a list of 13 “Navista” domain names, four of them illustrated with website screen captures, that it says have no connection to the Complainant. ”
“In other words, the trademark or name “Navista” is somewhat less than exclusive.”
“Understandably from the Complainant’s point of view, it desires the disputed domain name, <navista.com>. It may reasonably be presumed that the Complainant, by 2007, was knowledgeable about the Internet, would have checked at an early stage for the availability of <navista.com>, and should have been aware at least 5 years ago that it had been taken 9 years previously.”
“More than 12 years have elapsed since the Complainant’s deposition or registration of its trademark on May 30, 2000. ”
“The disputed domain name was taken 14 years ago on a basis of first come, first served, and the Complainant has not come close to proving that the Respondent could have nurtured bad faith towards the Complainant at that time. ”
“There can be no principle that the creation of a trademark thereupon creates rights in the pre-existing equivalent domain name. A finding against the Complainant under paragraph 4(a)(iii) of the Policy is inevitable.”
“No statute of limitations, or doctrine of laches, is incorporated explicitly into the Policy.”
“Paragraph 15(a) of the Rules, however, empowers the Panel to decide the Complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. As the respected panelist in a previous case said, “The longer the time a disputed domain name has been registered, the more difficult it is for a complainant to prove bad faith registration.” (AVN Media Network, Inc. v. Hossam Shaltout, WIPO Case No. D2007-1011). Had the present decision been less transparent, the Complainant would not have been helped by the delay in lodging the Complaint.”
“On occasion a panel may opt to continue a discussion past the point of inevitability in order to provide additional reasons for the decision. The Parties in this case have projected a litigious stance, with the Complainant referring repeatedly to this “lawsuit” and the Respondent having filed papers in the District Court. Accordingly, in case this dispute may move to another forum, the Panel will refrain from discussion of issues surrounding bad faith use or the legitimacy of any Respondent interest in the disputed domain name.”
“The Respondent has argued at length for a finding of attempted reverse domain name hijacking (RDNH) against the Complainant.
“A number of cases under the UDRP seem to fall into the category whereby a corporation belatedly realises it should have registered a certain domain name long ago, and sets upon a mission that it may view as “retrieving” it. A finding against the Complainant does not equate with RDNH; considerably more is required. Absent any grave inequality of arms such as might have converted the Complainant’s good try into harassment, and again out of reluctance to move beyond the issue pivotal to this Decision for the reason given above, the Panel declines to find Reverse Domain Name Hijacking.”