WIPO Arbitration and Mediation
Center
ADMINISTRATIVE PANEL DECISION
Gordon Sumner, p/k/a Sting v Michael
Urvan
Case No. D2000-0596
1 The Parties
1.1 The Complainant is Gordon Sumner, professionally
known as "Sting", a citizen of the United Kingdom
who maintains a residence in the United States. The Respondent
is Michael Urvan, of Marietta, Georgia, United States of America.
2 The Domain Names and
Registrar
2.1 The domain name the subject of this Complaint
is "sting.com".
2.2 The Registrar of this domain name is Network
Solutions, Inc of Herndon, Virginia, USA ("Registrar").
3 Procedural History
Issuance of Complaint
3.1 The Complainant by email and by courier
submitted to the World Intellectual Property Organization
Arbitration and Mediation Center ("WIPO Center")
a Complaint made pursuant to the Uniform Domain Name Dispute
Resolution Policy implemented by the Internet Corporation
for Assigned Names and Numbers (ICANN) on October 24, 1999,
("Uniform Policy"), and under the Rules for Uniform
Domain Name Dispute Resolution Policy implemented by ICANN
on the same date ("Uniform Rules"). The email copy
of the Complaint was received by the WIPO Center on June 13,
2000, and the hard copy of the Complaint was received by the
WIPO Center on June 15, 2000. An Acknowledgment of Receipt
was sent by the WIPO Center to the Complainant, by email dated
June 15, 2000.
Confirmation of Registration Details
3.2 A Request for Registrar Verification was
dispatched by the WIPO Center to the Registrar by email on
June 15, 2000. By email to the WIPO Center on June 20, 2000,
the Registrar confirmed that it had received a copy of the
Complaint from the Complainant; confirmed that it was the
Registrar of the domain name the subject of the Complaint;
confirmed that the current registrant of the domain name is
the Respondent; informed that the administrative, and billing
Contact for the domain names is the Respondent, and provided
postal, telephone, facsimile and email contact details for
the administrative, technical, zone and billing Contact; and
informed that the status of each of the domain names in issue
is "active". The Registrar also confirmed that its
5.0 Service Agreement is in effect. Amongst other things,
that agreement provides that the Respondent as registrant
of the domain name agrees to be bound by the domain name dispute
policy incorporated therein. The policy incorporated into
the agreement is the Uniform Policy.
Notification to Respondent
3.3 Having verified that the Complaint satisfied
the formal requirements of the Uniform Policy and the Uniform
Rules, and that payment of the filing fee had been properly
made, the WIPO Center issued to the Respondent, and to the
technical and zone contact for the domain name, a Notification
of Complaint and Commencement of Administrative Proceeding,
by email on June 20, and by courier and fax on June 21, to
the addresses provided by the Registrar. Copies of this Notification
of Complaint were sent to the Complainant, the Registrar and
ICANN by email on June 20.
3.4 This Administrative Panel finds that the
WIPO Center has discharged its responsibility under Paragraph
2(a) of the Uniform Rules "to employ reasonably available
means calculated to achieve actual notice to Respondent".
Filing of Response
3.5 A Response was filed by the Respondent,
and received by the WIPO Center by email on July 8, within
the time specified in the Notification of Complaint. A hardcopy
of the Response, with Exhibits, was subsequently received
by the WIPO Center by courier.
Constitution of Administrative Panel
3.6 Subsequent to receipt of the Response,
and in accordance with the request in the Complaint, the WIPO
Center proceeded to appoint a single Panelist, and invited
Dr Andrew F. Christie to so act. On July 11, 2000, Dr Christie
indicated his ability to act as the sole Panelist in this
case, and submitted to the WIPO Center a Statement of Acceptance
and Declaration of Impartiality and Independence the following
day. On July 11, 2000, the WIPO Center issued to both parties
a Notification of Appointment of Administrative Panel and
Projected Decision Date, informing of Dr Christie’s appointment
and that absent exceptional circumstances a decision would
be provided by this Administrative Panel by
July 24, 2000. The case before this Administrative Panel was
conducted in the English language.
Compliance with the formalities of the Uniform
Policy and the Uniform Rules
3.7 Having reviewed the Case File in this matter,
this Administrative Panel concurs with the assessment by the
WIPO Center that the Complaint complies with the formal requirements
of the Uniform Policy and Uniform Rules.
Interim Orders
3.8 In response to certain procedural requests
from the Complainant, this Administrative Panel issued an
Interim Order on July 19, 2000, and a second Interim Order
on July 20, 2000. The effect of the first Interim Orders was
to deny the Complainant’s request for a Stay, to rule invalid
and disregard the Complainant’s unsolicited submission of
a Reply, and to extend to July 26, 2000, the date by which
this Administrative Panel was required to forward a Decision
in this case. The effect of the second Interim Order was to
deny the Complainant’s request to be allowed to submit a Reply.
Copies of these interim orders are attached to this decision.
4 Factual Background
Complainant’s Activities and Trademarks
4.1 In his Complaint, the Complainant asserted
the following in relation to his activities and trademarks.
The Complainant is a world famous musician, recording and
performing artist who has, for over twenty years, rendered
high-quality musical services under his name, trademark and
service mark STING. Since at least as early as 1978, the Complainant
has exclusively and continuously used the STING mark in connection
with approximately twenty record albums, almost all of which
have gone multi-platinum in the United States and enjoyed
great commercial success worldwide. The Complainant has also
used the STING mark in connection with innumerable world-wide
concert tours involving venues with significant capacities,
the majority of which sell out. The STING mark is internationally
known and famous as a result of the Complainant’s extensive,
high-profile, and overwhelmingly commercially successful activities
in the music industry. The Complainant is the owner of the
STING mark as a trademark and service mark. The name STING
has become synonymous in the minds of the public with the
Complainant and his activities in the music industry, and
serves as a symbol of the goodwill and excellent reputation
associated with Sting. The STING mark is famous and entitled
to the widest scope of protection afforded by law, including
protection against dilution.
4.2 In his Response, the Respondent asserted
that there are 20 trademark registrations of the word STING
in the US, but none of them are registered by the Complainant.
The word STING is a common word in the English language, and
so registration of it as a domain name is not a violation
of the Uniform Policy. The Respondent is not a competitor
of the Complainant and the Respondent does not attempt to
cause any confusion with him.
Respondent’s Activities
4.3 The Complainant asserted the following
in relation to the Respondent’s activities and use of the
domain name. Until the Respondent was contacted by a representative
of the Complainant, the Respondent made no use of the domain
name. After being contacted by a representative of the Complainant,
Respondent linked the domain name to another site called "GunBroker.Com",
which is a site that facilitates "person to person"
selling of guns. During or about February of 2000, and again
during or about May of 2000, the Respondent offered to sell
the domain name to the Complainant for $25,000.00. Since offering
to sell the domain name to the Complainant for $25,000.00,
the Respondent has frequently changed the web site identified
by the domain name, usually with an "under construction"
message, and in some cases providing a link to a third-party
operated unauthorized web site relating to the Complainant.
4.4 In his Response, the Respondent asserted
that he has been using the nickname "Sting" and
more recently "=Sting=" publicly on the Internet
for at least 8 years. The Respondent registered the domain
name in July 1995, approximately 5 years before this dispute
was commenced. The Respondent did not register the domain
name to sell it, nor did he register the domain to hold it
hostage for any reason. The Respondent engaged in work on
web site to which he intended the domain name "sting.com"
to resolve, prior to any notification of this dispute. The
Respondent did not point the domain name "sting.com"
to the "GunBroker.com" website – this occurred for
a short time as a result of an error on the part of the Respondent’s
web service provider. The Complainant’s assertion that the
Respondent initiated contact with the Complainant is false
- the first contact was initiated by the Complainant on May
16, 2000.
5 Parties’ Contentions
The Complaint
5.1 The Complainant contends that each of the
three elements specified in paragraph 4(a) of the Uniform
Policy are applicable to the domain name the subject of this
dispute.
5.2 In relation to element (i) of paragraph
4(a) of the Uniform Policy, the Complainant contends that
the domain name is identical in its substantive part to the
Complainant’s unregistered trademark and service mark STING.
5.3 In relation to element (ii) of paragraph
4(a) of the Uniform Policy, the Complaint contends that the
Respondent has no rights or legitimate interests in respect
of the domain name in issue.
5.4 In relation to element (iii) of paragraph
4(a) of the Uniform Policy, the Complainant contends that
evidence of bad faith registration and use is established
by the following circumstances. First, the Respondent offered
to sell the domain name to the Complainant for $25,000, an
activity which corresponds to that listed in paragraph 4(b)(i)
of the Policy as evidence of bad faith registration and use
of a domain name. Secondly, the Respondent has used the domain
name mark to link to the "GunBrokers.com" web site,
and as such is intentionally attempting to attract, for commercial
gain, Internet users to an on-line location by creating a
likelihood of confusion with the STING mark as to source,
sponsorship, affiliation, or endorsement, being an activity
which corresponds to that listed in paragraph 4(b)(iv) of
the Policy as evidence of bad faith registration and use of
a domain name. In addition, that site is personally offensive
to the Complainant and contrary to his established reputation,
and tarnishes the STING mark in violation of 15 U.S.C. § 1125(c).
Thirdly, because the Complainant’s STING mark has a strong
reputation and is world famous, the Respondent can make no
good faith use of the domain name, and "it is not possible
to conceive of any plausible actual or contemplated active
use of the [D]omain [N]ame by the Respondent that would not
be illegitimate, such as by being a passing off, an infringement
of consumer protection legislation, or an infringement of
the Complainant’s rights under trademark law".
The Response
5.5 The Respondent denies that each of the
three elements specified in paragraph 4(a) of the Uniform
Policy are applicable to the domain name the subject of this
dispute.
5.6 In relation to element (i) of paragraph
4(a) of the Uniform Policy, the Respondent admits that he
registered that domain name "sting.com", and that
the domain name is identical to the STING mark. However, the
Respondent challenges the Complainant’s claim to owning the
STING mark, and the Complainant’s claim that the STING mark
is world famous and exclusively associated with the Complainant
and so entitled to protection against dilution. In particular,
the Respondent contends that the trademark STING has been
the subject of 20 registrations in the United States, none
of which have been granted to the Complainant. A list purporting
to be a printout from an internet search of the United States
Patent and Trademark Office database of trademark registrations
for the word STING is Exhibit J to the Response.
5.7 In relation to element (ii) of paragraph
4(a) of the Uniform Policy, the Respondent contends that his
use of the nickname "Sting" and more recently "=Sting="
publicly on the Internet for at least 8 years has given him
a legitimate interest in the domain name. The Respondent provided
documentary evidence in Exhibits A, C, D, E and H to
the Response, showing that for some years prior to this dispute
he has used the domain name to point to a web site for email
purposes, he has used the nickname "sting" or "=sting="
with global internet gaming services, and he has had in development
a web site intended to be located at the URL http://www.sting.com.
5.8 In relation to element (iii) of paragraph
4(a) of the Uniform Policy, the Respondent contends that his
activities since registration of the domain name demonstrate
that he did not register and has not been using the domain
name in bad faith. In particular, the Respondent denies the
Complainant’s contention that the Respondent offered to sell
the domain name to the Complainant for a sum greater than
out of pocket expenses. Rather, the Respondent contends that
it was the Complainant, through his attorney, who contacted
him in relation to the domain name. The Respondent provides
in Exhibit B to the Response a copy of an email from the Complainant’s
attorney to him of May 17, 2000, initiating contact. The Respondent
admits that upon solicitation from the Complainant’s attorney
he did make an offer to sell the domain name, but contends
that this does not demonstrate his primary purpose in registering
the domain name was to sell it to the Complainant.
5.9 In relation to the use of the domain name
to point to the "GunBrokers.com" web site, the Respondent
contends that because this occurred due to a mistake by his
web service provider, it is not evidence of bad faith use
by him. Exhibit I of the Response contains a copy of a letter
purporting to be from the Respondent’s web service provider
explaining how this mistake occurred. In addition, the Respondent
contends that he had no knowledge of the Complainant’s distaste
for a web site selling guns.
5.10 The Respondent makes the further contention
that it cannot be said he has engaged in a pattern of conduct
of preventing trademark owners from reflecting their trademark
in a corresponding domain name, because the other two domain
names the Respondent owns have not been offered for sale to
anyone.
6 Discussion and Findings
Domain Name Identical or Confusingly Similar
to Complainant’s Mark
6.1 The relevant part of the domain name "sting.com"
is "sting". The Complainant asserts, the Respondent
admits, and this Administrative Panel finds, that the domain
name is identical to the word STING.
6.2 The Complainant is not the owner of a trademark
or service mark registration for the word STING. It is, however,
clear that the Uniform Policy is not limited to a "registered"
mark; an unregistered, or common law, mark is sufficient for
the purposes of paragraph 4(a)(i). The Complainant did not
provide any documentary evidence in support of his assertion
that he is the owner of the unregistered trademark and/or
service mark STING. However, the Uniform Policy is not limited
to trademarks or service marks "owned" by the Complainant;
it is sufficient for the purposes of paragraph 4(a)(i) that
there be a trademark or service mark "in which the Complainant
has rights". The Complainant asserted, and this Administrative
Panel through the equivalent of taking judicial notice finds,
that the Complainant is a world famous entertainer who is
known by the name STING.
6.3 The question that arises is whether being
known under a particular name is the same as having rights
in that name as a "trademark or service mark". The
answer to this question is not straightforward. On the one
hand, there are a number of cases under the Uniform Policy
in which the Panel has treated the name of a famous or at
least widely known person as constituting an unregistered
trademark or service mark sufficient for the purposes of paragraph
4(a)(i) (eg. Julia Fiona Roberts v Russell Boyd
WIPO Case No. D2000-0210; Jeannette Winterson v Mark Hogarth
WIPO Case No. D2000-0235; Steven Rattner v BuyThisDomainName
(John Pepin) WIPO Case No. D2000-0402).
6.4 On the other hand, the Report of the WIPO
Internet Domain Name Process of April 30, 1999, on which ICANN
based the Uniform Policy, at paragraphs 165-168, states as
follows (footnote citations deleted, emphasis added):
The preponderance of views, however, was in
favor of restricting the scope of the procedure, at least
initially, in order to deal first with the most offensive
forms of predatory practices and to establish the procedure
on a sound footing. Two limitations on the scope of the procedure
were, as indicated above, favored by these commentators. The
first limitation would confine the availability of the procedure
to cases of deliberate, bad faith abusive registrations. The
definition of such abusive registrations is discussed in the
next section. The second limitation would define abusive registration
by reference only to trademarks and service marks. Thus, registrations
that violate trade names, geographical indications or personality
rights would not be considered to fall within the definition
of abusive registration for the purposes of the administrative
procedure. Those in favor of this form of limitation pointed
out that the violation of trademarks (and service marks) was
the most common form of abuse and that the law with respect
to trade names, geographical indications and personality rights
is less evenly harmonized throughout the world, although international
norms do exist requiring the protection of trade names and
geographical indications. We are persuaded by the wisdom of
proceeding firmly but cautiously and of tackling, at the first
stage, problems which all agree require a solution. … [W]e
consider that it is premature to extend the notion of abusive
registration beyond the violation of trademarks and service
marks at this stage. After experience has been gained with
the operation of the administrative procedure and time has
allowed for an assessment of its efficacy and of the problems,
if any, which remain outstanding, the question of extending
the notion of abusive registration to other intellectual property
rights can always be re-visited.
It is clear from this statement that personality
rights were not intended to be made subject to the proposed
dispute resolution procedure. In adopting the procedure proposed
in the WIPO Report, ICANN did not vary this limitation on
its application. It must be concluded, therefore, that ICANN
did not intend the procedure to apply to personality rights.
6.5 In the opinion of this Administrative Panel,
it is doubtful whether the Uniform Policy is applicable to
this dispute. Although it is accepted that the Complainant
is world famous under the name STING, it does not follow that
he has rights in STING as a trademark or service mark. Unlike
the personal names in issue in the cases Julia Fiona Roberts
v Russell Boyd, Jeannette Winterson v Mark Hogarth, and Steven
Rattner v BuyThisDomainName (John Pepin), the personal name
in this case is also a common word in the English language,
with a number of different meanings. The following are the
entries for "sting" from Merriam- Webster’s
Collegiate Dictionary:
sting vb stung ; sting.ing [ME, fr. OE stingan;
akin to ON stinga to sting and prob. to Gk stachys spike of
grain, stochos target, aim] vt (bef. 12c) 1: to prick painfully:
as a: to pierce or wound with a poisonous or irritating process
b: to affect with sharp quick pain or smart "hail stung
their faces" 2: to cause to suffer acutely "stung
with remorse" 3: overcharge, cheat ~ vi 1: to wound one
with or as if with a sting 2: to feel a keen burning pain
or smart; also: to cause such pain -- sting.ing.ly adv
sting n (bef. 12c) 1 a: the act of stinging;
specif: the thrust of a stinger into the flesh b: a wound
or pain caused by or as if by stinging 2: stinger 2 3: a sharp
or stinging element, force, or quality 4: an elaborate confidence
game; specif: such a game worked by undercover police in order
to trap criminals
6.6 In light of the fact that the word "sting"
is in common usage in the English language, with a number
of meanings, this case can be distinguished from the other
cases cited above in which the Complainants’ personal name
was found also to be an unregistered trademark or service
mark to which the Uniform Policy applies. This Administrative
Panel is inclined to the view, therefore, that the Complainant’s
name STING is not a trademark or service mark within the scope
of paragraph 4(a)(i) of the Uniform Policy. However, it is
not necessary to reach a formal decision on this issue, because
this Administrative Panel finds against the Complainant on
other grounds, namely that the requirement of paragraph 4(a)(iii)
is not met, as discussed below.
Respondent’s Rights or Legitimate Interests
in the Domain Name
6.7 The Respondent provided evidence of circumstances
of the type specified in paragraph 4(c) of the Uniform Policy
as giving rise to a right to or legitimate interest in the
domain name. In particular, the Respondent provided in Exhibit
C of the Response copies of various email communications to
him prior to the commencement of this dispute, showing that
the "UserName", the "nickname", the "Screen
Name", or the "Account PIC" under which the
Respondent had registered for global internet gaming services
consisted of or included the word "sting". In Exhibit
D to the Response, the Respondent provided copies of web page
printouts from The Champions League of Quake, a service which
monitors Quake servers and keeps track of the scores of registered
players of this game. Those printouts show that the Respondent
played this game using the player names "sting"
or "=sting=". In addition, the Respondent provided
evidence in Exhibit E to the Response of preparations by him
to establish a web site at the URL http://www.sting.com.
6.8 Although this evidence is not irrelevant
to the issue of whether or not the Respondent has a right
to or a legitimate interest in the domain name, it is certainly
at the weaker end of the spectrum of such evidence. The Respondent’s
use of the name "sting" or "=sting=" for
gaming does not establish that he has been "commonly
known" by the domain name as contemplated by paragraph
4(c)(ii). The word is undistinctive, and most likely is used
by numerous people in cyberspace. In practice, this word provides
the Respondent with anonymity rather than with a name by which
he is commonly known. The Respondent’s evidence of his preparations
to establish a web site at the URL http://www.sting.com does
not establish the circumstances contemplated by paragraph
4(c)(i), because there is no evidence that this proposed use
of the domain name is in connection with a bona fide offering
of goods or services.
6.9 In short, a more substantive use of the
word "sting" than that proven by the Respondent
is required to show a right or legitimate interest in the
domain name "sting.com" (although this proven use
is relevant to the issue of bad faith). On balance, therefore,
this Administrative Panel finds that the Respondent does not
have a right to or a legitimate interest in the domain name,
in the sense in which that concept is used in paragraph 4(a)(ii)
of the Uniform Policy.
Domain Name Registered and Used in Bad Faith
6.10 The Complainant has not satisfied this
Administrative Panel that the Respondent registered and is
using the domain name in bad faith. The Complainant asserted
that the Respondent offered to sell the domain name to the
Complainant for $25,000, but the Complainant provided no evidence
in support of this assertion. In particular, the Complainant
provided no evidence of the Respondent’s alleged communications
with the Complainant on this issue. The Respondent admitted
that he offered to sell the domain name to the Complainant,
but only after the Complainant solicited that offer. (The
Respondent did not specify the price at which he offered to
sell the domain name, but he did not dispute the Complainant’s
assertion of $25,000, so this Administrative Panel assumes
the offered price was for that amount, or at least for an
amount in excess of the Respondent’s out-of-pocket expenses.)
Although this evidence is consistent with the Complainant’s
contention that the Respondent acquired the domain name primarily
for the purpose of selling it to the Complainant, as required
by paragraph 4(b)(i), this evidence does not prove that. This
evidence is equally consistent with the Respondent’s contention
that he acquired the domain name five years ago in good faith.
In the absence of any evidence whatsoever from the Complainant
going to the assertion of the Respondent’s offer to sell the
domain name, this Administrative Panel finds that the Complainant
has not met the burden of proof on this issue.
6.11 This Administrative Panel does not accept
the Complainant’s contention that the linking of the domain
name to the "GunBroker.com" web site constituted
intentionally attempting to attract, for commercial gain,
Internet users to an on-line location by creating a likelihood
of confusion with the STING mark as to source, sponsorship,
affiliation, or endorsement, and so constitutes an activity
which corresponds to that listed in paragraph 4(b)(iv) of
the Uniform Policy as evidence of bad faith registration and
use of the domain name. Again, the Complainant provided no
evidence in support of this contention. In particular, the
Complainant provided no evidence as to the contents of the
"GunBroker.com" site, and thus no evidence establishing
that a likelihood of confusion with the STING mark was created
as to source, sponsorship, affiliation or endorsement of the
site. The Respondent admitted that the domain name did point
to the "GunBroker.com" site for a period of time,
but provided evidence to the effect that this was due to an
error on the part of the Respondent’s web service provider.
The evidence is therefore consistent with the Respondent’s
contention that there was no intentional attempt to attract
internet users for commercial gain. Once again, the Complainant
has failed to satisfy its burden of proof on this point.
6.12 Finally, this Administrative Panel does
not accept the Complainant’s contention that "it is not
possible to conceive of any plausible actual or contemplated
active use of the [D]omain [N]ame by the Respondent that would
not be illegitimate, such as by being a passing off, an infringement
of consumer protection legislation, or an infringement of
the Complainant’s rights under trademark law". The words
in quotation marks come from Telstra Corporation Limited v
Nuclear Marshmallows WIPO Case No. D2000-0003. In the Telstra
case, the trademark in question was an invented word. In this
case the mark in question is a common word in the English
language, with a number of meanings. Unlike the situation
in the Telstra case, therefore, it is far from inconceivable
that there is a plausible legitimate use to which the Respondent
could put the domain name. The Respondent has asserted a legitimate
use to which he has put, and intends to put, the domain name.
Whilst the evidence provided in support of this assertion
is not particularly strong, it is at least consistent with
that assertion, and with his overall contention that he did
not register and has not been using the domain name in bad
faith. The Complainant has thus failed to satisfy the burden
of proof on this point.
7. Decision
7.1 This Administrative Panel decides that
the Complainant has not proven each of the three elements
in paragraph 4(a) of the Uniform Policy in relation to the
domain name the subject of the Complaint.
7.2 Pursuant to paragraph 4(i) of the Uniform
Policy and paragraph 15 of the Uniform Rules, this Administrative
Panel denies the request that the Registrar, Network
Solutions, Inc, be required either to transfer to the Complainant,
Gordon Sumner, p/k/a Sting, or to cancel, the domain name
"sting.com".
--------------------------------------------------------------------------------
Andrew F. Christie
Sole Panelist
Dated: July 24, 2000
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Attachment 1
ADMINISTRATIVE PANEL INTERIM ORDER
Gordon Sumner, p/k/a Sting v Michael Urvan
Case No. D2000-0596
Background to this Interim Order
1 The Complainant, by email to the WIPO Arbitration
and Mediation Center (‘WIPO Center’) on June 13,
2000, filed a Complaint against the Respondent in relation
to the domain name "sting.com", pursuant to the
Uniform Domain Name Dispute Resolution Policy implemented
by the Internet Corporation for Assigned Names and Numbers
(ICANN) on October 24, 1999, ("Uniform Policy"),
and under the Rules for Uniform Domain Name Dispute Resolution
Policy implemented by ICANN on the same date ("Uniform
Rules"). A Notification of Complaint and Commencement
of Administrative Proceeding was sent to the Respondent on
June 20, 2000. The Respondent filed a Response within the
required time, which was received at the WIPO Center by email
on July 8, 2000. On July 11, 2000, the WIPO Center appointed
Dr Andrew F. Christie as Sole Panelist in this case.
2 On the same day as the appointment of this
Administrative Panel, the Respondent by email to the WIPO
Center (a copy of which was forwarded to this Administrative
Panel) requested the opportunity to file a Reply to Respondent’s
Response. On the same day the WIPO Center by email replied
as follows (a copy of which was forwarded to this Administrative
Panel):
Uniform Policy and Rules do not foresee submission
of pleadings following the Complaint and Response. As the
Administrative Panel has now been appointed in this case,
and the Case File has been transmitted, the sole discretion
whether to call for further particulars or pleadings now rests
with the Panel, who will be copied your request.
3 By email to the WIPO Center on July 14, 2000,
(a copy of which was forwarded to this Administrative Panel),
the Complainant requested a Stay of this dispute, for the
following reasons:
Complainant has still not received the hard
copy (including Exhibits) of Respondent's Reply, although
Respondent claims he mailed them on July 7th.
Complainant received Respondent's Response via e-mail. The
Response raises several issues that Complainant strongly feels
need to be addressed, and Complainant has already submitted
a request to the Panel that Complainant be allowed to file
a Reply. However, Complainant cannot complete the Reply without
the benefit of Respondent's Exhibits, which Complainant has
still not received. Complainant therefore respectfully requests
a Stay of this Dispute, pending Complainant's receipt of Respondent's
Exhibits.
4 On July 19, 2000, by email to the WIPO Center
(a copy of which was forwarded to this Administrative Panel),
the Complainant purported to file a Reply to Respondent’s
Response.
5 On the same day as the Complainant purported
to file the Reply, by email to the WIPO Center (a copy of
which was forwarded to this Administrative Panel), the Respondent
communicated as follows:
As shown from the copy of the correspondence
below, Complainant was specifically warned NOT to make anymore
submissions until such time as the Panel acknowledges the
Complainant’s request and agrees to allow further submissions.
Therefore, respondent respectfully requests that Complainant's
submission be disregarded. Should the Panel decide to allow
the reply, Respondent wishes to rebut. Should the Panel decide
to allow more submissions, then Respondent asks that Respondent
be granted the final submission/closing argument as is customary.
For the sake of order, Respondent asks Complainant’s counsel
to please maintain discipline and follow the arbiter's instructions.
Observations on the filing of Supplementary
Submissions
6 The WIPO Center, in its communication with
the Complainant, correctly observed that the Uniform Policy
and Uniform Rules do not provide for the parties to the dispute
filing supplementary submissions subsequent to the Complaint
and the Response. However, rule 12 of the Uniform Rules does
provide that:
In addition to the complaint and the response,
the Panel may request, in its sole discretion, further statements
or documents from either of the Parties.
7 This Administrative Panel agrees with the
views of the three-member Administrative Panel in Document
Technologies, Inc. v. International Electronic Communications,
Inc (WIPO Case D2000-0270) in relation to the filing of supplementary
submissions, which were as follows:
Although litigants and parties in arbitrations
may have a right of reply under the rules of other forums,
ICANN chose a different procedure for these proceedings that
calls for only a Complaint and a Response. Among other things,
this more truncated procedure allows for more rapid and cost
effective resolution of domain name challenges. See CRS Technology
Corp. v. CondeNet, Inc., File No. FA#0002000093547 (NAF Mar.
28, 2000). At the same time, ICANN provided the Panel with
the flexibility to seek additional submissions if the Panel
feels that it cannot rule on the record submitted. If a Party
wishes to submit a further statement, the better practice
under the Rules would be to first seek consent from the Panel,
with an explanation of why a further statement is warranted.
Appropriate reasons may include the existence of new, pertinent
facts that did not arise until after the submission of the
complaint, or the desire to bring new, relevant legal authority
to the attention of the Panel. E.g., Pet Warehouse v. Pets.Com,
Inc., Case No. D2000-0105 (WIPO Apr. 13, 2000). The Panel
would then be in a position quickly to rule on the request
and, if it determines that a further statement is warranted,
set a schedule that is fair to both parties and provides each
party with an opportunity to supplement the record. This procedure
also would save the Parties the expense of preparing further
statements that the Panel decides not to accept. See generally
Plaza Operating Partners, Ltd. v. Pop Data Technologies and
Joseph Pillus, Case No. D2000-0166 (WIPO June 1, 2000).
8 There can be no doubt that neither the Complainant
nor the Respondent has a right to file supplementary submissions
subsequent to the Complaint and the Response. Supplementary
submissions can only be filed in response to a request for
such from the Panel. Accordingly, this Administrative Panel
is strongly of the opinion that parties must refrain from
purporting to submit unsolicited supplementary submissions.
It is, of course, for each Administrative Panel to determine
whether or not to request supplementary submissions, taking
into account all the circumstances of the particular case
(including but not limited to any plea from a party for leave
to file further material). Nevertheless, this Administrative
Panel considers that it would, and should, be in exceptional
cases only that supplementary submissions are requested by
a Panel. If requesting supplementary submissions were to become
unexceptional, the dispute resolution procedure under the
Uniform Policy and Rules would most likely become significantly
more resource-consuming to all the actors (ie. the parties,
the dispute resolution service provider, and the Administrative
Panel) than is currently the case, as the unfolding scenario
in this case demonstrates. Such an outcome seems contrary
to the clear intention of ICANN in adopting the Uniform Policy
and the Uniform Rules in their present form.
Deliberations of this Administrative Panel
9 This Administrative Panel has not requested
any supplementary submissions and, in the absence of such
a request, will not read them. Accordingly, this Administrative
Panel has not read the Complainant’s Reply. It follows that,
unless a request for a supplementary submission is made by
this Administrative Panel, there is no need for the Respondent
to file any rebuttal. It also follows that the Complainant’s
request for a Stay is denied.
10 Nevertheless, this Administrative Panel
considers that an abundance of caution for procedural fairness
requires that the Complainant be given time to consider its
position in light of the above observations and this Interim
Order. Accordingly, this Administrative Panel finds that there
are exceptional circumstances of the type contemplated by
rule 15(b) of the Uniform Rules, such as to mean that the
time for forwarding a Decision in this case will be extended
by two days, to July 26, 2000.
Interim Order
11 This Administrative Panel orders that:
(a) the Complainant’s request for a Stay is
denied
(b) the Complainant’s purported submission
of a Reply is invalid, and shall be disregarded by this Administrative
Panel
(c) the time for this Administrative Panel
to forward a Decision in this case to the WIPO Center is extended
to July 26, 2000.
--------------------------------------------------------------------------------
Andrew F. Christie
Sole Panelist
Dated: July 19, 2000
--------------------------------------------------------------------------------
Attachment 2
ADMINISTRATIVE PANEL 2nd INTERIM ORDER
Gordon Sumner, p/k/a Sting v Michael Urvan
Case No. D2000-0596
Background to this 2nd Interim Order
1 This Administrative Panel issued an Interim
Order on July 19, 2000, denying the Complainant’s request
for a Stay, ruling invalid and disregarding the Complainant’s
purported submission of a Reply to the Respondent’s Response,
and extending to July 26, 2000, the time for this Administrative
Panel to forward a Decision in this case to the WIPO Center.
2 By email to the WIPO Center on July 19, 2000,
(a copy of which was forwarded to this Administrative Panel),
the Complainant requested that it be permitted to submit a
Reply. It pleaded that a further statement by the Complainant
was warranted for the following reasons:
Respondent has submitted factual issues pertaining
to a) his alleged "good faith" use of
the domain name; b) his dealings with representatives of Complainant;
c) his pointing the domain name to a gun broker site; and
d) his alleged use of the domain name as a "nick name,"
that are pertinent to this dispute and that are strongly disputed
by Complainant and Complainant's counsel (who has first hand
knowledge of many of these factual issues). Further, Respondent
has submitted legal arguments concerning Complainant's rights
in his mark and Respondent's alleged "legitimate or fair
use" of the Domain Name, that Complainant feels should
be addressed by both Parties in order for the Panel to reach
a decision, rather than require the Panel to rely solely on
the unilateral statements and arguments of Respondent.
Deliberations of this Administrative Panel
3 In its Interim Order of July 19, 2000, this
Administrative Panel expressed the view that it should be
in exceptional cases only that supplementary submissions are
requested by a Panel. This Administrative Panel does not consider
that the circumstances of this case are exceptional, such
as to require the Panel to request the Complainant to file
a Reply. The reasons for this view are set out below.
4 The Complainant has pleaded two grounds as
justifying the Panel to request a supplementary submission.
The first ground is that the Respondent has "submitted
factual issues pertaining to" his alleged good faith,
his dealings with representatives of the Complainant, and
his use of the domain name "that are pertinent to this
dispute and that are strongly disputed by Complainant".
Such circumstances are hardly exceptional. Indeed, the circumstance
of a Respondent filing material that pertains to relevant
issues and consists of facts disputed by the Complainant is,
in this Administrative Panel’s experience of adjudicating
domain name disputes under the ICANN Uniform Policy and Rules,
unexceptional in the extreme.
5 The second ground pleaded by the Complainant
is that the Respondent "has submitted legal arguments"
concerning the Complainant’s rights and the Respondent’s alleged
legitimate or fair use of the domain which the Complainant
feels "should be addressed by both Parties" rather
than requiring the Panel "to rely solely on the unilateral
statements and arguments" of the Respondent. This Administrative
Panel has considered carefully the Complaint and the Response
filed in this case, and is satisfied that these documents
are sufficient for it to properly resolve this case without
reference to supplementary material. The Complaint contains
assertions going to the issue of the Complainant’s rights
in his mark and the issue of the Respondent’s alleged bad
faith. The Response contains assertions going to both of those
issues, as well as assertions going to the closely-related
issue of the Respondent’s alleged legitimate interest or fair
use of the domain name. In this Administrative Panel’s view,
there is sufficient information in these documents to ensure
that the Panel’s decision on these issues (and the other relevant
issues) is not based "solely on the unilateral statements
and arguments of the Respondent".
6 In short, there is nothing exceptional about
the facts in dispute between the parties, the disputed application
of the principles of the Uniform Policy to those facts, or
the form and substance of the Complaint and the Response filed
by the parties, which warrants complicating the resolution
of this dispute by requesting supplementary submissions from
either or both of the parties. Accordingly, this Administrative
Panel refuses the Complainant’s request to be allowed to submit
a Reply.
2nd Interim Order
7 This Administrative Panel orders that the
Complainant’s request to be allowed to submit a Reply is denied.
--------------------------------------------------------------------------------
Andrew F. Christie
Sole Panelist
Dated: July 20, 2000