Acumen Enterprises, Inc v. Jonathan Morgan
Claim Number: FA1104001381503
Complainant is Acumen Enterprises, Inc. (“Complainant”), represented by Gary Tucker, Texas, USA. Respondent is Jonathan Morgan (“Respondent”), represented by Aaron Michael Murphy of Gruner & Simms PLLC, Kentucky, USA.
The domain name at issue is <acumenenterprises.com>, registered with GoDaddy.com.
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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 1, 2011; the National Arbitration Forum received payment on April 1, 2011.
On April 2, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <acumenenterprises.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@acumenenterprises.com. Also on April 4, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 25, 2011.
On April 28, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.
On May 2, 2011, the Panel issued an Order for Additional Submissions and Extending Time for Rendering a Decision, requesting the Parties to send to the Forum and to the other Party, copies of their own submissions before the District Court for the Northern District of Texas, and of any decision, whether procedural or on the merits, made by such Court in such matter. The Parties were also requested to send comments as to the remedies sought before the District Court, and whether the Panel should terminate or suspend the present UDRP proceeding, or instead proceed to a decision. The deadline for sending the copies and comments to the Forum was set to May 6, 2011.
On May 2, 2011, Complainant submitted an Additional Submission. This submission was timely received by The Forum, and was in compliance of The Forum’s Supplemental Rule # 7.
Both Parties have timely submitted their comments and copies of submissions made before the U.S. District Court, as requested by the Panel’s Order of May 2, 2011.
Complainant requests that the domain name be transferred from Respondent to Complainant. Respondent requests that this matter be dismissed as Complainant has previously filed a lawsuit in the U. S. District Court for the Northern District of Texas, requesting the same relief requested in the present UDRP proceeding. In the alternative, Respondent requests that the Complaint be held in abeyance until the conclusion of proceedings in said District Court.
A. Complainant
In its Complaint, Complainant contends as follows:
- Complainant has acquired common law trademark rights in the ACUMEN ENTERPRISES mark through its extensive use in commerce since Complainant’s incorporation in 2001 to the extent that major consumers of Complainant’s services recognize the mark as distinctive for Complainant. The disputed domain name is confusingly similar to Complainant’s ACUMEN ENTERPRISES mark, because it incorporates this mark in its entirety.
- Respondent cannot establish any of the circumstances of Policy ¶ 4(c) and, therefore, cannot demonstrate any rights or legitimate interests in the domain name. There are no records of any corporations currently registered to use the name “Acumen Enterprises” in either Ohio or Indiana. There has been no attempt by Respondent to establish any type of corporate ownership in any of the states he may reside in. Respondent registered the domain name under the name “Jonathan Morgan”, which has no relation to the name “Acumen Enterprises”. This is evidence that Respondent is not commonly known by the name “Acumen Enterprises”.
- Respondent offered to sell the domain to Complainant for $20,000.00 and then for $25,000.00, an amount far in excess of any out-of-pocket costs Respondent may have related to the disputed domain name. While not necessarily a competitor of Complainant, Respondent has set about a course of action intended to disrupt the business of not only Complainant but of Complainant’s customers and clients.
B. Respondent.
In its Response, Respondent contends as follows:
- Respondent was unaware of Complainant, and has never done business in an area of the country in which Complainant claims to have rights in the name Acumen Enterprises. Respondent has not infringed in any way upon any common law trademark rights Complainant may possess. Respondent has common law rights to the mark ACUMEN ENTERPRISES in the areas of the country in which he has used this mark for business, which includes international business.
- It is clear the respective marks being used by Complainant and Respondent cause no likelihood of confusion. Respondent has acquired legitimate trademark and service mark rights for the goods and services Respondent offers. These are the same common law protections that Complainant asserts.
- Neither Complainant nor Respondent had any knowledge of each other at the time Respondent began using the mark ACUMEN ENTERPRISES. Complainant and Respondent offer very different products and services and operate in geographically separate areas. Respondent’s use of the name ACUMEN ENTERPRISES corresponded to bona fide goods and services as required by UDRP Policy 4(c)(i). Respondent has acquired common law trademark and service mark rights in the name ACUMEN ENTERPRISES and has been known by that name as required by UDRP Policy 4(c)(ii). Respondent is not making a noncommercial claim to the domain name. However, Respondent has no intent to misleadingly divert consumers or to tarnish the trademark or service mark of Complainant.
- Respondent was unaware of Complainant at the time he registered the domain name and conducted business under that domain name until Complainant’s lawsuit. Complainant’s argument that Respondent registered the domain name primarily for the purpose of selling it, is without factual basis. Respondent did not want to sell the domain name at all, and still does not want to sell the domain name. A small amount of negotiations over the domain name were present in the overall exchanges between Respondent and Complainant, however, Respondent’s primary purpose was to stop the deluge of unwanted email.
The Panel decided not to consider Complainant’s Additional Submission of May 2, 2011 because it does not deal with any argument of Respondent which could not have been anticipated by Complainant. See American Airlines, Inc. v. Proxied Domains - wlsa Client Account c/o Proxy Domain Manager, FA 1248138 (Nat. Arb. Forum, Apr. 8, 2009), where this panelist decided not to consider an additional submission not containing any new information or arguments that could not have been anticipated; see also Vaga-lume Midia Ltda v. Kevo Ouz d/b/a Online Marketing Realty, FA 1287151 (Nat. Arb. Forum Dec. 7, 2009), where the panel presided by this panelist did admit and consider the complainant’s additional submission with evidence unavailable at the time the complaint was submitted.
Instead, the Panel has considered the Parties’ submissions in compliance with the requests made in the Panel Order of May 2, 2011, pursuant to Rules ¶ 12.
Before sending the Complaint to The Forum, Complainant filed a civil action before the U.S. District Court for the Northern District of Texas, seeking as relief, inter alia, the transfer of the disputed domain name. Respondent requests that the Panel terminate the proceeding; in the alternative, Respondent requests that the Complaint be held in abeyance until the conclusion of proceedings in said District Court.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Preliminary Issue. Concurrent litigation.
At section 9 of the Response, Respondent requested that this matter be dismissed as Complainant has previously filed a lawsuit in the U. S. District Court for the Northern District of Texas requesting the same relief requested herein. In the alternative, Respondent requested that the Complaint be held in abeyance until the conclusion of proceedings in said court.
Complainant has in fact stated that it requested injunctive relief, monetary damages, and a transfer of the disputed domain name before the U.S. District Court.
The Panel believes that Complainant is right when it states that a UDRP panel is fully capable of reaching a decision regardless of any concurrent legal proceeding, and that several panels have proceeded to a decision in similar circumstances. However, it is also true that several other panels have decided to terminate the UDRP proceedings, in exercise of their discretion under Rules ¶ 18 (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.").
The Panel also notes that the relief of transfer of the domain name sought before the U.S. Court is essentially the same as the relief sought in the present proceeding. Further, it is obvious that in the court proceedings the controversy about factual issues can be resolved after a full hearing, where witnesses declare under oath and cross-examination is available. Moreover, the claims and defenses brought by the Parties in the U.S. litigation are likely to be resolved under State and U.S. law, that is local and federal law known by both parties and their counsel. Finally, it was Complainant who initiated litigation in the U.S. Court before sending its UDRP Complaint to The Forum. Considering all these factors, the Panel believes the best course of action is to defer to the U.S. District Court, and accordingly to terminate the present UDRP proceeding, without prejudice of any filing of a future UDRP complaint as appropriate after conclusion of the proceedings in the U.S. District Court. See Aussie Car Loans Pty Ltd v. Wilson Accountants Pty Ltd, (formerly Wilson and Wilson Accountants), D2008-1477 (WIPO Dec. 9, 2008).
Pursuant to Rules ¶ 18(a), the Panel decides to TERMINATE the proceeding.
Roberto A. Bianchi, Panelist
Dated: May 17, 2011
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