Complainant is DNA (Housemarks) Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by the law firm Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.
Respondent is Tucows.com Co, of Toronto, Ontario, Canada, represented by the law firm Adorno Yoss Alvarado & Smith, United States of America.
2. The Domain Name And Registrar
The disputed domain name <dunlop.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
This proceeding's procedural history differs markedly from the ordinary course.
Filing of the Complaint. The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2009.
Registrar Verification and Commencement of this Proceeding. On March 20, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 20, 2009, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or the “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on March 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2009.
Respondent's Request to Suspend or Terminate Proceedings. On April 15, 2009, Respondent's representative lodged with the Center its Request to Suspend or Terminate Proceedings pursuant to paragraph 18 of the Rules, citing the following reasons for its requested action:
“As provided in the rules, [Respondent] has elected to have this dispute decided in the Superior Court of Justice, for the Province of Ontario, in Canada. This jurisdiction was agreed by the Complainant at the time it filed the present UDRP. Pursuant to UDRP Policy 4(k), the ruling of the Ontario Court will take precedence over the present arbitration, and under UDRP Rule 18(a), WIPO now has discretion to dismiss or suspend the current proceeding. Please accept this email and the attached pleading as notice that a legal proceeding between the parties has been commenced in a national court of law.”
For convenience, in this decision the Panel shall refer to the Request to Suspend or Terminate Proceedings as the “Rule 18 Request” and to the lawsuit commenced in Ontario as the “Declaratory Judgment Action.”
Accompanying the Rule 18 Request was a copy of Respondent's Statement of Claim in the Declaratory Judgment Action. Respondent, as plaintiff in the Declaratory Judgment Action, seeks inter alia:
“(a) a declaration that the Plaintiff has rights or legitimate interests in respect to <dunlop.com>
(b) a declaration that <dunlop.com> has not been registered and is not being used in bad faith by the Plaintiff;
(c) a declaration that the Defendant is not entitled to the transfer of the domain name <dunlop.com>”.
The Center's case manager acknowledged this communication and replied on April 16, 2009, as follows:
“In general terms, the Center would not be in a position to suspend proceedings absent a request from the Complainant, or a joint request from both parties, to this effect. And in general, such a suspension would typically only be put into effect for a limited period of time for the purpose of facilitating or implementing any settlement between the parties, and would have its basis in consent.
In terms of the effect of any court proceedings commenced during the course of a UDRP proceeding, and the determination of any appropriate procedural steps (including any suspension or termination order), under paragraph 18 of the Rules, such matters are at the discretion of the Panel. The Center for its part does not have power to unilaterally order the suspension of UDRP proceedings under paragraph 18 of the Rules or otherwise.
In the circumstances, the Center is proposing to proceed forthwith to the appointment of a Panel, drawing to that Panel's attention (on appointment) the Respondent's request and provided information regarding the referred-to court proceedings. Determination of the matter, including any appropriate procedural steps, would then be a matter for the Panel. The Center would of course keep the parties appraised of any relevant instructions that may be received from the Panel (after appointment) in this regard.
If in the interim the Respondent was minded to submit a substantive Response in the present UDRP proceedings, the Center would also bring receipt of such Response to the Panel's attention (although consideration of such, if belatedly submitted, would also need to be at the Panel's discretion).”
By email on April 16, 2009, Respondent's representative acknowledged that the Rules left determination of Respondent's application to the Panel upon appointment, and advised the Center that Respondent would not be filing a Response in this proceeding.
Complainant filed a Reply to the Rule 18 Request on April 21, 2009, urging denial of Respondent's Request for the following reasons:
a. Leaving this matter to the Ontario court will leave the parties' dispute unresolved for an indefinite period of time, contrary to the strict deadlines and underlying purpose of the Policy to provide prompt resolution of cybersquatting disputes.
b. The authority cited by Respondent for termination and suspension involved litigation or arbitration commenced prior to initiation of Policy proceedings, and involved issues far broader and more complex than a simple dispute over entitlement to one domain name. Here the issues presented and remedy sought are identical to those in this proceeding.
c. A decision by the Panel in this proceeding may help the parties evaluate their rights in the lawsuit, perhaps facilitating settlement, and provide guidance to the court hearing the litigation.
d. “Respondent's request is a transparent attempt to avoid an unfavorable decision on the merits. On virtually identical facts the panel in Aubert International SAS and Aubert France SA v. Tucows.com Co.,
WIPO Case No. D 2008-1986, ordered transfer of this same Respondent's domain name to the Complainant.”
e. Complainant's trademark is famous and Respondent is generating revenue by posting pay-per-click advertisements for products and services which directly compete with Complainant's goods and services classic cybersquatting.
f. By intentionally defaulting in this proceeding, Respondent has not denied any of the allegations in the Complaint, and the Panel should proceed to decide the matter wholly on the basis of the Complaint.
On April 27, 2009, Respondent submitted a Reply Brief,1 arguing as follows:
a. Policy decisions are “subordinate to the decisions of national courts of law.” Because of this any decision by the Panel “will not and cannot be implemented by the Registrar, which must follow the rulings of courts of law over the rulings of the UDRP panel.” Respondent has the right to proceed in court, has done so successfully in the past, and will do so in this proceeding regardless of how the Panel rules.
b. Complainant's contention that Respondent's failure to submit a Response in this proceeding automatically results in a decision for Complainant is “patently wrong.” In any event the national courts, in this case of the Province of Ontario, Canada, will decide this matter.
c. In summary, “Complainant has given this Panel no valid reason to render a non-binding advisory opinion on facts that won't be finally resolved elsewhere, and this Panel should exercise its discretion to suspend or dismiss this proceeding.”
Communications between the Registrar and the Center. Following its standard practice, on March 27, 2009, the Center contacted the Registrar, noting that the disputed domain name was due to expire on May 28, 2009, and asking the Registrar (i) to confirm in accordance with ICANN's Expired Domain Deletion Policy, paragraph 3.7.5.7, that the domain name would be placed on registrar lock and would remain in such status until after conclusion of the Policy proceeding, and (ii) whether any action was required by either party to keep the domain name under register lock so that the administrative procedure could continue as required under the Policy.
The Registrar responded on March 27, 2009, stating that the disputed domain name would remain on Registrar lock status until after conclusion of this proceeding, and that the Registrar “will make sure the domain name is renewed before it expires.”
On April 23, 2009, the Registrar sent a further email to the Center, stating as follows (emphasis supplied):
“We have received notice the Respondent has commenced a legal proceeding against the Complainant in a jurisdiction to which the Complainant has submitted under Paragraph 3(b)(xiii) <http://www.icann.org/dndr/udrp/uniform-rules.htm> of the Rules of Procedure.
Accordingly, we will not implement any decision issued by the Panel, and will take no further action until we receive satisfactory evidence that that this matter has been resolved.”
The Center acknowledged receipt of this communication on April 27, 2009.
Notification of Respondent's Default. Following the deadline for a Response the Center notified Respondent's default on April 17, 2009.
Appointment of the Panel. The Center appointed Richard G. Lyon as the sole panelist in this matter on April 29, 2009. The Panel finds that it was properly constituted and has jurisdiction over this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant or its predecessors and licensees own many trademarks worldwide for DUNLOP in connection with many goods and services, most notably tires and sporting goods but also accessories, clothing, and footwear. Among the trademarks it owns are trademarks registered with the United States Patent and Trademark Office and the Canadian Intellectual Property Office. Complainant or its predecessors have used the Dunlop name in commerce since 1899 and its marks are distinctive and famous in the trademark sense. Complainant has never licensed Respondent to use its DUNLOP marks.
Respondent, an affiliate of the Registrar, or its predecessor company registered the disputed domain name in 2006 or earlier. At various times subsequently to its registration of the disputed domain name Respondent has used it for click-through revenue pages, with multiple links to commercial websites that offered goods or services competitive with those sold by Complainant. The parties' contentions on the Rule 18 Request indicate that Respondent has also used or intends to use the disputed domain name as part of its “surname” or “vanity” domain name service. This service offers an individual customer of Respondent the opportunity to use his or her surname as a second level domain name, for example an individual named James Dunlop might be able to use <[email protected]>.
As of April 27, 2009, Respondent had not served Complainant with its Statement of Claim in the Declaratory Judgment Action, and neither party provides any anticipated timetable for conclusion of that civil action.
Respondent has been involved in two similar Policy proceedings: the case cited by Complainant, Aubert International SAS and Aubert France SA v. Tucows.com Co.,
WIPO Case No. D2008-1986 (the Aubert case), and also Pernod Ricard v. Tucows.com Co.,
WIPO Case No. D2008-0789 (the Ricard case).2 Both of these cases were decided by three-member panels, and in both cases the panel ordered a transfer, with one panelist dissenting in the Aubert case. The Panel's opinion in the Aubert case indicates that following the panel's decision in the Ricard case Respondent commenced a civil action in Toronto, Ontario, Canada seeking a declaration that its registration of the domain name at issue in that case was not made in bad faith.3 As noted above, Respondent has submitted a copy of an order of the Ontario Superior Court of Justice that includes a finding that its registration of another disputed domain name was not made in bad faith, and a dismissal of the action. Though not entirely clear from that declaration, this order appears to have been entered on consent.
5. Applicable Policy Provision And Rule
The following provisions of the Policy and Rules are pertinent to the Panel's consideration in the present case.
Paragraph 4(k) of the Policy provides:
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.
Paragraph 18 of the Rules provides:
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.
(b) In the event that a Party initiates any legal proceedings during the pendency of an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, it shall promptly notify the Panel and the Provider. See Paragraph 8 above.
6. Discussion And Findings
The Panel shall first consider Respondent's Rule 18 Request, as granting the relief requested there would obviate any need for the Panel to address the merits.
In the Panel's view, in the circumstances of the present case, Complainant advances no compelling argument for the Panel to proceed to a decision on the merits. One of its arguments, that the failure to provide a response results in a default judgment (as would occur in civil litigation in the United States or Canada), is mistaken as a matter of Policy precedent. Failure to respond in a Policy proceeding does not of itself constitute an admission of any pleaded matter or result in the Policy equivalent of the default judgment. WIPO Overview of WIPO Panel Views on Selected UDRP questions (WIPO Overview), paragraph 4.6; Stanworth Development Limited v. E Net Marketing Ltd.,
WIPO Case No. D2007-1228; Western Research 3000, Inc. v. NEP Products, Inc.,
WIPO Case No. D2004-0755.
Furthermore this is not the simple case of cybersquatting that Complainant paints it to be. Respondent raised serious defenses in the Ricard and Aubert cases, drawing a compelling dissent in the latter proceeding. Should the Panel proceed to decision those issues would need to be resolved, and resolution in either party's favor would by no means be a foregone conclusion.
Complainant's argument that a decision by this Panel may assist the parties in evaluating their rights, facilitate settlement, or provide guidance to the Ontario court also seems unpersuasive. A decision by the Panel on the merits under the Policy appears unlikely to aid the parties or promote settlement in the circumstances of this case. Respondent has made it clear, not merely with words in a brief but with the concrete action of filing for declaratory relief in this and other cases, that it is unlikely to be any more persuaded by this Panel's resolution of the merits than it was by the panels' decisions in any of the other cases. This Panel will not presume to advise a judge who is duly authorized to resolve this matter. That judge will make a decision based upon evidence presented and contested by the parties and argued by their counsel in open court, not just papers and a single pleading by each party.4 Should the court hearing the Declaratory Judgment Action desire advice on Policy precedent, it may request such information from the parties or their counsel or by means of expert testimony.
There is, as Complainant argues, some authority for proceeding to a decision. The respondent in American College of Trial Lawyers v. John Givens,
WIPO Case No. D2008-1813, filed a declaratory judgment action in state court in the United States of America simultaneously with submitting his response in the Policy proceeding. The Panel in that case decided to exercise his discretion to deny Respondent's request to dismiss or terminate in the following terms: “this Panel determines that it shall proceed to a decision. It does so without prejudice to any determination that a court of competent jurisdiction may make in relation to this domain name dispute. The Panel notes that the decision in this administrative proceeding carries no precedential weight and is not binding on the court in which the Respondent's declaratory judgment action has been filed.” (Citation omitted). While not entirely clear from the decision in the Givens case, it appears that the panel in that case deemed the litigation manipulative or intended only for delay. This Panel, in contrast, does not find such circumstances to be in evidence on the record in the present case.
The panel in Tiara Hotels & Resorts LLC v. John Pepin,
WIPO Case No. D2009-0041, on its own initiative considered termination or suspension based upon respondent's filing, two weeks after submission of the response, an action in a national court seeking a declaration that the complainant had no rights to the applicable domain name.5 While basing its determination to proceed to decision upon some of the arguments Complainant advances here, the panel in that case also stated, inter alia: “as a matter of the equities, it seems appropriate to issue a decision here. The lawsuit in this case was filed long after the UDRP proceeding was initiated. In fact, Respondent even participated in the proceeding, filed a Response, elected to have the Complaint decided by a single-member Panel, and filed various additional submissions with WIPO. In this situation, where Respondent has expressly participated in and taken advantage of the UDRP process and has filed suit only after the Panel was appointed, it would be inequitable for the Panel to suspend its deliberations and terminate the proceeding. Instead, the Panel determines that it is appropriate for the Panel to issue its decision notwithstanding the apparent litigation that Respondent has filed.” Here, in contrast, Respondent has elected, during the present Policy proceedings but before Panel appointment and without submitting a substantive Response, a national court as the exclusive forum to decide the matter, and (as noted above) a decision by this Panel does not appear likely to facilitate settlement.
Complainant seeks to distinguish Rule 18 request based upon the timing of the institution of related civil proceedings, arguing that the Panel should treat differently those already commenced prior to institution of the Policy proceeding as opposed to the situation here, in which Respondent chose to initiate those proceedings only after the filing of the Complaint. As noted below, that is not a distinction made in paragraph 18(a) of the Rules, which grants a panel discretion to determine whether to decide, suspend or terminate in the event of legal proceedings initiated “prior to or during an administrative proceeding”. It is true that timing of post-complaint civil litigation raises the possibility of the gaming or abuse referred to in the Tiara case, and therefore is a matter that should be carefully weighed and taken into account in any panel's exercise of its discretion under Rule 18. But having done so, as discussed further below, this Panel does not find evidence of such gaming and abuse on the part of the Respondent in this proceeding.
The Panel recognizes (as did the Panel in the Tiara case) that automatically granting a request to suspend or terminate might be subject to abuse by an unscrupulous respondent, allowing complication of or undue delay in resolution of cybersquatting disputes, in contravention of the scheme for their prompt resolution envisioned by the UDRP. Paragraph 18 of the Rules, like many other procedural provisions (in the Policy and civil litigation) may be manipulated for delay or other nefarious purposes. Each Rule 18 application mandates a panel's scrutiny to detect, if possible, any such activity. After careful examination of the facts and circumstances in this proceeding and the Declaratory Judgment Action filed by Respondent, this Panel believes that nothing untoward has been demonstrated on the record before it.
As to procedure, paragraph 18 of the Rules encompasses a request being made by a party to the Panel for termination or suspension of a Policy proceeding based upon pendency of a parallel civil action, whether it be initiated “prior to or during an administrative proceeding” (emphasis added). Clause (a) of that Rule leaves to the discretion of the Panel “whether to suspend or terminate the proceeding, or to proceed to a decision.” Respondent applied to the Center pursuant to this Rule, specifically acknowledging in the Request itself and in response to the Center's email that this was not a matter of right but within the Panel's discretion. To the extent clause (b) of the Rule required notification of the Panel and the Center of the institution of the Declaratory Judgment Action, Respondent similarly complied with the letter and spirit of the Rule.
Although Respondent chose not to wait for the issuing of Panel decision under the Policy as contemplated by paragraph 4(k) of the Policy, Respondent did select a forum for its court action that is “a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding” in “a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules,” as specified in relevant part by paragraph 4(k) of the Policy. This does not appear to this Panel to amount to gaming the system. Respondent duly notified the Center and Complainant of its court filing, as prescribed in Rule 18(b), including a copy of its Statement of Claim. Nothing appears to have been hidden; Respondent appears to have been forthcoming and forthright with the Panel, the Center, and Complainant. It appears to this Panel that Respondent has, in effect, done little more that elect to have this matter determined in court, a right expressly contemplated by the Policy, which when exercised during a Policy proceeding typically triggers a determination by the Panel under Rule 18.
The substance of Respondent's civil cause of action against Complainant is virtually identical to the determinations this Panel would, should he address the merits, consider under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. The Panel considers this fact to weigh in favor of termination, contrary to Complainant's argument. Respondent's requested relief is limited to its entitlement to the disputed domain name. There is no other apparent claim, much less another claim that might make entitlement of the disputed domain name pale in importance: no claim for trademark infringement, no dispute over prior transfers of the disputed domain name or related misconduct, no claim for damages at all. When entitlement to the disputed domain name is but one of many issues in the pending civil litigation, panels have occasionally6 exercised their discretion to proceed to a decision.7
The identity of issues means that the situation is very much the same as if the Panel had proceeded to a decision and the losing party (Complainant or Respondent) then elected to exercise its right under paragraph 4(k) of the Policy to contest the matter in an appropriate national court. There are two minor differences, both of which are of little moment here. As Complainant argues, the court will be without the “benefit” of the Panel's views on the merits. But those views, whatever they might be, are not binding in any way upon either the parties or the court in post-decision litigation, for obvious reasons, including those that this Panel has stated above. Second, Respondent will not have been put to the time and expense of preparing a Response in this proceeding. Given that a decision in this proceeding will not be binding in subsequent litigation, and assuming that such litigation does in indeed go forward (as appears to this Panel to be likely given the Respondent's history of previous litigation), avoiding this expense to the Respondent does not seem to this Panel to be unreasonable in the circumstances.8
The Panel sympathizes with Complainant's desire to determine entitlement to the disputed domain name as promptly as possible. But a Panel decision on the merits (whether ordering transfer or denying the Complaint) will not advance final resolution of that question by even one hour, assuming that Respondent continues to pursue its Declaratory Judgment Action, and the Registrar refuses to implement the Panel's decision on that basis. The Registrar has already advised the Center and the parties that it will not take action with respect to the disputed domain name until that action is resolved exactly as it would have done had an unsuccessful Respondent commenced an appropriate court action within ten business days after a Panel decision and exactly as prescribed by paragraph 4(k) of the Rules. The Panel fails to see how any decision can expedite matters.9
The Ontario court is a superior forum than this Panel for final determination of entitlement to the disputed domain name. To the extent that entitlement turns on complex or contested determinations of fact, for example whether Respondent or its predecessor company had (or should have had) knowledge of Complainant's trademarks or just how “common” a surname Dunlop is, the Ontario court will likely have available a complete record, the opportunity to hear live testimony, and the “chastening process of cross-examination,”10 none of which may avail this Panel. The court will similarly have the benefit of full briefing and argument on any legal matters (under Canadian law or the Policy) that may arise. With a full record and argument the court will also be better suited than this Panel to address any questions relating to Complainant's bona fides in commencing or prosecuting the Declaratory Judgment Action.
For these reasons the Panel grants the Respondent's request for termination. Termination is far preferable to suspension, most importantly because the Policy, the Rules, and the Supplemental Rules make no provision for what may very well be a lengthy suspension, nor do they include a mechanism by which this matter might in practice be kept “pending” and resumed or reinstated at some undetermined day in the future. As noted Complainant has means available to file a new proceeding if it believes the Declaratory Judgment Action was commenced in bad faith or otherwise used to harass Complainant more than to seek judicial resolution of a legitimate grievance. Termination is without any finding by the Panel on any issue raised by the Complaint under paragraph 4(a) of the Policy, and the Panel intends that it be without prejudice to the filing of a future complaint under the Policy should the matter not be resolved in the Declaratory Judgment Action.11 While that action remains pending, Complainant's recourse should be to the court.
One final issue is worthy of note. Respondent and the Registrar are affiliated companies, a circumstance that has in other cases generated practices said to be abusive of the proper functioning of the Policy and Policy proceedings.12 No such abuses appear to the Panel to have occurred in the present proceeding, and nothing in the conduct of Respondent or the Registrar indicates that either took unfair advantage of the other's status for undue advantage before the Panel. Given the apparent contemplation that paragraph 4(k) would in the usual course of things apply only after the issuing of panel decision rather than during the proceedings, it is possible to read the italicized portion of Registrar's final email communication to the Center of April 23, 2009 (quoted above) as arrogating to itself the right to determine when it will implement a Policy decision. To this Panel that does not appear to be the Registrar's intent; rather the Registrar is noting that it will not transfer the disputed domain name until the Declaratory Judgment Action is resolved, consistently with relevant parts of paragraph 4(k) of the Policy (“[after receiving notice of a legal action] 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.”) It is on its face much the same type of message to the parties that a Registrar would make following a panel decision ordering transfer and a respondent's immediate initiation of civil proceedings to contest the panel's decision.
7. Decision
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.
Richard G. Lyon Sole Panelist
Dated: May 5, 2009
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