McNeil Ohio Corporation v. National Advertising, Inc.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

McNeil Ohio

Corporation v. National Advertising, Inc.

Case No.

D2001-0409

1. The Parties

Complainant is McNeil Ohio

Corporation, ("Complainant"), a corporation incorporated to do business

in the State of Minnesota, USA, with a principal place of business located at

1500 County Road B, St. Paul, MN, USA.

Respondent is National

Advertising, Inc., ("Respondent"), a corporation of unknown origin

with a street address at 101 South 8th Street, Philadelphia, PA,

USA.

2. The Domain Name and

Registrar

The domain name at issue

is <lincoln.com> (the "Domain Name"). The registrar is Network

Solutions, Inc. ("NSI"), located in Herndon, VA, USA.

3. Procedural History

On March 22, 2001, the

WIPO Arbitration and Mediation Center ("the Center") received a copy

of the Complaint by email. On March 26, 2001, the Center received hardcopies

of the Complaint. On March 27, 2001, the Center sent an Acknowledgment of Receipt

of Complaint to the Complainant. The Complainant paid the required fee for a

three-member panel.

Also on March 27, 2001,

the Center sent a Request for Verification to the Registrar requesting verification

of registration data. On March 28, 2001, the Registrar confirmed, inter alia,

that it is the registrar of the Domain Name and that the Domain Name is registered

in the Respondent’s name.

On March 28, 2001, the

Center verified the Complaint satisfies the formal requirements of the ICANN

Uniform Domain Name Dispute Resolution Policy (the "Policy"), the

Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"),

and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

(the "Supplemental Rules").

On March 29, 2001, the

Center sent a Notification of Complaint and Commencement of Administrative Proceeding

to the Respondent together with a copy of the Complaint. The Notification was

sent to the Respondent by the methods required under paragraph 2(a) of the Rules.

The Notification of Complaint indicated a Response was due by April 17, 2001.

A copy of the Notification was also sent to the Complainant.

On April 20, 2001, having

received no Response from the Respondent, the Center issued a Notification of

Respondent Default.

On May 1, 2001, after the

deadline for the Response had passed, Respondent submitted a Motion to Terminate

the Proceeding (the "Motion"), followed by a supplement to the Motion.

Complainant opposed Respondent’s Motion by filing an Opposition to Respondent’s

Motion to Terminate the Proceeding (the "Opposition"). The WIPO Center

advised the parties that the Panel would determine whether to accept and review

these submissions. The Panel has decided to accept and review the motion, supplement

and the opposition. Footnote 1

On May 25, 2001, after

having received Statements of Acceptance and Declarations of Impartiality and

Independence, the Center notified the parties of the appointment of a three-member

panel, consisting of Roderick M. Thompson as Presiding Panelist and Paul E.

Mason and Jeffrey M. Samuels as Co-Panelists.

4. Factual Background

Complainant is the owner

of a federally registered trademark LINCOLN for lubrication divider valves and

lubricating machines.

No information appears

in the record before the Panel concerning the nature of Respondent’s business.

5. Discussions and Findings

In its Motion, as described

above, the Respondent argued that the administrative proceeding should be terminated

because a third party, Ford Motor Company, initiated a legal proceeding against

the Respondent regarding the same domain name. Respondent provided a copy of

the complaint filed with the court, along with the Registrar Certificate tendering

"complete control and authority over the registration" of the domain

name to the court. Respondent also submitted a copy of the Stipulated Preliminary

Injunction issued by the Court "transferring the domain name to the custody

of the Court."

When a legal proceeding

regarding a disputed domain name is initiated during an administrative proceeding,

Paragraph 18(a) of the Rules gives the Panel the discretion to decide whether

to suspend or terminate the proceeding or proceed to a decision. In its Opposition,

Complainant suggested that the Panel should deny the Motion to Terminate because

the legal proceeding was commenced after Complainant had initiated this administrative

proceeding. The Rule, however, gives the Panel discretion to terminate when

legal proceedings are initiated prior to or during an administrative

proceeding.

The circumstances involved

in this case warrant exercise of our discretion. A third party with a prima

facie valid claim to the mark LINCOLN has initiated a legal proceeding regarding

the domain name at issue here, and the Registrar has transferred control of

the disputed domain name to the Court in that case. What results is essentially

a three-way dispute between two trademark owners and a domain name registrant

which is not within the purview of the UDRP or this administrative proceeding.

Moreover, the existence of the court order taking custody of the domain name

in dispute and the Registrar Certificate would effectively prevent this Panel

from transferring the domain name, which is the relief requested in this proceeding.

The Panel notes that there is no indication that Respondent had any control

of the decision to file the litigation or its timing, and there is no suggestion

that the litigation was filed to manipulate the outcome of this proceeding.

6. Decision

Considering the submissions

of the parties and the unique factors involved in this case, the Panel decides

that termination is appropriate. The Panel therefore terminates this administrative

proceeding without prejudice to the Complainant. Nothing in this decision shall

prevent the Complainant from protecting its rights by intervening in the legal

proceeding initiated by Ford Motor Company, or from filing another UDRP complaint

when the litigation is completed.

Roderick

M. Thompson

Presiding Panelist

Paul

E. Mason

Panelist

Jeffrey

M. Samuels

Panelist

Dated: June

21, 2001

Footnotes:

1.

On May 30, 2001, the WIPO Center received a Request to File a Reply to Complainant's

Opposition to Respondent's Motion to Terminate the Proceeding. The Panel denies

that request. (back to text)