Netro Corporation v. James Koustas
Claim Number: FA0204000109723
PARTIES
The Complainant is
Netro Corporation, San Jose, CA (“Complainant”) represented by Clark S.
Stone, of Skjerven Morrill LLP.
The Respondent is James Koustas, Littleton, CO (“Respondent”)
represented by Robert A. Badgley, of Lord, Bissell & Brook.
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue
is <netro.com>, registered with Network Solutions.
PANEL
The undersigned
certifies that they have acted independently and impartially and to the best of
their knowledge have no known conflict in serving as Panelists in this
proceeding.
Hon Irving H. Perluss
(Ret.) served as Panelist.
Prof. David Sorkin
served as Panelist.
R. Glen Ayers served as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum (“the Forum”) electronically on
April 16, 2002; the Forum received a hard copy of the Complaint on April 18,
2002.
On April 23, 2002,
Network Solutions confirmed by e-mail to the Forum that the domain name <netro.com>
is registered with Network Solutions and that the Respondent is the current
registrant of the name. Network
Solutions has verified that Respondent is bound by the Network Solutions registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On April 24, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of May 14, 2002 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts, and to
postmaster@netro.com by e-mail.
A timely Response was
received and determined to be complete on May 7, 2002.
Complainant submitted a
timely additional submission pursuant to Forum Supplemental Rule 7 on May 13,
2002. Respondent also submitted an
additional submission in compliance with Supplemental Rule 7, on May 15, 2002.
On May 29, 2002,
pursuant to Respondent’s request to have the dispute decided by a three-member
Panel, the Forum appointed Hon. Irving H. Perluss, Prof. David Sorkin, and R.
Glen Ayers as Panelists.
RELIEF SOUGHT
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant.
Complainant Netro Corporation
(“Netro” or “Complainant”) says that it is a global provider of broadband fixed
wireless access systems, founded in November 1994. It alleges that it has used the mark NETRO continuously in
connection with its business. Netro
became a publicly traded company in August 1999; it trades on the NASDAQ market
under the symbol NTRO. Netro registered
the domain name <netro-corp.com> in September of 1996 and has maintained
a web page since 1996. Netro applied
for registration of the trademark NETRO with the United States Patent and
Trademark Office in January of 2000.
Netro states that it was
unable to register <netro.com> in 1995, because that domain name
was unavailable; it later learned that the name was registered to and being
used by an unidentified offshore Internet Service Provider. Sometime after 1996, Respondent James
Koustas (“Koustas”or “Respondent”) acquired the <netro.com> domain
name.
Complainant asserts that
the domain name is identical or confusingly similar to Netro’s name and also to
the trademark it uses. It asserts use –
particularly as its corporate name -- since November of 1994. Netro also
asserts common law trademark rights based on continuous use since at least
November 1994.
Netro says that
Respondent, Koustas, is not offering any bona fide goods or services in
connection with <netro.com>; that he is not known by the name
“Netro”; and, that he does not operate a business or other organization under
the name. Netro says that <netro.com>
is has been used to divert visitors to the web page of “Fighting Bull Technologies LLC,” a web site
that appears to lack any information more current that August of 2000, and
where the majority of the information on the website dates from 1999. Complainant asserts that there is no legitimate
business purpose involved and that Koustas is attempting to “hold” the domain
so that he can auction the name to the highest bidder. Netro alleges that Koustas is in the
business of acquiring and selling Internet domain names and that he has
asserted that he own “thousands of domain names.”
Upon being informed of
Complainant’s interest in the name, Koustas attempted to sell the domain name
for a substantial sum; he allegedly demanded “six figures.”
Netro says that, while
Koustas variously claims to have owned the <netro.com> domain
since either 1994 or 1995, Network Solution’s records indicate that Koustas
registered <netro.com> with Network Solutions on or about July 19,
2000. Under Policy ¶ 2, it was Koustas’
responsibility to determine whether his domain name registration infringed or
violated someone else’s right.
Even if Koustas did not
know of Netro’s rights in NETRO at the time he registered “netro.com”, Koustas’
continued use of “netro.com” is in bad faith as defined by Policy ¶ 4(b).
Koustas has told
Complainant that he will not sell the domain name to Netro for less than “six
figures,” or $100,000, an amount far in excess of any out-of-pocket costs he
may have incurred for the domain name.
Registration and use of a domain name for the purpose of selling it to a
trademark holder, or to a competitor of a trademark holder, for valuable
consideration in excess of out-of-pocket costs is evidence of bad faith
registration and use.
Complainant says that
additional evidence of the bad faith acquisition or registration of <netro.com>
can be found in the nature of Koustas’ business, which is the buying and
selling of domain names. Koustas’ July
19, 2001 email states that his business partner is his brother, Nick Koustas. Nicholas Koustas is the President of
“Rolling Dice Productions” (“RDP”), and Koustas is a Director of RDP. RDP is in the business of buying and selling
domain names: “RDP, Inc., leases,
purchases and sells domain names while also representing third parties in
related transactions.” Based on
Koustas’ assertions about owning “thousands of domains”, and his affiliation
with RDP, it is apparent that Koustas is in the business of acquiring domain
names and selling them for profit. This type of business practice is strongly
indicative of bad faith.
Respondent says first
that Complainant has no registered trademark for “Netro.” While Complainant has
applied for registration in the United States, the Complainant did not file its
application until January 13, 2000, and the application was not published for
opposition until May 8, 2001. A third
party has filed a request for an extension of time in which to oppose the
mark’s registration. More than two
years have passed without registration being granted to Complainant.
In its Complaint, Netro
alleges that the mark “NETRO” has been in continuous use since November 1994,
but in its filings with the Patent and Trademark Office, Netro stated that it
first used the mark on July 15, 1996, and first used it in commerce on that same
date. This is a 21-month discrepancy.
Complainant also has not
shown that the alleged mark is a common law mark. Netro has not alleged that the mark has acquired distinctiveness.
Complainant has failed to provide evidence that the alleged mark “Netro”
identifies Complainant’s goods or services.
In its 2000 Annual
Report, Complainant states this it has just
“successfully transitioned from being an early-stage company supplying
equipment primarily for pilot sales and customer trials to a more mature
company, delivering equipment for the first commercial rollouts of our
broadband wireless access solutions.”
In that Annual Report there is no indication that Complainant sells any
goods or services under the mark “Netro.”
Respondent asserts that the name NETRO is at best a trade name which is
not used as a mark.
Respondent asserts that
Complainant’s unregistered alleged mark is, at best, very weak, and in any
event is limited in commercial scope to the telecommunications sector.
Respondent asserts that
his family businesses have controlled and used the domain name, <netro.com>,”
since 1996. Prior to 1996, the Domain
Name was owned and used by a company that was purchased in 1996 from “Shaman”
by entities owned by his family.
The name <netro.com>
was acquired in 1996 from a company whose business activities included the
development of a three-dimensional network browser software product known as
DpIV, and the operation of an Internet Service Provider known as “DASH.com”
(“Denver Area Super Highway”). The DASH
Web site prominently featured the term “Netro” -- shorthand for “Netropolis.”
To this day, the Domain
Name <netro.com> continues to resolve to a Web page featuring the
DpIV technology and inviting visitors to enter the “Netropolis” offered by Fighting
Bull. From 1996 to the present, the
Koustas companies (Takshele and Fighting Bull) have pointed their
Shaman-acquired domain names, including <dpiv.com>, <netro.com>,
and <netropolis.com>, to Web sites featuring and/or linking to the DpIV
software and the “Netropolis” virtual city where the Koustas companies’
software and services are showcased.
In addition, from the
mid-1990s to the present, the Koustas brothers conceived of a novel Internet
business concept in early 2000 which, when brought to fruition, would introduce
a new type of insurance pertinent to the Internet. The Koustas brothers engaged
one of the nation’s premier law firms, Bartlit Beck Herman Palenchar &
Scot, and incorporated Netro, Inc. in June 2000. The Koustas brothers successfully sought strategic partners for
the new insurance concept, including a major insurance broker (A.J. Gallagher)
and a major law firm with a prominent insurance practice (Lord, Bissell &
Brook). Respondent’s brother, Nicholas
Koustas, is presently negotiating with one of the largest insurance companies
in the world and another large publicly-traded company, to bring about this new
insurance product.
The foregoing uses of
<netro.com> by the Koustas brothers since the mid-1990s easily
qualify as pre-dispute use, and/or preparations to use, the Domain Name in
connection with a bona fide offering of goods or services under UDRP ¶
4.(c)(i).
As to
“bad faith use”, Netro has proven no bad faith: “This case is nothing more than one company coveting a domain
name, failing to persuade the owner to part with it, and then launching a UDRP
complaint to acquire the domain name on the cheap.”
Koustas then asserts
that there is absolutely no evidence that Respondent acquired <netro.com>
with Complainant or its alleged mark in mind. Respondent
had never heard of Complainant or its alleged “Netro” trademark in 1996, when
Respondent’s company acquired and began using the Domain Name. He first learned of the competing use when
he received an e-mail inquiry in June 1999.
There is no evidence
that Respondent even should have known of Complainant or its alleged marks when
Respondent’s related company acquired <netro.com> in 1996, for
Complainant had at that time only an
unregistered mark for which no application had been filed.
Complainant admits that
Respondent did not register <netro.com> in bad faith, as reflected
in the assertion that “[e]ven if Koustas did not know of Netro’s rights in
NETRO at the time he registered netro.com, Koustas’ continued use of netro.com
is in bad faith ¼.” Respondent asserts
that Complainant must prove both bad faith registration and bad faith use.
Complainant
does not allege any violation of ¶ 4.(b)(iii) (disrupting a competitor’s
business) or ¶ 4.(b)(iv) (intentionally diverting Internet traffic for
commercial gain). With regard to ¶
4.(b)(ii), Complainant does not allege “preclusive registration” by
Respondent. Complainant neither alleges
nor proves that a single domain name in Respondent’s inventory is offensive to
someone else’s trademark. Respondent’s
alleged ownership of “thousands of domain names” is no more remarkable than a
supermarket’s ownership of dozens of cash registers. While several thousand UDRP arbitrations have been filed in the
past two and a half years, not a single case names the Koustas brothers (or any
related entity) as a Respondent.
The gravamen of
Complainant’s “bad faith” claim seems to be under ¶ 4.(b)(i). Complainant alleges that Respondent “has
maintained the domain name netro.com only for the purpose of selling, renting
or otherwise transferring the domain name registration to [Complainant] for
valuable consideration in excess of his out-of-pocket costs.” This claim falls flat for two reasons. First, the UDRP does not apply to bad faith maintenance
of a domain name.
Second, there is not a
shred of evidence that Respondent’s primary purpose for registering the Domain
Name was to sell it at a profit. Respondent strongly denies the assertion that Respondent “has threatened to
sell netro.com to the highest bidder....”
The e-mails attached to the Complaint confirm the opposite. Further, Respondent says that there is
nothing unusual, improper, or (most importantly in the present context)
actionable about a domain name owner responding to a series of non-hostile
solicitations from another company with a statement that his domain name is
valuable to him and he will not part with it for less than “six figures.”
It is not bad faith for
the owner of a valuable domain name to reject an unacceptable purchase offer,
absent other evidence of bad faith.
Complainant’s own
“evidence” demonstrates that Respondent did not register <netro.com>
with the primary purpose of selling, leasing, or otherwise transferring it at a
profit. Complainant heard nothing from
Respondent in 1996, 1997, and 1998. As
noted above, Respondent had never heard of Complainant until being contacted by
Complainant in 1999. Indeed, Respondent
never offered to sell or lease the Domain Name until the subject was raised by
Complainant in 1999.
Respondent also has
filed a request under Rule 15(e) for a finding that the Complainant has engaged
in reverse domain name hijacking.
Respondent asserts that the Complaint has been filed in bad faith
because both Complainant and its counsel should have known that the Complainant
could not show that it held a mark in the name “Netro;” that Complainant knew
of Respondents use of the word for years and never asserted any claim; and,
that Complainant and counsel should have known that the requisite showing of
“bad faith” could not be made. “A Rule 15(e) declaration is proper where the
complainant knows or clearly should know that it cannot prove all three UDRP
elements and nevertheless files the complaint.”
C. Additional
Submissions
Both parties submitted
additional pleadings. Both were timely.
In Complainant’s “Written Response ...,” Complainant argues that Respondent has
provided no or insufficient evidence of any
pre-Complaint use of the domain name.
Complainant also asserts that it holds a mark. As to “bad faith,” Complainant once again asserts that Respondent
is affiliated with “Rolling Dice Productions,” which allegedly holds domain
names for sale or resale.
In the “Respondent’s
Additional Submission ...,” Respondent continues to attack the Complainant’s
assertion that it holds a mark. As to
“rights in the name,” Respondent again asserts that it has been using the
domain name since 1996. As to “bad
faith,” Respondent points out that the thrust of the Complainant’s additional
submission is Respondent’s failure “to explain his affiliation with Rolling
Dice Productions, Inc. This, of course,
assumes that there is something that needs explaining. Complainant fails to
allege, still less prove, that a single domain name held by Rolling Dice or
Respondent infringes on the rights of anyone.
Respondent will not waste its, the Panel’s, time rebutting phantom
allegations.”
FINDINGS
First,
the Panel finds that the Complainant has failed to establish the existence of a
mark at common law. The mark is not
registered in the United States or in any other jurisdiction. Therefore, the Complainant must come forward
with sufficient evidence to show the existence of the mark as a common law
mark. The evidence presented is not
sufficient; conclusory affidavits and arguments are not enough. Complainant asserts that the disputed domain
name is identical to NETRO, a mark in which it holds rights by way of trademark
application currently pending before the U.S. Patent and Trademark Office. See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the
Complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist.
Rights in the mark can be established by pending trademark
applications); see also British Broadcasting Corp. v. Renteria,
D2000-0050 (WIPO Mar. 23, 2000) (noting that the UDRP “does not distinguish
between registered and unregistered trademarks and service marks in the context
of abusive registration of domain names” and applying the UDRP to “unregistered
trademarks and service marks”).
That said, Complainant
has not established common law rights
in the NETRO mark. The application has
not been granted and is contested.
There is no real evidence of a common law mark. See Cyberimprints.com, Inc. v. Alberga,
FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that the Complainant failed
to prove trademark rights at common law because it did not prove the
CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods
or services or that there was strong customer identification of the mark as
indicating the source of such goods or services); see also Lowestfare.com
LLA v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9,
2000) (finding that marks classified as
descriptive cannot be protected unless secondary meaning is proven, and to
establish secondary meaning the Complainant must show that the public
identifies the source of the product rather than the product itself).
Registration of a
company name with a state’s secretary of state does not create protectable
rights under the Policy. See
Cyberimprints.com, Inc. v. Alberga, supra (finding that, without
further evidence of common law trademark, the Complainant did not establish
rights to the CYBERIMPRINTS.COM mark within the meaning of Policy ¶ 4(a)(i) by
registering its company name CYBERIMPRINTS.COM, INC. with the California
Secretary of State); see also Sampatti.com Ltd. v. Rana, AF-0249
(eResolution July 31, 2000) (“[T]he mere fact of creating and operating a
company having as a name a common word plus a dot and a TLD suffix does not
give to the company itself the sole right to the word.”).
Next, given that the
domain name was registered on or about the time that the Complainant was
organized, and has been owned by either Respondent or its predecessors in
interest since that time, it is very difficult to see bad faith. Complainant, by its own pleadings, learned
that the domain name was registered to another as early as 1995, when it
attempted to register the domain name; it did register <netro-corp.com>
at that time.
While Complainant has
rights in the NETRO name, Respondent
also has rights in the disputed domain name by way of being the successor to
the first person to register the name. See
Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar.
20, 2000) (finding that Respondent has rights and legitimate interests in the
domain name where Complainant submitted insufficient evidence to establish
either fame or strong secondary meaning in the mark such that consumers are
likely to associate <cartoys.net> with the CAR TOYS mark).
The Policy requires both
registration and use of a domain name in bad faith in order to make out
a successful claim. Policy ¶ 4(a)(iii).
Complainant has failed to establish bad faith registration. See Caterpillar Inc. v. Off Road Equip.
Parts, FA 95497 (Nat. Arb. Forum
Oct. 10, 2000) (refusing to find bad faith registration where the
Complainant failed to submit any evidence that the domain name was registered
in bad faith).
Respondent’s predecessor
also could not have been aware of Complainant’s interest since that entity
registered the name before or just after Netro came into existence. See Open Sys. Computing AS v. degli Alessandri,
D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where Respondent
registered the domain name in question before application and commencement of
use of the trademark by Complainant).
The fact that Respondent
may have then offered to sell the name is not evidence of “bad faith.” See Etam, plc v. Alberta Hot Rods,
D2000-1654 (WIPO Jan. 31, 2001) ("Respondent’s offer to sell the domain
name does not constitute bad faith, in light of the fact that it has a
legitimate interest in the domain name"); see also Physik Instrumente
GmbH. v. Kerner, D2000-1001 (WIPO Oct. 3, 2000) (finding no bad faith where
the Respondent offered the domain name for sale while their business plans to
use the domain name were in a state of unrest).
Offers or counter-offers
to sell the disputed domain name do not evidence bad faith as the negotiations
were initiated by Complainant. See
Pocatello Idaho Auditorium Dist. v. CES Marketing Group, Inc., FA 103186
(Nat. Arb. Forum Feb. 21, 2002) (finding that "when a Complainant
indicates a willingness to engage in a market transaction for the name, it does
not violate the policy for a [Respondent] to offer to sell for a market price,
rather than out-of-pocket expenses"); see also Open Sys. Computing AS
v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent was
not acting in bad faith by discussing a sale when Complainant initiated an
offer to purchase it from Respondent).
Respondent clearly did not register the domain name primarily for
the purpose of selling it, and thus, Policy ¶ 4(b)(i) has not been
satisfied. See Mark Warner 2001 v.
Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering
or offering to sell a domain name is insufficient to amount to bad faith under
the Policy; the domain name must be registered primarily for the purpose
of selling it to the owner of trademark for an amount in excess of
out-of-pocket expenses).
While this Panel would
agree, where a Respondent or an affiliate or close relative is in the business
of selling domain names, such could allow an inference and finding of “bad
faith.” See Armstrong Holdings, Inc.
v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the
Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names
which infringe upon others’ famous and registered trademarks); see also Pep
Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution
May 3, 2000) (finding that, where the Respondent registered many domain names,
held them hostage, and prevented the owners from using them, the behavior
constituted bad faith); see also Nabisco Brands Co. v. Patron Group,
D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain
names is one factor in determining registration and use in bad faith).
In this case, however,
the facts do not fit the allegation, for the Respondent’s predecessor
registered the name before or just after the Complainant named itself. How could Rolling Dice, or anyone, have
registered the name of a new or even non-existent entity for purposes of
hijacking the domain name for later resale?
There is no evidence that anyone was aware of the existence of the
Complainant as an entity named Netro as of the date the domain name was registered
or as of the date it was acquired by the Respondent or one of his family’s
entities. There is little evidence that
he was aware of the existence of Netro when the name was renewed and or
registered in Respondent’s name in 2000.
Given these facts, “guilt by association” would be highly improper.
Respondent has asked the
Panel to find that Complainant has engaged in Reverse Domain Name Hijacking on
the ground that Complainant filed a UDRP Complainant with knowledge that it
could not prove the requisite elements of the Complaint. UDRP Rule 1 explains: “Reverse Domain Name
Hijacking means using the Policy in bad faith to attempt to deprive a
registered domain-name holder of a domain name.”
For cases dealing with
Reverse Domain Name Hijacking, see e.g. Koninklijke KPN N.V. v. Telepathy
Inc., D2001-0217 (WIPO May 7, 2001) (finding that, to prevail on a claim of
reverse domain name hijacking, Respondent must show that Complainant brought
the claim in bad faith despite the knowledge that Respondent had an
unassailable right or legitimate interest in the disputed domain name, or that
Respondent lacked the requisite bad faith registration and use of the disputed
domain name); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug.
2, 2001) (noting that a finding of reverse domain name hijacking requires bad
faith on Complainant’s part, which is proven when Complainant knew or plainly
should have known that one of the three elements in Policy ¶ 4(a) was absent); see
also Curb King Borderline Edging Inc. v. Edgetec Int’l Pty., FA 105892
(Nat. Arb. Forum May 10, 2002) (finding
that, when
Complainant is aware of facts that bear a direct relation to the dispute and
fails to include them in its Complaint, Complainant’s omission constitutes an
abuse of the administrative proceeding, warranting a finding of reverse domain
name hijacking); see also Qtrade Canada Inc. v. Bank of Hydro, AF-0169
(eResolution June 19, 2000) (finding that the Complaint was brought in bad
faith given that Complainant spent one year trying to buy the name from
Respondent and over-stated to the Panel the status of its pending trademark
application).
Respondent
also says that Netro’s additional submission provides even greater grounds to
find Reverse Domain Name Hijacking. See
TWA Airlines LLC v. Heathrow Express Operating Co., FA 102956 (Nat. Arb.
Forum Feb. 6, 2002) (finding that Complainant’s filing of an additional
submission supported a finding of Reverse Domain Name Hijacking where
Respondent previously submitted evidence conclusively demonstrating its rights
in the contested domain name under the Startup Trademark Opposition Policy).
This is a
close call, but the Panel has determined not to find that Complainant has
attempted a Reverse Domain Name Hijacking.
True, the case was very weak, and probably should not have been filed,
the facts do not justify a finding under Rule 15(e).
DISCUSSION
Paragraph
15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the
“Rules”) instructs this Panel to “decide a complaint on the basis of the
statements and documents submitted in accordance with the Policy, these Rules
and any rules and principles of law that it deems applicable.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1) the
domain name registered by the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(2) the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3) the
domain name has been registered and is being used in bad faith.
Identical
and/or Confusingly Similar
The
Complainant has failed to demonstrate the existence of a trade or service mark;
therefore, while the Complainant’s name and the domain name are identical, the
first element is not shown.
Rights or
Legitimate Interests
Respondent’s
rights in the name, which are very weak, appear to predate or be almost
contemporaneous with the rights of the Complainant.
Registration
and Use in Bad Faith
There is
simply no evidence of bad faith.
Respondent was the first party to register the name (or his predecessor
was) or, in the alternative, the name was registered just after the Complainant
was created. Given those facts, it is
all but impossible to find bad faith on the part of Respondent.
DECISION
The domain
name shall not be transferred; a finding under Rule 15(e) is denied.
R. Glen
Ayers, Chair
Honorable
Irving H. Perluss
Professor
David Sorkin
Panelists
Dated: June
12, 2002
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