Lutton Investments, Inc. v. Darkhorse
Distribution, Inc.
Claim Number: FA0304000154142
PARTIES
Complainant
is Lutton Investments, Inc., Los
Angeles, CA (“Complainant”) represented by Perry
Mocciaro, of Cox Castle & Nicholson LLP. Respondent is Darkhorse Distribution, Inc., Venice, CA (“Respondent”)
represented by Robert Ring, of Ring & Green.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <vondutch.com>,
registered with Network Solutions, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and, to
the best of his knowledge, has no known conflict in serving as Panelist in this
proceeding.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 9, 2003; the Forum received a hard copy of the
Complaint on April 17, 2003.
On
April 11, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <vondutch.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network Solutions, Inc. has verified that
Respondent is bound by the Network Solutions, Inc. 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 23, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 13,
2003 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@vondutch.com by e-mail.
A
timely Response was received and determined to be complete on May 13, 2003.
On
May 22, 2003, Complainant submitted an untimely Reply to which Respondent
objects. The Panel overrules
Respondent’s objections and has considered Complainant’s reply.
On May 22, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
makes the following assertions:
1. Respondent’s <vondutch.com> domain name is confusingly similar to Complainant’s
VON DUTCH mark.
2. Respondent does not have any rights or
legitimate interests in the <vondutch.com>
domain name.
3. Respondent registered and used the <vondutch.com> domain name in bad
faith.
B. Respondent
Respondent
contends that he has rights in the domain name <vondutch.com> and
VONDUTCH mark. Respondent requests this
matter be stayed pending resolution of previously filed arbitration proceedings
in California affecting the ownership of the VONDUTCH mark.
In its
Additional Submission Complainant has submitted its extensive arguments on the
merits in the pending California arbitration.
These additional submissions reinforce the Panel’s decision that
determination of these issues are beyond the scope of an ICANN proceeding.
FINDINGS
A dispute has arisen regarding the
ownership of Von Dutch Limited, LLC and the intellectual property rights in the
mark VON DUTCH. Most of these claims
are subject to a pending arbitration before Action Dispute Resolution Services
in Los Angeles County bearing ADRS case number 02-2059 before the Honorable
Enrique Romero, retired judge.
Arbitration proceedings commenced in January of 2003 and are set for a
continued hearing to be finalized in or about August or September of 2003. Numerous complex issues are presented in the
California arbitration.
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.
The
Panel has decided not to consider this case on its merits. Rule
18(a) provides:
“in
the event of any legal proceeding 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
pending arbitration between the parties to this dispute, touching on matters
directly relevant to the resolution of a claim under the UDRP, justifies
terminating the present administrative proceeding. See AmeriPlan Corp. v.
Gilbert FA105737 (Nat. Arb. Forum April 22, 2002) (Regarding simultaneous
court proceedings and UDRP disputes, Policy ¶ 4(k) requires that ICANN not
implement an Administrative Panel’s decision regarding a UDRP dispute until the
court proceeding is resolved.
Therefore, a Panel should not rule on a decision when there is a court
proceeding pending because no purpose is served by the Panel rendering a
decision on the merits to transfer the domain name, or have it remain, when a
decision regarding the domain name will have no practical consequence); see
generally NAT Int’l v. Suez FA 105930 (Nat. Arb. Forum May 15, 2002)
(finding that because prior to the commencement of the administrative
proceeding, a legal proceeding had already resulted in a judgment determining
the very issue raised for decision by the Panel, the Panel should exercise its
discretion and terminate the proceedings).
DECISION
Because this matter is subject to
previously filed arbitration proceedings in the State of California, the ICANN
proceedings are terminated and the Complaint is Dismissed without prejudice.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: June 4, 2003
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