Rehmat A. Peerbhai and Rahim Peerbhai v. Zeshan Kassam / Remco Insurance
Claim Number: FA1403001551159
Complainant is Rehmat A. Peerbhai and Rahim Peerbhai (“Complainant”), represented by Matthew H. Swyers of The Trademark Company, PLLC, Virginia, USA. Respondent is Zeshan Kassam / Remco Insurance (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <remcoinsurance.net>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2014; the National Arbitration Forum received payment on March 27, 2014.
On March 27, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <remcoinsurance.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 3, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline to April 23, 2014 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@remcoinsurance.net. Also on April 3, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 22, 2014.
On April 29, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complaint is based upon Complainant’s ownership of United States Trademark Registration No. 3,376,584 for the mark REMCO INSURANCE (the “Mark”). Complainant applied to register the Mark with the United States Patent and Trademark Office (“USPTO”) on July 10, 2006, on an intent-to-use basis, for the services of management of the operations of insurance agencies and brokers on an outsourcing basis, in International Class 35. Based upon its use and registration, Complainant’s rights in the Mark originated on the application’s filing date, on July 10, 2006.
Respondent’s <remcoinsurance.net> domain name (the “Domain Name”) is confusingly similar to the Complainant’s Mark.
Complainant alleged that Respondent has no rights or legitimate interests with respect to the Domain Name as he registered it on October 12, 2006, months after Complainant acquired his rights in the Mark. He is using the Domain Name to misdirect traffic to his website and to his services offered in competition with or in a very similar industry to the services provided by Complainant.
Complainant contended that Respondent registered and is using the Domain Name in bad faith. Respondent was aware of the rights retained by Complainant when he registered it. He is using the Domain Name to disrupt Complainant’s business. Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation or endorsement of his website.
B. Respondent
Respondent requests that the present claim be dismissed as Complainant filed a claim in another Forum, namely a Texas state court. The matter is still pending.
Respondent alleged that he has prior rights on the name Remco Insurance. Complainant’s trademark application for use of the name was filed after Respondent had been using the name. Therefore there is no evidence that Complainant has exclusive rights on the name.
Respondent contented that he has been using the name Remco Insurance at least since 2006 and has therefore legitimate rights and interests into the Domain name. Moreover Respondent has filed a DBA certificate in Harris Court on May 25, 2006 and has since been using the name Remco Insurance.
Respondent requests that the present claim be denied and that the Domain Name remains with Respondent.
Preliminary Issue: Multiple Complainants
The present proceedings involve two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Complainants request the consolidation of their complaints on the basis that they allege a common grievance against the Respondent and a common legal interest in the relevant rights that are affected by Respondent’s conduct.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link between each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralympic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the Panel stated:
“ It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity. “
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the Panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the Panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
In the present case, the Panel finds that Complainant has provided ample evidence to establish a sufficient nexus or link between the Complainants. Therefore, the Panel will treat them as a single entity in this proceeding and the Complainants will be collectively referred to as “Complainant.”
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 Procedural Issue: Re-filed Complaint / Issue Estoppel
Respondent refers the Panel to AMCO Marketing Corporation v. Zeshan Kassam / Remco Insurance, FA 1535370 (Nat. Arb. Forum Jan. 16, 2014) and submits that these new Administrative Proceedings represent a re-filing of a dispute that has already been arbitrated.
The Panel understands that Respondent relies on the previous case (a) as a basis for the Panel to find that Complainant is somehow estopped from pursuing a second complaint on the same facts, and (b) as already determinative of the question of Complainant’s asserted trademark rights.
In AMCO Marketing Corporation v. Zeshan Kassam / Remco Insurance, FA 1535370 (Nat. Arb. Forum Jan. 16, 2014), the Panel was unable to conclude that Complainant had rights to the Mark based upon a US Mark registration. Indeed the registered holder of the U.S. Trademark and the Complainant were different persons and the Complainant failed to establish a link between them. The Panelist considered that the Complainant had not satisfied the onus on the first required element since, despite his request, no information on the first criterion under paragraph 4(a) had been provided.
The present Complaint (FA1551159) includes information with supporting annexes not provided with the Complaint in the previous case, namely Complainant demonstrates rights in the Mark supporting his Complaint.
Previous panels have held that "the acts on which the Refiled Complaint is based should not be, in substance, the same as the acts on which the previous complaint was based. When properly applied, this exception would preclude an unsuccessful complainant from lodging, in the hope that the subsequent panel will come to a different conclusion on the facts, a Refiled Complaint based on subsequent acts that are either a repetition of or substantially the same as the acts on which the previous complaint was based." (WIPO Case No. D2001-0857, Furrytails Limited v. Andrew Mitchell d/b/a Oxford Die-Cast, September 6, 2001).
The Panel finds that the purpose of the present proceedings initiated by Complainant is to correct the mistake made in the Complaint in the previous case with regards to the name of the Complainant and to assert proper rights in the U.S. Mark REMCO INSURANCE No. 3,376,584. Indeed the Panel notes that the name of Complainant in the present proceedings is that of the U.S. Mark holder.
Therefore the Panel finds that Complainant is not estopped from continuing with these proceedings.
Procedural Issue: Concurrent Court Proceedings
Respondent asserts that the Complainant’s claims are subject to an ongoing litigation initiated by Rahim Peerbhai on April 24, 2013 in case No. 2013-24723 in the 125th Judicial District Court of Harris County, Texas where Rahim Peerbhai is claiming ownership of the name REMCO INSURANCE. Respondent believes this UDRP ought to be dismissed until Complainant’s initial actions in Texas state court are resolved.
The Panel notes that both Complainant and Respondent have been engaged, or are engaged, in court litigations involving their various claims to the Mark and name rights that might affect, among other more significant issues, ownership of the disputed domain name. Indeed, both Parties seem to trade under the name Remco Insurance and current proceedings are being litigated.
According to paragraph 18(a) of the Rules, in the event of any legal proceedings initiated prior to or during an administrative proceeding in respect to a domain name dispute that is the subject of a Complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding or to proceed to a decision. In formulating its decision, the Panel is cognizant that the Policy is not a process designed to render decisions with respect to domain name disputes that may be subject to relatively complex, competing proprietary rights. Instead, as stated in paragraph 4.1(c) of the Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (October 24, 1999), the "…[P]olicy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of 'abusive registrations.'"
Other panels have chosen not to proceed with the UDRP because of the pending litigation. Where the facts alleged in the UDRP case are intertwined with or would be affected by an outcome in the litigation, many panels have found there is no purpose in reaching a UDRP decision on the merits. AmeriPlan Corp. v. Gilbert, FA105737 (Nat. Arb. Forum Apr. 22, 2002) (Regarding simultaneous court proceedings and UDRP disputes, Policy ¶ 4(k) requires that ICANN not to 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 as here, a decision regarding the domain name will have no practical consequence.”).
Given the extent of the current litigation, the Panel finds that the issue before it is part of a broader dispute between the parties, and not a narrow case of abusive registration. As a result, the Panel believes that the court proceedings referred to above, and not a UDRP proceeding, are the proper fora in which to resolve the dispute presented in this case. Edelgard & Horst Liebl v. Drug-Aware Ltd, FA 1395617 (Nat. Arb. Forum Aug. 8, 2011). Therefore, within the discretion granted it under paragraph 18(a) of the Rules, the Panel concludes that it is appropriate to terminate these proceedings and to dismiss the Complaint.
Reverse Domain Name Hijacking:
As stated in the Rule 15(e): “If, after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking …. the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” See Trudeau Corporation 1889 Inc. v. Web Team, FA 1475125 (Nat. Arb. For., January 29, 2013)
In accordance with the Policy, Complainant shall provide the Panel with complete and accurate information. Precisely, Complainant has declared: "the Complainant certifies that the information contained in the Complaint is to the best of the Complainant's knowledge complete and accurate” and that “no other legal proceedings have been commenced or terminated in connection with or relating to the Domain Name that is subject to the Amended Complaint”.
Respondent asserts that the claims asserted by Complainant are subject to ongoing litigation, initiated by Complainant. This allegation is evidenced by several court documents. Therefore the Panel finds that Complainant was under an obligation to disclose the current legal proceedings according to Policy ¶ 3(b)(xi). Although these current proceedings do not directly affect the Domain Name, they relate to the use of the Trade Name and Mark of Complainant and thus may directly or indirectly infer on the situation of the Domain Name.
Had Respondent failed to defend his position, Complainant's action might have resulted in a decision in its favor (WIPO Case No. D2001-0916, Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, October 12, 2001).
However the Panel does not find a situation of Reverse Domain Name Hijacking pursuant to the Rule 15(e). Complainant owns a trademark registration and is pursuing a dispute resolution proceeding against a domain name identical to its Mark. Although the Panel finds that Complainant has not proven its case, it also does not find any Reverse Domain Name Hijacking based on the evidence and pleadings submitted. (WIPO Case No. D2000-0174, Interep National Radio Sales, Inc. v. Internet Domain Names, Inc., May 26, 2000).
The Panel nevertheless believes that dismissal should be with prejudice because the underlying trademark and business disputes between the parties are beyond the scope of the UDRP and are being addressed in courts of competent jurisdiction. See Autoboss Tech., Inc. v. Cardiag cardiag / Cardiag Inc., FA 1405219 (Nat. Arb. Forum Sept. 23, 2011) (dismissing the case with prejudice, while stating "…the Panel concludes that this is a business or commercial dispute between two companies that falls outside the scope of the UDRP"); see also Fuze Beverage, LLC v. CGEYE, Inc. c/o Thomas Siedleczka, FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (finding dismissal with prejudice appropriate where, "It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address").
For all the foregoing reasons, the Complaint is denied with prejudice.
Nathalie Dreyfus, Panelist
Dated: May 7, 2014
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