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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Dean Hill Systems Ltd. v. Gregory Santana d/b/a Invicta

Case No. D2002-0404

1. The Parties

The Complainant in this administrative proceeding is Dean Hill Systems Ltd. ("DHSC"), a corporation organized and existing under the laws of England, with its principal place of business in Kent, United Kingdom.

The Respondent in this proceeding is Gregory Santana, an individual, doing business as Invicta. Mr. Santana’s address is 10929 Landale Street #2, Toluca Lake, CA 91602, United States of America.

2. The Domain Name and Registrar

This dispute concerns the domain name <proquis.com> (the "Domain Name").

The Domain Name was registered on or about May 20, 1996.

The Registrar with whom the Domain Name is registered is Network Solutions, Inc., 21355 Ridgetop Circle, Dulles, VA 20166, United States of America.

3. Procedural History

A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), both of which are implemented by ICANN on October 24, 1999, was received by the WIPO Arbitration and Mediation Center ("the Center") in electronic format on April 30, 2002, and in hardcopy on May 3, 2002. Payment in the required amount to the Center has been made by the Complainant.

On May 1, 2002, a request for registrar verification was sent to Network Solutions requesting confirmation that it had received a copy of the complaint from the Complainant, that the Domain Name was currently registered with it and that the Policy was in effect, and requesting full details of the holder of the Domain Name and advice as to the current status of the Domain Name.

On June 5, 2002, a response was received from the Respondent in electronic format and on June 12, 2002 in hardcopy.

On July 2, 2002, a Notification of Appointment of Administrative Panel and Projected Decision Date ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Complainant’s request, the appointment notification informed the parties that the administrative panel would be comprised of three panelists, Clive L. Elliott, David H. Bernstein and Sally M. Abel.

On July 9, 2002, the Complainant filed a Request to Submit Reply. With that request was attached the Reply itself. In support of its request the Complainant asserted that the Respondent had shut down the Complainant's web site at the disputed domain name <proquis.com> and had filed a petition for cancellation with the US Patent and Trade Mark Office with regard to the "PROQUIS" mark. The Complainant also asserted that the Respondent had, in its response, for the first time made various allegations about acquiescence and other matters, which were a complete fabrication and were "not at all foreseeable".

The request and additional material ran to 15 pages and contained detailed submissions.

The Respondent in turn filed an Objection on July 10, 2002.

Both Parties acknowledge that they can make no further submissions unless requested to do so by the Panel under Paragraph 12 of the Rules. It is apparent from the complaint and response that there are substantial differences between the parties as to the evidence and the inferences that can be drawn from such evidence. If anything, the additional material serves to heighten this impression.

Nonetheless, and though this Panel joins those panels that typically exclude routine replies because they are not contemplated by the Policy and, in any event, are usually a waste of time, e.g., The Thread.com, Inc. v. Poploff, WIPO Case No. D2000-1470 (January 5, 2001), we believe supplemental submissions can be appropriate when they present or respond to new evidence that did not exist at the time of the initial submission or could not have been reasonably anticipated. Investissement Marius Saradar S.A.L. et al. v. Naffah et al., WIPO Case No. D2000-0853 (November 22, 2000). Here, Complainant’s supplemental submission addresses several new facts, one of which is relevant to the question of whether Respondent is using the Domain Name in bad faith: Respondent’s action in shutting down Complainant’s website after the filing of the Complaint. Because Complainant could not have anticipated this wrongful conduct, we consider the submission to the extent it addresses this fact, and consider those parts of the Respondent’s supplemental submission that respond to those assertions.

On September 20, 2002, following several necessary extensions given the several significant complications presented by this case, the Panel submitted a decision to the Center.

4. Factual Background

On July 9, 1994, the Complainant registered the mark "PROQUIS" in the United Kingdom, for use in connection with "Computer programs; computer software; all relating to the establishment and maintenance of quality and business information systems; all included in Class 9."

The Complainant also applied for registration of the mark "PROQUIS" with the United States Patent and Trademark Office ("USPTO") on May 22, 1998, for use in connection with various computer software products.

On April 5, 1996, the Complainant changed its name to Proquis Limited.

On or about April 16, 1996, the Respondent registered the fictitious business name "INVICTA COM" with the Los Angeles, California County Recorder’s Office. On or about May 20, 1996, the Respondent obtained the Domain Name. Subsequently, on or about May 29, 1997, the Respondent registered INVICTA as a fictitious business name with the Los Angeles County Recorder’s Office.

5. Parties’ Contentions

A. Complainant

The Complainant states it originated the term "PROQUIS" by combining the first letters of each of the words from the phrase "professional quality information systems" (i.e., PROfessional QUality Information Systems = PROQUIS). To the Complainant’s knowledge, the term "PROQUIS" has no meaning in any language.

In or about February or March 1995, the Respondent traveled to England, to meet with the Complainant to discuss the possibility of the Respondent’s acting as a United States distributor. During the meeting, the Complainant claims to have informed the Respondent that it was already working with several US distributors but that, if the Respondent was interested, the Complainant was interested in discussing an arrangement whereby the Respondent would be allowed to act as a non-exclusive United States dealer of its products. At that time, the Respondent voiced his interest in the same and requested additional information regarding the Complainant’s products. On or about April 19, 1995, the Complainant sent demonstration disks of the Complainant’s products to the Respondent in the United States.

The Complainant alleges the Respondent failed to meet various commitments to training and the like and things progressed little further. In or about the beginning of 1998, the Complainant began taking action to open a United States office in Chicago, Illinois and in March 1998, the Complainant incorporated Proquis, Inc. as an Illinois corporation and a wholly owned subsidiary of the Complainant.

The Complainant asserts that at or about that same time, the Complainant learned, for the first time, that the Respondent had registered the Domain Name. It also asserts that at that time, the Respondent was not using the Domain Name for any legitimate business purpose and, to Complainant’s knowledge, the Respondent has never done so.

When the Complainant discovered that the Respondent had registered the Domain Name, it demanded that the Respondent transfer the same to the Complainant. It is asserted that in or about March 1998, the Respondent orally agreed to transfer the Domain Name to the Complainant. In exchange, the Complainant agreed to appoint the Respondent as an official United States dealer of its products and provide the Respondent with training. Complainant submits a copy of what purports to be a March 26, 1998, facsimile from Complainant to Respondent stating, inter alia, "In exchange for the domain release we confirm your appointment as a dealer and we will provide training for up to 3 people free of charge at any training session run by us before January 1^st 2000 … To transfer the domain name you should email, fax or write to the ISP stating you wish to relinquish control of Proquis with the condition that it is relinquished to NETLINK. We have advised them and they are expecting the notification from your ISP." Complaint, Exhibit 8.

In accordance with this agreement, the Complainant has been using the Domain Name in connection with the sale of its PROQUIS products. Also since in or about April 1998, the Complainant has been, and still is, identified as the administrative contact, technical contact and billing contact for the Domain Name. The Complainant has paid the fees to Network Solutions in connection with this Domain Name until May 21, 2003.

It is alleged that since April 1998, the Complainant has built up substantial name recognition of its PROQUIS mark in the United States, Pacific Rim, Australasia, South Africa and Europe and Complainant currently conducts approximately fifty percent (50%) of its business through the use of <proquis.com>.

The Complainant claims that in approximately July 2001, the Respondent began demanding that the Complainant pay the Respondent to continue to use the Domain Name. If the Complainant refused to do so, the Respondent threatened to sell the Domain Name. Complainant also claims that on August 8, 2002, the Respondent’s agent, Rodney Tuff, informed the Complainant that the Respondent wanted $250,000.00 in order to transfer the Domain Name to the Complainant. Mr. Tuff is said to have then informed the Complainant that he would settle for no less than Ј50,000.00. The Respondent has also recently requested that Network Solutions make a change in the registrant information for the Domain Name.

B. Respondent

The Respondent states that the Complainant has been aware of the Respondent’s registration of the Domain Name since at least as early as March 10, 1998.

The Respondent claims to have made genuine efforts to become a dealer of the Complainant’s PROQUIS product in the United States. He states that in 1995, the parties agreed in principle that the Respondent would be a consultant to the Complainant and develop a business plan for marketing the PROQUIS software in the United States. According to Respondent, he was to be paid for these efforts in commissions on U.S. sales. Beginning in 1995, and continuing at least until September 1998, Respondent attempted to market the PROQUIS software in the United States, and to otherwise assist the Complainant in the sales effort, but sales were stymied by the fact that the PROQUIS software was evidently only then available in a MS-DOS version.

The Respondent claims that his efforts to sell the Complainant’s products included: attending tradeshows; hiring necessary staff and following up on leads and inquiries from potential customers; continuously corresponding with the Complainant in order to seek the release of the PROQUIS 9000 Windows product; creating significant sales and marketing documentation, including the material which was ultimately published on the <proquis.com> web site; and maintaining a website at "www.proquis.com" from 1996-1998.

It is said that on March 3, 1996, the Complainant e-mailed the Respondent with an invitation to the upcoming Quality EXPO in Chicago in April 1996. The Complainant also wrote that they anticipated shipping the first Windows product in or about May that year. It is asserted that the Respondent traveled to Chicago and assisted the Complainant at the tradeshow. In addition, he presented web pages to David Best, Chief Programmer of PROQUIS and owner of DHSL, for a proposed web site relating to PROQUIS.

It is alleged that in May 1996, the Respondent contacted the Complainant to discuss (1) renaming the company Proquis, Inc. and (2) creating a web site called <proquis.com>. According to the Response, the Complainant indicated the company’s name was DHSL and use of the name PROQUIS may take attention away from the company. However, it is stated that the Complainant gave the Respondent permission to register the domain name, <proquis.com> and market the Complainant’s software as PROQUIS in the United States. The Respondent claims that from May 21, 1996, through March 1996, with the Complainant’s knowledge and consent, he used the Domain Name in connection with a website devoted to PROQUIS products, mirroring the information otherwise presented on his <invicta.com> website.

The Respondent further claims he has spent a considerable amount of its own time and money to develop the <proquis.com> site and produced a comprehensive set of materials for the PROQUIS 9000 program. That is, because he realized that the Internet was an extremely cost effective marketing tool that would allow the Respondent to sell PROQUIS around the world.

The Respondent also claims that the Complainant not only knew about his registration of the <proquis.com>, but even made corrections to pages on the Respondent’s web site.

The Respondent accepts that in 1998, he entered into an oral agreement, wherein he granted permission to the Complainant to use the <proquis.com> URL, but states he maintained ownership of the site, with the expectation of some day being compensated for what he saw as his considerable efforts.

In May 2001, the Respondent received an e-mail from the Complainant which requested him to transfer <proquis.com> to the Complainant. By return email, the Respondent reminded the Complainant that he was the owner of this site, but had simply allowed the Complainant to use <proquis.com>.

In August 2001, the Respondent offered to sell the Domain Name to the Complainant in order to, as he put it "reimburse himself" for his efforts over the years. It is alleged that the Complainant agreed to consider the Respondent’s offer. In an e-mail dated August 14, 2001, Bill Best of DHSL is said to have stated, "without prejudice, we would advise you that our board consider[s] the price [offer for proquis.com] being asked is high, but we are nevertheless giving the matter further consideration."

The Respondent concluded by noting he continued to allow the Complainant to use his web site through May 7, 2002, without requesting any compensation. The Respondent confirms that he disabled the <proquis.com> site after the Complainant filed the Complaint in this matter, responding to what he considered to be a broken promise by the Complainant not to file legal proceedings but to try to resolve the parties’ differences amicably.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the complainant must prove each of the following:

- The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

- The Respondent has no right or legitimate interest in respect of the Domain Name; and

- The Domain Name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by Paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in Paragraph 4(a)(ii) referred to above.

Domain Name Identical or Similar

It is uncontested that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

Accordingly, the Complainant has, without any difficulty, made out this ground.

Respondent has no Right or Legitimate Interest

It is readily apparent from a reading of the complaint and response that the Complainant and Respondent entered into various discussions and negotiations, from 1995 onwards. While the parties seek to draw different conclusions from various meetings, discussions and understandings, it is clear that the parties intended to create some form of commercial relationship.

Where the parties differ entirely is on the parameters, or lack thereof, of that relationship, and on the underlying facts.

The Complainant asserts that little came of the parties’ discussions; the Respondent was never an authorized distributor (despite the fact that the Complainant also alleges that in 1998, it agreed to make the Respondent a dealer in exchange for the Respondent’s agreement to transfer the Domain Name). According to the Complainant, there was certainly never any agreement that the Respondent could or would register the Domain Name, and the Respondent never actually used the domain as the URL for a website.

The Respondent counters that while there was no formal, written distribution agreement, there was an agreement "in principle" that the Respondent would be a commission-based consultant to the Complainant and would develop a U.S. marketing plan for and sales of the PROQUIS software. The Respondent claims to have used the Domain Name in connection with a website devoted to PROQUIS products, mirroring the information otherwise presented on his <invicta.com> website, from May 21, 1996, until March 1998, with the Complainant’s express knowledge and consent. The Respondent contends that though he incurred substantial expense attempting to make sales of the software, such sales were not possible because the Complainant’s long-promised Windows-based version of the software was significantly delayed. The Respondent claims to have actively promoted the PROQUIS software on the Complainant’s behalf until September 1998.

One of the few facts on which the parties do agree, is that they reached an agreement in or around March 1998, regarding the Domain Name, but they differ as to the terms of that agreement. The Complainant alleges that the Respondent agreed to transfer ownership of the Domain Name to the Complainant in exchange for being appointed as a dealer, while the Respondent alleges he agreed only to let the Complainant use the Domain Name as the URL for its PROQUIS site while he retained ultimate ownership of the Domain Name, expecting compensation at some future point for his substantial investment. The Whois record for the Domain Name listed Invicta, the Respondent’s fictitious business name, as the Registrant, and an employee of the Complainant as the administrative, technical and billing contact; the parties appear to agree that this has been the state of affairs since 1998.

While most standard distribution/agency agreements would normally preclude a distributor/agent from registering the supplier/principal’s trade mark or domain name, the difficulty here is that no formal agreement was ever concluded and the parties rely on informal understandings.

It is apparent that there is a direct conflict of evidence between the Complainant and the Respondent's version of events. It is difficult, in a proceeding of this type, to resolve direct conflicts of evidence. Indeed, the Policy was never envisaged as a vehicle for resolving complex factual disputes.

Nonetheless, several facts that are beyond dispute convince this Panel that the Complainant has met its burden of proving that the Respondent has (i.e. in the present sense) no right or legitimate interest in the Domain Name. First, while the Respondent claims that the Complainant was well aware of his use of the Domain Name beginning in 1996, and actually commented on the content for that website, the documentary evidence the Respondent relies on in support of this contention is of no assistance to him. What Respondent describes as a "true and correct copy of any [sic] e-mail message [from the Complainant] dated May 25, 1996" demonstrating the Complainant’s knowledge of the Respondent’s intended use of the Domain Name is an undated email from one of the Complainant’s employees, devoid of a single reference to the Domain Name. Response, Exhibit 3. The same is true of the purported web content on which the Respondent relies, except that this matter actually is dated May 10, 1996. Response, Exhibit 4. Respondent has submitted no documentary evidence to support his claim that the Complainant knew of his use of <proquis.com> prior to March of 1998, a claim that the Complainant steadfastly denies.

Second, while what exactly transpired between 1996 and 1998, is contested – the Complainant either did or did not know of the Respondent’s registration of the Domain Name, and the Respondent either did or did not use the Domain Name in connection with a website promoting Complainant’s products – it is undisputed that in March 1998, the Complainant, then fully aware of the Respondent’s registration of the Domain Name, reached some kind of understanding with the Respondent regarding the Domain Name. In support of its contention that the 1998, agreement required the Respondent to transfer the Domain Name to the Complainant, the Complainant has submitted what purports to be a copy of a March 26, 1998, facsimile from the Complainant’s employee Bill Best to the Respondent, in which Mr. Best first references a prior conversation and then states, inter alia: "In exchange for the domain release we confirm your appointment as a dealer and we will provide training for up to 3 people free of charge at any training session run by us before January 1^st 2000 … To transfer the domain name you should email, fax or write to the ISP stating you wish to relinquish control of Proquis with the condition that it is relinquished to NETLINK. We have advised them and they are expecting the notification from your ISP." Complaint, Exhibit 8.

Though the document submitted to the Panel does not appear to be a copy of the actual facsimile transmission, but a copy of an electronic file containing what appears to have been a facsimile, the Respondent does not contest receipt of the March 26, 1998 facsimile.

Instead, in support of his claim that the parties’ 1998 agreement did not contemplate transfer of ownership of the Domain Name, the Respondent submits a copy of what appears to be his May 15, 2001, email responding to Mr. Best’s email request earlier that month to transfer the Domain Name. In his email, the Respondent asserts: "Ownership was never intended to be transferred. I only give permission to use Proquis.Com. I am not willing to release ownership unless you want to buy it out right." Response, Exhibit 5. The Respondent has submitted a copy of Mr. Best’s rather ambiguous electronic response to the Respondent’s email: "Can’t say I am wonderfully happy about this – what are you thinking of." Response, Exhibit 5. Despite submitting copies of these two emails, the Respondent has chosen not to submit a copy of Mr. Best’s initial email requesting the transfer. This omission is both curious and troubling.

Third, the parties agree that from March 1998 forward, the Complainant used the Domain Name as the URL for its website. The parties also agree that from that point forward the Whois database continuously identified Invicta as the Registrant, and one of the Complainant’s employees as the administrative, technical and billing contact. According to the Respondent, after March 1998, the Respondent continued promoting the Complainant’s software for six months.

The Respondent’s position that the March 1998 agreement did not include transfer of the Domain Name is not credible, and is belied by the clear language of the March 26, 1998 facsimile regarding transfer of the Domain Name, the parties’ subsequent behavior, and the Complainant’s apparent belief, likely contained in the May 2001 email the Respondent chose not to share with the Panel, that the parties had agreed to a transfer in 1998. The fact that the contemplated transfer apparently was not completed in 1998, and that the Complainant did not raise the issue until 2001, does not speak of potential acquiescence, given the Complainant’s clear understanding that the Domain Name would be transferred, and that the Complainant actually uses and essentially controls use of the domain from March 1998 forward.

Accordingly, the Complainant has made out this ground.

Domain Name Registered and Being Used in Bad Faith

A majority of the Panel finds that the Complainant has established that the Domain Name was registered and is being used in bad faith. We differ, however, on the scope of the Rules and the application of the facts to those rules, so write separately below. The Presiding Panelist’s dissent on the issue of bad faith registration and use then follows. Given that all three panelists have different reasons for reaching their conclusions it is preferable that each opinion is kept separate.

7. Decision

The Panel unanimously finds: that the Domain Name is confusingly similar to the Complainant’s PROQUIS trade mark and name; and that the Respondent has no rights or legitimate interests in respect of the Domain Name. Further, a majority of the Panel also finds that the Domain Name was registered and is being used in bad faith.

Therefore, the Complainant’s request for transfer of the Domain Name is granted.

Clive L. Elliott
Presiding Panelist

David H. Bernstein
Panelist

Sally M. Abel
Panelist

Dated: September 20, 2002

Concurrence of David H. Bernstein

As the Panel’s decision makes clear, a majority of the Panel has found that the Complainant has proven, by a preponderance of the evidence, that Respondent registered and used the domain name in bad faith. Indeed, we are unanimous on the question of bad faith use. Because we disagree on the questions of whether Respondent registered the domain name in bad faith and whether such a finding is a prerequisite for a decision in Complainant’s favor, see e-Duction, Inc. v. Zuccarini, WIPO Case No. D2000-1369 (February 5, 2001) (if respondent lacked bad faith at time of registration, panel must, however reluctantly, rule for respondent, even if respondent has subsequently used the domain name in bad faith), I write separately to explain why I believe the record supports such a finding, and why I thus join in the decision to order transfer of the domain name.

Respondent registered the Domain Name in 1996. It is a challenge for the Panel, six years later, to divine Respondent’s intentions at that time. It is especially hard when the record is replete with hotly contested facts, particularly in the context of an administrative proceeding that lacks discovery, cross-examination, and live testimony at which credibility determinations can be made.

In the face of these disputed facts, it is the Panel’s responsibility to resolve those disputes as best it can, drawing reasonable inferences when appropriate and using a preponderance of the evidence standard to make fact findings. Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 (January 29, 2001) at pp. 8-9; Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO Case No. D2001-0237 (June 11, 2001) at p. 6.[1]  Although there is a higher possibility of error given the limitations of the Policy’s administrative proceedings (limitations that are deliberate given the goal of designing a quick, inexpensive and fair process for resolution of cybersquatting claims), those errors can be addressed by the parties in any subsequent litigation, should the losing party elect to pursue such a claim in court, as is its right under paragraph 4(k) of the Policy.

In attempting to determine Respondent’s intentions at the time of registration, it is instructive to note that, after registration, Respondent only held the Domain Name passively, and never operated a website at the "www.proquis.com" address. To the extent that he did promote any products related to the PROQUIS mark, he appears to have done so only on the "www.invicta.com" website. Moreover, contrary to Respondent’s assertions, the Panel has found unanimously that he did not notify Complainant of his registration of the Domain Name in 1996. These facts, combined with Respondent’s subsequent bad faith use of a Domain Name in which Respondent lacks rights or legitimate interests, all leads to the reasonable inference that his registration also was in bad faith. That is, I believe it a fair inference that, even in 1996, Respondent registered this Domain Name to obtain leverage over the Complainant, and not with Complainant’s consent to cooperatively promote PROQUIS products in the United States.

Respondent nevertheless claims good faith registration on the ground that Complainant granted Respondent permission to register the Domain Name. That assertion is not credible given the Panel’s finding that Complainant was unaware of the registration until years later, and in light of Complainant’s staunch objections as soon as it learned of the registration. Nor can Respondent claim that he properly registered the Domain Name given his status as an authorized distributor of PROQUIS products; even Respondent concedes that he was not formally appointed a distributor until 1998, two years after he registered the Domain Name. Indeed, even that appointment came about only through bad faith greenmail, with Respondent holding the Domain Name hostage as leverage for the appointment. This conduct (and the subsequent refusal to transfer the Domain Name despite the promise to do so) all sheds significant light on Respondent’s original intentions in registering this Domain Name.

In making these findings by inference, I acknowledge that this is a close case, and that Respondent has offered a version of events that, if accepted as true, could support the notion that he did not act in bad faith at the time of registration. I thus understand why Clive Elliott would so find, and I respect his position. But, all things considered, and using the preponderance of the evidence standard that governs these proceedings, I am persuaded by the parties’ submissions and by the documentary evidence in the record that Complainant’s version of those 1996 events is more likely true than Respondent’s version. It is not, to respond to Sally Abel’s thoughtful concurrence, that I find Respondent’s factual assertions incredible, but rather, that I find Complainant’s assertions somewhat more believable on this point.

I thus believe that Complainant has satisfied its burden of proving, by a preponderance of the evidence, that Respondent registered the Domain Name in bad faith. I therefore concur in the judgment of the Panel.

David H. Bernstein
Panelist

Dated: September 20, 2002

Concurrence of Sally M. Abel

While I am convinced that the Complainant has established bad faith registration and use, I write separately on this single issue because, with all due respect, I do not agree with David Bernstein that the Complainant has established that Respondent’s 1996 registration of the Domain Name was in bad faith. As set forth above in our discussion regarding the Respondent’s lack of legitimate rights or interest in the Domain Name, the parties’ relationship in 1996, the Respondent’s motivation in obtaining the Domain Name, and whether the Respondent actually used the domain in connection with a website promoting the Complainant’s PROQUIS software or passively held it in the 1996-1998 time period, all are issues that are hotly contested, on which the parties are diametrically opposed. David Bernstein apparently finds the Respondent’s version of events in that time frame to be incredible; I do not.

I cannot, however, say the same for Respondent’s version of the events surrounding and following the parties’ March 1998 agreement. As we unanimously set forth in the above discussion as to lack of legitimate rights or interest in the domain, the evidence demonstrates that Respondent did have an obligation to transfer the domain to the Complainant beginning in 1998. The Respondent not only failed to do so, he later took the wholly unsupported position, belied both by the parties’ behavior subsequent to March 1998, and by the credible documentary evidence, that in fact, he had not actually agreed to transfer the domain in 1998. Ultimately, after the Complaint was filed, the Respondent actually disabled the site, retaliating for the Complainant’s failure to negotiate further before pursuing legal proceedings. On this record, bad faith, from March 1998 forward, is manifest.

While we may view the controverted evidence somewhat differently, my co-panelists and I essentially agree that the Respondent acted in "bad faith", and that bad faith use is apparent. Where we part company is whether, under the Policy, a panel can find that bad faith registration has been made out based solely on the Respondent’s intent and behavior, not at the time of initial registration (a hotly contested issue), but two years and more after that initial registration.

The Policy speaks for itself. While Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the "domain name has been registered and is being used in bad faith," that requirement is further illuminated by the language of Paragraph 4(b) addressing "Evidence of Registration and Use in Bad Faith". Paragraph 4(b) expressly delineates four, each free-standing, examples of what a panel may find to be "evidence of the registration and use of a domain name in bad faith", but first underscores that these examples are not the exclusive basis for finding registration and use in bad faith: "For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith[.]" Thus the Policy contemplates that the circumstances of bad faith registration and use presented in particular cases will not necessarily fall neatly into one or more of the four examples contained in the Policy, but are helpful guideposts for panels considering unique sets of facts as to the type of behavior the Policy is intended to address. See also American Mensa, Ltd. v. Millennium Energy Niche Studies Associative, WIPO Case No. D2000-1030 (January 26, 2001).

Further, none of the examples contained in Paragraph 4(b) explicitly speak to both registration and use. The first three examples (Paragraph 4(b)(i)-(iii)) exclusively focus on the domain holder’s intent in registering the domain, and are silent as to any requirement that the domain actually be "used" in a particular manner. The remaining example (Paragraph 4(b)(iv)) considers use of the domain only: "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on you web site or location."

Finally, the Policy clearly is intended to cover not only initial registration of domain names, but renewals of domain name registrations as well. See Paragraph 2 ("By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that ... (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party..."). While my analysis is not dependent on the fact that the Domain Name registration apparently was renewed sometime after the March 1998 agreement, the parties do seem to be in agreement that such a renewal did occur (with Complainant paying the renewal fee). The fact that the Policy covers both application and renewal of domain names clearly signals that the drafters of the Policy did not intend to narrowly circumscribe the "has been registered" language of Paragraph 4(a)(iii) to address only the initial application for the domain. If the language was so limited, there would hardly be a reason to include discussion of a domain holder’s representations upon renewal in the Policy.

With all due respect to my co-panelists, the Policy simply does not contain a bright line rule that bad faith registration occurs only at that solitary moment at which an application is submitted to a registrar to obtain a domain name. Such a rule, while perhaps applicable in many cases involving bad faith, would exalt form over substance in those cases, such as the one at hand, presenting peculiar or unique fact patterns. I do not believe this was the drafters’ intent in crafting the Policy.

Under the unique, and rather tortured facts of this particular case, I find that Complainant has established that the Respondent’s behavior since March 1998, in maintaining the Domain Name in his own name in deliberate disregard for his obligation to transfer the domain to the Complainant, constitutes the requisite bad faith registration for purposes of the Policy. This behavior, coupled with the Respondent’s subsequent attempt to negotiate a "sale" of the domain to the Complainant and his retaliatory reaction to the filing of this action, demonstrates bad faith registration and use under the Policy. I so find.

Sally M. Abel
Panelist

Dated: September 20, 2002

Concurrence (In Part) and Dissent (In Part) of Clive Elliott

I agree with the majority that the Domain Name is identical to the Complainant’s mark, that the Respondent lacks a legitimate interest in the Domain Name, and that the Respondent has used the Domain Name in bad faith. I do however differ on the issue of whether the Domain Name was registered in bad faith. Because of our disagreement on the reasoning behind the finding of bad faith registration, I write separately to explain my thinking.

Firstly, I should say that a panel should not decline to reach a conclusion simply because there are hotly disputed facts. Disputes of fact are inevitable in any contentious arena. I also have to say that my impression is that the Respondent has been less than frank with the Panel and the complaint has real merit. Indeed, the result, pursuant to the majority decision, vindicates the Complainant’s position.

I agree entirely with the view that, where reasonably possible, a panel should try to resolve disputes of fact. We are however restricted by the record and the limited jurisdiction given to us under the Policy.

My view is that this is not simply a case where factual disputes have been raised and where they cannot be resolved. It seems to me that the parties were clearly in a commercial relationship and it is difficult for us to say with any level of certainty what happened in the earlier years. There are significant areas where the relationship between the parties may well have been inexact and badly understood and documented. Whatever our assessment might be at this time, it may well be that the parties themselves (or possibly one of them) had a somewhat different understanding of what they were trying to achieve - other than a joint endeavour involving updated software, a new territory and a new partner.

In my view, the evidence is not inconsistent with an informal relationship (at least initially). Mr. Santana states in his declaration that an agreement was reached in principle to a "relationship whereby I would serve as a consultant for Complainant and would develop a marketing plan to assist in its selling its proquis products in the United States" (Paragraph 3) and "David Best gave me permission to register the domain name, proquis.com and market DHSL's software as proquis in the United States" (Paragraph 7).

The question I ask is whether I am entitled to and should draw an adverse inference against the Respondent. With great respect to David Bernstein, with whom I differ on this, I do not feel able to draw such an inference.

I say this on the basis that there is no reliable evidence to allow or compel a contrary finding, other than a general suspicion that the above statements may not be entirely truthful. With respect, I feel it would be inappropriate for me to express a view on the facts, when they are so hotly contested and on the very issue which dictates whether (in my view) the relevant actions were done in good or bad faith.

If there was reasonably cogent evidence that Mr. Santana should not be believed, I would draw the necessary inferences against him. However, I do not feel that I am able to do so in this case and he is entitled to the benefit of his declaration being taken at face value, unless and until it can be challenged in an appropriate forum.

Certain commentators and courts have criticised decisions under the Policy that try to resolve seriously disputed areas of fact. I feel that we as panelists have to work within our warrant and for the reasons given above and, again with respect, I am not prepared to find the necessary basis for a finding of bad faith registration, that being one issue at the heart of the disputed evidence.

I appreciate that my fellow panelist Sally Abel is largely with me on what we see as the proper approach to dealing with contested evidence of this type. However, she is prepared to find that notwithstanding this view the Domain Name was both used and registered in bad faith.

I fully accept her reasoning that the Policy and Rules do not preclude such an approach. I also accept her reasoning that the fact that the Policy covers both application and renewal of domain names clearly signals that the drafters of the Policy did not intend to narrowly circumscribe the "has been registered" language of the Policy. However, I feel that while we are able to assess recent events and conduct with some degree of predictability the same cannot be said for events in the early period – where much remains in dispute.

I accept that some weight has to be given to the Respondent’s disregard for his obligation to transfer the domain to the Complainant, along with his subsequent attempt to negotiate a "sale" of the domain to the Complainant and his retaliatory reaction to the filing of this action. Once again, I respectfully agree with my co-panelist Sally Abel. However, I do not accept that the Respondent’s inappropriate and even heavy handed recent tactics necessarily points to bad faith registration at the outset. The Policy draws a firm distinction between registration and use. I see this distinction as more than form over substance. It suggests that a continuum of "bad faith" conduct has to be found for a complainant to show "bad faith" overall. I do not believe that one necessarily leads to the other, particularly when the issue in question remains shrouded in dispute and the parties chose to create a commercial relationship, only to see it dissolve over time into acrimony and recrimination.

Accordingly, after careful thought on this, I respectfully differ with my two panelists, but for different reasons.

Clive L. Elliott
Presiding Panelist

Dated: September 20, 2002

Footnote:

1. If the dispute simply cannot be resolved, then it is appropriate to rule for respondent as the complainant bears the burden of proof. Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April 10, 2001) (when it is impossible to tell from the evidence submitted whether it is more likely than not that respondent offered to sell the domain name, complainant loses because complainant bears the burden of proof). That is, though, a rare occurrence.