Blue Magic, Inc v. JCSI c/o Domain
Administrator
Claim Number: FA0806001211470
PARTIES
Complainant is Blue Magic, Inc. ("Complainant"),
represented by D. Brit Nelson, of Locke Lord Bissell & Liddell
LLP, Texas, USA. Respondent is JCSI Oo Domain Administrator ("Respondent"),
represented by Stevan Lieberman, of Greenberg & Lieberman,
LLC, Washington, D.C., USA.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <purecitrus.com>
and <northamericanoil.com>, registered with Enom, 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.
David A. Einhorn
appointed as Panelist.
PROCEDURAL
HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum electronically on June 20, 2008; the National
Arbitration Forum received a hard copy of the Complaint on June 24, 2008.
On June 23, 2008, Enom, Inc. confirmed by e-mail to
the National Arbitration Forum that the <purecitrus.com> and <northamericanoil.com>
domain names are registered with Enom, Inc. and that Respondent is the
current registrant of the names. Enom,
Inc. has verified that Respondent is bound by the Enom, 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 July 2, 2008, a Notification of Complaint and
Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of July 22, 2008 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@purecitrus.com and postmaster@northamericanoil.com by e-mail.
On July 21, 2008, Respondent filed with the National
Arbitration Forum under the National Arbitration Forum's Supplemental Rule 6 a
Request for an Extension of Time in which to Respond to the Complaint. On June 22, 2008, the National Arbitration
Forum granted this request extending the deadline
by which Respondent could file a Response to the Complaint to August 1, 2008.
A Response
was received on August 1, 2008. Pursuant
to ICANN's Rule 5, it was determined to be deficient because it was not
received in hard copy prior to the Response deadline.
An
Additional Submission from Complainant was timely received on August 5, 2008.
On August
11, 2008, pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed David A. Einhorn
as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred
from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
[a.] Complainant contends that it owns a federal trademark
registration for PURE CITRUS and common law rights to NORTH AMERICAN and trade
name rights to NORTH AMERICAN OIL, all by assignment from the North American
Oil Company Corporation.
[b.]
Respondent
registered the domain names <purecitrus.com> and <northamericanoil.com>
as agent for Complainant to allow Complainant to market its products.
[c.]
The
registered domain names are confusingly similar to trademarks of Complainant.
[d.]
Respondent
has no rights or legitimate interests with respect to the domain names.
[e.]
Respondent
has registered and used the domain names in bad faith in that it has used the
associated Pure Citrus website to advertise, promote and market products of
companies other than Complainant.
B.
Respondent
[a.] Respondent contends that pursuant to the Internet Hosting
Services Agreement ("IFISA") between Complainant and Respondent,
Complainant may redirect domains to other projects to insure that this still
pending revenue in the event that the account is in default. Respondent further
contends that its account with Complainant was indeed in default.
[b.] Respondent argues that this case is outside the scope
of the Uniform Dispute Resolution Policy ("UDRP") since it hinges on
a business dispute between the parties, with possible causes of action for
breach of contract.
C. Additional Submission
In its
Additional Submission, Complainant states, in the form of an attached
declaration, that it did not understand the IHSA to permit Respondent to
register the domains in its name, and was not even aware that registration of a
domain name was a necessary prerequisite to establishing a website.
FINDINGS AND DISCUSSION
As a preliminary issue, the
Panel notes that Respondent's Response was received on August 1, 2008 and was
determined deficient pursuant to ICANN Rule 5 because it was not received in
hard copy prior to the response deadline. It is within the Panel's discretion
as to what extent it will afford the deficient Response any weight. See Clear
Blue Holding, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum
March 28, 2007) (deciding to consider a deficient response even though it was
deficient because it provided useful information to the panel in making its
decision). In this case, the Panel has considered the Response only to the
extent that it points out that this dispute raises contractual issues outside
the scope of the UDRP.
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.
In this
case, the Panel has decided not to decide the case on the merits, so it will
not be considering these three elements.
Resolution of the narrow issues on
which the Panel is permitted to rule under the UDRP in this case would require
the examination of additional factual and legal issues outside the scope of the
UDRP. A determination of whether or not Respondent was authorized under its
Internet Hosting Services Agreement to redirect the domain at issue to other
projects, due to default of Complainant's obligations under that Agreement,
would require an analysis of contract issues which may be best resolved by a
forum of broader jurisdiction.
Under Section 5 of the Policy, disputes outside of the narrower framework of Section 4 of the Policy “..., shall be resolved through any court ... available.
This
Panel is not prepared to resolve these contractual issues since they are
outside the framework of the UDRP. (See,
similarly, LC Insurance Group, LLC v. Bart Peabody & Assoc., FA
690778 (Nat'l Arb. Forum June 21, 2006) (dispute concerning whether respondent
had the right to transfer domains to itself during the course of its agency was
outside the framework of Section 4 of the Policy).
This
decision should not be viewed as a ruling in favor of Respondent. The Panel is
simply of the view that this is not a dispute which it should be resolving on
the merits and that its decision should leave the domain name registrations status
quo.
DECISION
The
Complaint of Blue Magic, Inc. with respect to the domain names <purecitrus.com>
and <northamericanoil.com> is hereby dismissed.
David A. Einhorn, Panelist
Dated: August 24, 2008
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