The Complainant is Jeff Chasick, Acworth, Georgia, United States of America.
The Respondent is Vitian Resources Corporation, Austin, Texas, United States
of America, represented by its principal, Mr. Roy Stocker, Austin, Texas, United
States of America.
2. The Domain Name and Registrar
The disputed domain name <firewiredepot.com> is registered with Network
Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2006. On May 1, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On May 2, 2006, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant provided additional information. On May 29, 2006, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 18, 2006. The Response was filed with the Center on June 19, 2006.1
The Center appointed Richard G. Lyon as the sole panelist in this matter on July 4, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On July 12, 2006, the Panel issued Procedural Order No. 1, requesting additional
material from the Complainant. Complainant filed some of the information requested
on July 14, 2006. The Panel discusses this information in the following section.
4. Factual Background
Both parties have supplied very little evidence in support of their respective allegations. The facts that the Panel finds established by competent evidence or by admission of a party are set out in this Section 4. Certain disputed facts and factual allegations for which there is no evidentiary support are, to the extent necessary, noted in the Parties’ Contentions or in the Panel’s Discussion and Findings.
Complainant operates an online business called FireWire Depot at “www.fwdepot.com”, through which he sells computer-related hardware. Complainant has no registered trademarks that incorporate the word “firewire”, but has operated this business under this name since 2000.
Respondent also sells computer products, apparently hardware and software, at an online store at “www.firewiredirect.com”. Respondent also maintains a website at “www.vitiandomainservices.com”, where a consumer may search for and register a domain name. Respondent’s principal is Mr. Roy Stocker, the individual who has submitted the Response in this proceeding.
Respondent purchased the disputed domain name from a third party in 2000. The seller apparently solicited bids from both Complainant and Respondent, then sold the disputed domain name to the higher bidder.
In 2000, Complainant brought a lawsuit against Respondent in the United States District Court for the Northern District of California, claiming among other things that Respondent’s use of the disputed domain name was improper. Both parties refer to this lawsuit and the consent judgment in their submissions, but neither submitted any documentation related to the lawsuit. In Procedural Order No. 1, the Panel requested Complainant to submit the complaint and consent judgment, and in response the Complainant submitted the consent judgment only. Respondent submitted the paragraph of the consent judgment quoted below and much additional matter, reiterating arguments made in his original Response and not requested by the Panel. Complainant then submitted a reply to Respondent’s submission that contained further argument, and the Respondent answered Complainant’s submission with another email message replying to Complainant’s arguments.
Supplemental Orders are permitted by the Rules, paragraph
12, in the Panel’s “sole discretion.” Some panels accept unsolicited
filings if properly justified, see WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Section 4.2.
The additional material and argument were not only unsolicited,2
the Panel expressly directed the parties not to submit anything not expressly
requested. In Procedural Order No. 1 the Panel requested:
1. The “settlement agreement of a lawsuit that was filed against the Respondent in 2000” that is referred to in the Complaint.
2. The complaint in this lawsuit.
The Panel went on to state: “Submission of any material not expressly requested by the Panel shall be grounds for disallowing the entire submission.” Given each party’s clear violation of the Panel’s direction, Respondent’s two additional submissions and Complainant’s final additional submission are disallowed and the Panel will not consider them in deciding this matter.
The settlement agreement in the earlier litigation, which was entered as the judgment of the court on September 12, 2002, includes the following paragraph:
DEFENDANT’S [including Respondent] agree to acquire the URL (Uniform Registered Location) www.FireWireDepot.com and further agree not to use or transfer the URL after it is acquired.
At present, the disputed domain name does not resolve
to any website. The Panel received the following message when he attempted to
access it: “Network access message: the page cannot be displayed.”
5. Parties’ Contentions
The Panel summarizes the parties’ contentions as follows:
A. Complainant
Rights in a Mark. Complainant has done business under the “FireWireDepot” name continuously since 2000 and, therefore, has common law trademark rights in that phrase. As the disputed domain name is identical except for the addition of the TopLevelDomain “.com”, paragraph 4(a)(i) of the Policy is satisfied.
Rights or Legitimate Interests. Respondent lacks rights or legitimate interests in the disputed domain name as he has never been known by that name (his business is FireWireDirect). Quoting from the Complaint, “Respondent is using the [disputed domain name] to cause damage to Complainant’s business and using the [disputed domain name] for commercial gain by misleading and diverting customers or to tarnish the trademark, service mark at issue – see the following URL (and other online sites documented this as well) which documents this fact dated April 17, 2001 – http://domac.com/do/fire-what-com-/22012.html. At this website there is a comment from “a reader” that “FireWireDirect.com purchased the [disputed domain name] in March [2001] and is pointing it to its own website.”
Bad Faith. Respondent’s bad faith is shown by the diversion described above and by its consequent breach of the settlement agreement and consent judgment, described by Complainant as “to not actively use the [disputed domain name] and was asked to give possession of the [disputed domain name] to the Complainant (which he never did) and continues to hold/renew. . . solely to not allow Complainant to have possession of the [disputed domain name].” This was done to prevent the trademark owner from reflecting his mark and a corresponding domain name, to interfere with a competitor’s business, and intentionally to attract users to Respondent’s website by creating confusion with Complainant’s mark, in violation of paragraph 4(b), clauses (ii) – (iv) of the Policy.
B. Respondent
Rights in a Mark. Complainant lacks any rights in the “FireWire” name. This is a common word in the computer industry, and Complainant admits that it has no registered mark that incorporates the phrase “FireWire”.
Rights or Legitimate Interests; Bad Faith. In reply
to the Complainant’s contention about the consent judgment, Respondent
states: “I do not use the domain name as I agreed not to use it previously
and you will see the domain name has not [been] active.”
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of
the following:
(a) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service in which the Complainant has rights; and
(b) that the Respondent has no rights or legitimate interests in respect to the Domain Name; and
(c) that the Domain Name has been registered and is being used in bad faith.
Complainant bears the burden of proof on each item.
The Panel may resolve this proceeding simply and quickly, as on the evidence in the record Respondent has a right to ownership of the disputed domain name and Complainant has not proven that Respondent has used the disputed domain name in bad faith.
Complainant is simply wrong when he asserts that the consent judgment required Respondent to transfer the disputed domain name to him. The operative paragraph of the consent judgment provides that Respondent “acquire” the disputed domain name and “not [ ] use or transfer” it. That is apparently exactly what Respondent has done. The statement in the Complaint to the effect that Respondent has used the disputed domain name to divert customers is supported by a single Internet reference, quoted above. The date of that Internet record is prior to the consent judgment, and there is no evidence that Respondent used the disputed domain name at all after entry of the consent judgment. On the only evidence in the record, therefore, the consent judgment gives Respondent a right to ownership of the disputed domain name.
Similarly, Complainant’s only evidence of bad faith is the 2001 hearsay reference from a consumer. The Panel need not – indeed may not – evaluate that reference or take it into account in any way in this proceeding since it refers to conduct occurring prior to the consent judgment. A settlement agreement extinguishes the parties’ then-existing rights in the subject matter of the dispute; therefore, any claims relating to ownership and use of the disputed domain name arising prior to the date of consent judgment have been resolved. Even if Respondent had used the disputed domain name to divert customers in 2001, Complainant lost any right to object based upon such conduct following settlement of the dispute and entry of the consent judgment.3 Given a panel’s limited jurisdiction and lack of access to a full and complete record, a decision in a proceeding under the Policy is not binding upon the parties in subsequent litigation. Here, though, the same parties earlier litigated the same issues and reached a negotiated settlement that became the court’s judgment. That judgment is res judicata as to any matter that might have been raised in that litigation, see Cromwell v. County of Sac, 94 U.S. 351, 352 (1877), and is binding upon the Panel.
Complainant has presented no evidence of Respondent’s
bad faith at any time after the date of the court’s judgment and accordingly
has failed to carry his burden of proof under the Policy.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Sole Panelist
Date: July 21, 2006
1 Though technically filed
out of time, the Response was only one day late, and that day a Sunday. The
Panel elects to consider the Response, as a one-day delay caused no harm to
the parties or the Panel. See The Knot, Inc. v. Julia Bitton, The Nest,
WIPO Case No. D2006-0377; but see contra,
Fashiontv.com GmbH v. Mr. Chris Olic, WIPO
Case No. D2005-0994.
2 Each party's sole stated justification for its additional submission was an accusation that the other party was lying.
3 Though not necessary to the Panel's holding above, it is worth noting that Respondent paid Complainant a substantial sum of money as part of the settlement.
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