Vondutch.com

The timeline behind vondutch.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Lutton Investments, Inc. v. Darkhorse Distribution, Inc. Claim Number: FA0304000154142 PARTIES Complainant is Lutton Investments, Inc., Los Angeles, CA (“Complainant”) represented by Perry Mocciaro, of Cox Castle & Nicholson LLP. Respondent is Darkhorse Distribution, Inc., Venice, CA (“Respondent”) represented by Robert Ring, of Ring & Green. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <vondutch.com>, registered with Network Solutions, Inc. PANEL The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding. The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 9, 2003; the Forum received a hard copy of the Complaint on April 17, 2003. On April 11, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <vondutch.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On April 23, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 13, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@vondutch.com by e-mail. A timely Response was received and determined to be complete on May 13, 2003. On May 22, 2003, Complainant submitted an untimely Reply to which Respondent objects. The Panel overrules Respondent’s objections and has considered Complainant’s reply. On May 22, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant makes the following assertions: 1. Respondent’s <vondutch.com> domain name is confusingly similar to Complainant’s VON DUTCH mark. 2. Respondent does not have any rights or legitimate interests in the <vondutch.com> domain name. 3. Respondent registered and used the <vondutch.com> domain name in bad faith. B. Respondent Respondent contends that he has rights in the domain name <vondutch.com> and VONDUTCH mark. Respondent requests this matter be stayed pending resolution of previously filed arbitration proceedings in California affecting the ownership of the VONDUTCH mark. ADDITIONAL SUBMISSION In its Additional Submission Complainant has submitted its extensive arguments on the merits in the pending California arbitration. These additional submissions reinforce the Panel’s decision that determination of these issues are beyond the scope of an ICANN proceeding. FINDINGS A dispute has arisen regarding the ownership of Von Dutch Limited, LLC and the intellectual property rights in the mark VON DUTCH. Most of these claims are subject to a pending arbitration before Action Dispute Resolution Services in Los Angeles County bearing ADRS case number 02-2059 before the Honorable Enrique Romero, retired judge. Arbitration proceedings commenced in January of 2003 and are set for a continued hearing to be finalized in or about August or September of 2003. Numerous complex issues are presented in the California arbitration. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Procedural Matter The Panel has decided not to consider this case on its merits. Rule 18(a) provides: “in the event of any legal proceeding initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision”. The pending arbitration between the parties to this dispute, touching on matters directly relevant to the resolution of a claim under the UDRP, justifies terminating the present administrative proceeding. See AmeriPlan Corp. v. Gilbert FA105737 (Nat. Arb. Forum April 22, 2002) (Regarding simultaneous court proceedings and UDRP disputes, Policy ¶ 4(k) requires that ICANN not 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 a decision regarding the domain name will have no practical consequence); see generally NAT Int’l v. Suez FA 105930 (Nat. Arb. Forum May 15, 2002) (finding that because prior to the commencement of the administrative proceeding, a legal proceeding had already resulted in a judgment determining the very issue raised for decision by the Panel, the Panel should exercise its discretion and terminate the proceedings). DECISION Because this matter is subject to previously filed arbitration proceedings in the State of California, the ICANN proceedings are terminated and the Complaint is Dismissed without prejudice. The Honorable Charles K. McCotter, Jr. (Ret.), Panelist Dated: June 4, 2003 Click Here to return to the main Domain Decisions Page. 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Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.