American Film Marketing Association v. Andy Hasse

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AFMA, Inc., v. Globemedia

Case No. D2001-0558

1. The Parties

The Complainant is AFMA (American Film Marketing Association), a California

mutual benefit, not-for-profit corporation. The Complainant proceeds pro se.

The Respondent is Globemedia, an apparently unincorporated entity. The Respondent

proceeds pro se.

2. The Domain Name and Registrar

The domain name at issue is <afm.com>. The domain name is registered

with TierraNet, Inc.

3. Procedural History

AFMA filed its Complaint with the World Intellectual Property Organization

("WIPO") Arbitration and Mediation Center (the "Center")

by email on April 18, 2001. The Center received a hard copy version of the Complaint

on April 25, 2001. The Center verified that the Complaint satisfied the formal

requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the

"Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute

Resolution (the "Rules"), and the Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel

agrees that the Complaint satisfies the requirements, except with respect to

the naming of multiple Respondents (an issue discussed in Section 5 below);

with respect to that issue, the Panel requests that the Center consider, in

connection with its administration of future cases, whether it is appropriate

to require Complainants to amend any Complaint that names more than one Respondent.

The Center formally commenced this administrative proceeding on April 25,

2001.

The Center initially designated May 14, 2001, as the response date. At

the request of the Respondent, the Center extended that deadline to May 25,

2001. The Respondent timely filed its Response on May 25, 2001.

On July 4, 2001, after clearing for potential conflicts, the Center appointed

Dana Haviland and Michael Froomkin as Panelists and David H. Bernstein

as the Presiding Panelist in this matter [1].

Pursuant to Rule 10(c), and to (i) provide the parties an opportunity to submit

their preferences for the Presiding Panelist, and (ii) allow the Panel sufficient

time to review the voluminous case file, discuss the complexities of this case,

and confer to reach consensus, the Panel extended the date for expected decision.

4. Motion to Recuse

On May 9, 2001, the Respondent asked the Center to recuse itself from the proceedings.

The Respondent alleged that the Center faced a conflict of interest, or the

appearance of a conflict of interest, because AFMA is a member of WIPO and has

been an active participant in WIPO discussions about intellectual property.

After soliciting a response from AFMA, the Center, on May 16, 2001, declined

to recuse itself:

"After careful study of the arguments contained in the submission on the

issue of recusal, the . . . Center . . . has determined that it will continue

to act as the administering authority of this matter. The Center’s role is administrative

in nature as an ICANN approved provider under the UDRP".

On May 17, 2001, the Respondent reiterated its request that the Center

recuse itself and appoint another arbitration body in its stead. The Respondent’s

motion to recuse rests on five allegations of conflict of interest. First, the

Respondent asserts that AFMA is the only U.S.-accredited non-governmental organization

("NGO") member of WIPO (and one of seven NGO members of WIPO worldwide).

Second, AFMA is a member of the International Intellectual Property Alliance

and has submitted comments to WIPO on the Internet domain name process. Third,

at least one individual has served as an arbitrator for both WIPO and AFMA-sponsored

dispute resolutions. Fourth, board and other members of AFMA have taken part

in WIPO conferences for several years. And fifth, the Respondent asserts that

searches with popular search engines turn up several hundred web pages that

connect AFMA in some way with WIPO. The Respondent alleges that these ties,

both individually and together, amount to a conflict of interest, or at least

a perception of such a conflict, that calls into question the Center’s ability

to appoint impartial panelists.

The Complainant opposes the Respondent’s motion. The Complainant argues that

(1) the Respondent cited no authority for his request; (2) the Rules and

Supplemental Rules limit the decision-making authority of an administrative

dispute resolution provider ("Provider"); (3) Rule 7 charges the Panelists

to disclose any justifiable doubt of their impartiality or independence; (4)

Supplemental Rule 8 requires the Panelists to submit declarations of their independence;

and (5) Supplemental Rule 6(b) states that the Center may provide administrative

assistance only.

Through the Policy, ICANN has charged the Provider with administering the UDRP

dispute resolution process. The Provider’s responsibilities include managing

the case, transmitting the complaint to the respondent, appointing a panel to

hear and decide the case, and handling the flow of paperwork between the complainant,

respondent and panel. The Policy expressly allows the complainant to select

the Provider. Policy ¶ 4(d). AFMA has selected the Center as the Provider

for this dispute.

The Policy does not give panels the authority to order recusal of a provider.

The Panel thus dismisses Respondent’s motion to recuse the Center. To the extent

the motion is treated as one for recusal of the Panel itself, the Panel rejects

that motion. Each of the panelists has certified that she or he is impartial

and independent in this matter, and Respondent has not cited any other basis

for seeking recusal of any panelist. See Rule 7 ("[a] Panelist shall

be impartial and independent," and should be replaced if "circumstances

arise that could give rise to justifiable doubt as to the impartiality or independence

of the Panelist"); cf. Britannia Bldg. Soc’y v. Britannia Fraud Prevention,

WIPO Case No. D2001-0505 (July 6, 2001), (discussing

general principles governing recusal of a panelist) [2].

5. Jurisdictional Issues

Before turning to the merits, the Panel must address two jurisdictional issues.

First, although the Respondent did not object, the Panel notes that Complainant

has improperly named three separate parties as Respondents: Globemedia, the

official registrant of the domain name; Andy Hasse, its administrative contact;

and <afm.com>, the entity that is listed as the registrant on WHOIS (though,

as noted above, the Registrar identifies the "registrant of record"

as Globemedia). See Email from TierraNet Support to the Center (April

19, 2001), (verifying Globemedia as the registrant of record).

Neither the Policy nor the Rules provide for the naming of multiple Respondents.

Rather, the Rules are quite explicit that the Respondent in a UDRP proceeding

is the registrant. Rule 1 ("Respondent means the holder of a domain-name

registration against which a complaint is initiated."). There is no provision

for naming as additional respondents any third parties, such as administrative

contacts or officers of the registrant. Plaza Operating Partners, Ltd. v.

Pop Data Techs., Inc., and Joseph Pillus, WIPO

Case No. D2000-0166 (June 1, 2000), (a panel has jurisdiction only over

parties that have agreed to be subject to its proceedings, such as registrants

of gTLDs who have so agreed through their registration agreements).

Here, only Globemedia, the domain name registrant, is a proper Respondent.

Accordingly, the Panel dismisses Andy Hasse and <afm.com> as Respondents.

This ruling, though, is of no moment as the only remedies available in a UDRP

proceeding are transfer or cancellation of the domain name registration, and

both of those remedies are available only against the registrant. Policy ¶ 4(i);

Rule 3(xiv) (specifying that the complainant must agree "that its claims

and remedies concerning the registration of the domain name . . . shall be solely

against the domain name holder").

The second jurisdictional issue in this case arises from Respondent’s motion

to dismiss the proceeding on the ground that it registered the domain name in

dispute before the Policy was in place. The Respondent thus argues that the

Policy does not cover its conduct. This argument is without merit.

When Globemedia registered <afm.com> in 1996, the registration agreement

with the domain name’s registrar, then NSI, specified that the NSI domain dispute

policy would apply. In addition, NSI reserved the right to revise the terms

of the agreement. See, e.g., Ellenbogen v. Pearson, WIPO

Case No. D2000-0001 (February 7, 2000), (quoting 1998, NSI registration

agreement reserving right to modify dispute resolution agreement and applying

UDRP to domain name registered prior to the adoption of the Policy). As revised,

Respondent’s registration agreement now expressly incorporates the Policy. Moreover,

by maintaining its registration, the Respondent has agreed to submit to the

Policy for the resolution of domain name disputes. TierraNet, Inc., the registrar,

has expressly verified to the Center and the Panel that the Policy applies to

this domain name. See Email from TierraNet Support to the Center (April

19, 2001). Accordingly, Respondent’s motion to dismiss is denied.

6. Factual Background

Complainant, AFMA, is a trade association representing motion picture and television

producers and distributors, and the financial institutions that fund them. AFMA

conducts an annual film market called the American Film Market ("AFM").

AFMA has registered AFM with the U.S. Patent and Trademark Office ("USPTO")

for "arranging and conducting an annual trade show for the motion picture

industry (Reg. No. 1,309,303, issued December 11, 1984, for AFM word mark,

and Reg. No. 1,748,789, issued January 16, 1993, for AFM design mark).

Respondent, Globemedia, registered the <afm.com> domain name on August

6, 1996. The site currently provides hyperlinks to online classified listings

and auction sites, and promotes itself as "The American Flea Market."

Globemedia’s principal is Andy Hasse, who also controls Hasse, Inc., an

Internet consulting business.

7. Parties’ Contentions

Set out below is a summary of the parties’ principal contentions:

A. Complainant

AFMA alleges that the domain name, <afm.com>, is identical or confusingly

similar to its AFM mark. The addition of ".com," the Complaint argues,

does not represent a material difference from AFM standing alone, nor does it

deflect viewers’ perceptions of the mark.

The Complaint offers four reasons why the Respondent has no rights or legitimate

interests in the domain name. First, the Respondent did not use or prepare to

use the <afm.com> domain name in connection with a bona fide offering

of goods or services prior to receiving the Complaint. The Complainant offers

evidence that the <afm.com> website displayed random, unintelligible text

in November 2000, and a "coming soon" notice in January 2001. Complaint

also points to similarities in the design of the <afm.com> website at

the time the Complaint was filed and the design of other websites registered

by the Respondent. Second, the Respondent is not known by the name <afm.com>.

Third, the Respondent has not been making a legitimate noncommercial or fair

use of the <afm.com> domain name. And fourth, the large number of domain

names registered by the Respondent, Andy Hasse, and Hasse, Inc., is

evidence that the Respondent has no legitimate interest in the domain name.

The Complainant alleges that the Respondent registered and used the domain

name in bad faith because its registration was done to prevent the Complainant

from using the mark in a corresponding domain name, and that the Respondent

has engaged in a pattern of such conduct. To establish a pattern, the Complainant

alleges three factors: first, in two previous WIPO disputes involving the <gallimard.com>,

<gallimard.org>, and <gallimard.net> domain names, Panels found

a pattern of bad faith conduct on the part of Globemedia and Andy Hasse. Editions

Gallimard v. Globemedia, WIPO Case No.

D2000-0929 (October 18, 2000); Editions Gallimard v. Hasse,

WIPO Case No. D2000-0930 (October 18,

2000). Second, the Respondent registered names of political candidates running

for mayor of San Francisco as domain names in order to prevent the candidates

from registering their names. Third, the Complainant submits evidence of forty-seven

domain names registered to Globemedia, Andy Hasse, Hasse, Inc., or an affiliated

party, and alleges that twenty-one of these domain names are confusingly similar

or identical to trademarks belonging to others, and many of these domain names

are not in use.

In addition to alleging a pattern of conduct, the Complainant claims that AFMA’s

prior registration of the AFM mark with the USPTO constitutes constructive notice

to the Respondent and therefore establishes bad faith registration and that

the Respondent’s failure to use the infringing name establishes bad faith use.

The Complainant also points to four additional factors as evidence of bad faith:

(1) the random text on the <afm.com> site was removed only after

the Complainant contacted the Respondent about the <afm.com> domain name;

(2) the Respondent has failed to use many of the domains it has registered,

which constitutes abusive domain name speculation; (3) the Respondent has

attempted to make its domain name registrations misleading or confusing by registering

domain names using a variety of names or addresses; and (4) the Respondent did

not return three of the Complainant’s telephone calls made in the fall and winter of

2000-2001, nor did the Respondent provide its attorney’s contact information

to the Complainant.

B. Respondent

The Respondent disputes Complainant’s allegations on all three factors. First,

Respondent asserts that <afm.com> is not identical or confusingly similar

to the Complainant’s AFM mark. The Respondent alleges that the addition of the

".com" suffix to "afm" renders the <afm.com> domain

name distinct from the AFM mark. In addition, the Respondent asserts that at

least 200 businesses in the United States incorporate the letters "AFM"

in their business name. The Respondent also alleges that the domain name <afm.com>

is not confusingly similar to the AFM mark because of the absence of the likelihood

of confusion required to establish trademark infringement.

The Respondent claims that it has legitimate rights in, and has made legitimate

use of, the <afm.com> domain name. The Respondent registered <afm.com>

in 1996, and asserts that the domain has been in regular use since then,

first as links to web space or mailing lists, then as a portal environment with

a search engine, and eventually in its present form as a gateway to classified

and auction websites. According to the Respondent, the site has been taken down

several times for improvements. The Respondent has submitted letters from five

individuals written in April and May 2001, who claim that they worked on, saw

prototypes of, or were involved in some way with, the <afm.com> website

since 1996.

The Respondent also claims that <afm.com>, The American Flea Market,

is a known enterprise with business cards, letterhead and even custom-designed

mouse pads.

The Respondent offers evidence to rebut Complainant’s claim of bad faith. The

Respondent contends that it has not engaged in a pattern of bad faith conduct.

The Respondent claims that the <gallimard.com>, <gallimard.net>,

and <gallimard.org> names were registered to Bertrand Gallimard, and neither

Andy Hasse nor anyone at Globemedia or Hasse, Inc., responded to the claims

in the gallimard WIPO cases. The Respondent also refutes the charge that Andy

Hasse or Hasse, Inc., engaged in cybersquatting with respect to the San Francisco

mayoral election. In particular, the Respondent submits evidence that neither

Andy Hasse nor Hasse, Inc., registered <clintreilly.com>, <clintonreilly.com>,

<damayor.com>, or <williebrownjr.com>.

Addressing the forty-seven domain names registered to Andy Hasse or a company

in his control, the Respondent argues that Andy Hasse, Hasse, Inc., and Globemedia,

as Internet consultants, have registered many domain names for clients. The

Respondent submits two letters from clients explaining that Andy Hasse

registered domain names on their behalf. Letter from Ed Koch (May 10, 2001),

(stating that Andy Hasse registered <edkoch.org> and <edkoch.com>

for him); Letter from Michael Disend, Director, Power Hypnosis (May 7, 2001),

(listing six domain names registered for the writer by Andy Hasse).

The Respondent asks the Panel to find Reverse Domain Name Hijacking. The Respondent

claims that AFMA has proceeded in bad faith because it began preparing its Complaint

shortly after sending a its first cease and desist letter to Andy Hasse, because

the Complainant had knowledge of the Respondent’s rights and legitimate use

of the <afm.com> domain name, and because the Complainant has submitted

a large Complaint [3].

8. Discussion and Findings

In order to prove its case under paragraph 4(a) of the Policy the Complainant

must establish:

(i) That the domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the complainant has rights;

(ii) That the Respondent has no rights or legitimate interests in respect of

the domain name; and

(iii) That the domain name has been registered and is being used in bad faith.

A. Similarity of Mark and Domain Name

The Respondent’s argument that <afm.com> is not "identical or confusingly

similar" to the Complainant’s federally-registered AFM trademark is wholly

without merit. The domain name consists in its entirety of the Complainant’s

trademark plus the gTLD ".com". Numerous panels have held that, for

purposes of evaluating the first factor, a Panel should disregard the gTLD.

E.g., Sankyo Co. v. Jiajun, WIPO Case

No. D2000-1791 (March 23, 2001); LG Chemical Ltd. v. ChangHwan, OH,

WIPO Case No. D2000-0889 (September 25,

2000); VAT Holding AG v Vat.com, Case

No. D2000-0607 (August 22, 2000); Telstra Corp. v. Nuclear Marshmallows,

WIPO Case No. D2000-0003 (February 18,

2000). Once the gTLD is ignored, the domain name is obviously identical to Complainant’s

trademark.

B. Legitimate Interest in the Domain Name

The burden of proof in UDRP actions rests firmly on Complainant. That is true

for the second factor as well, and thus it is the Complainant’s burden to prove

that the Respondent lacks any legitimate interest in the domain name. Once the

Complainant makes out a prima facie case of lack of legitimate rights

to or interest in a domain name, though, the burden of production shifts to

the Respondent, who must come forward with evidence of "use, or demonstrable

preparations to use, the domain name," Policy ¶ 4(c)(i). Document Technologies, Inc.,

v. International Elec. Communications, Inc., WIPO

Case No. D2000-0270 (June 6, 2000). The burden of proof, of course,

remains on the Complainant.

Here, the Complainant has shown that the Respondent registered the domain name

in 1996 but, as of November 2000, only gibberish was posted on the website.

Even in January 2001, the site contained only a generic "coming soon"

notice. Only after the Complainant contacted the Respondent did the Respondent

post the current site, which now contains the phrase "The American Flea

Market," along with links to auction sites such as eBay and Sotheby’s.

The Complaint has thus made an initial showing that, at the time this dispute

first arose, the Respondent was not offering any bona fide goods or services

at the <afm.com> site.

To overcome this prima facie showing, Respondent must come forward with

evidence of some legitimate use – whether that be a legitimate commercial use,

a legitimate noncommercial use, or use as a legitimate, non-infringing email

address. See Kidman v. Zuccarini, WIPO

Case No. D2000-1415 (January 23, 2001). Here, Respondent alleges

that (1) Mr. Hasse owns a pending trademark registration in the mark <afm.com>,

which proves its rights in this domain name, and (2) before it had notice of

the dispute, it used and made preparations to use the <afm.com> domain

name in connection with a bona fide offering of goods and services.

Mr. Hasse’s trademark application was filed with the USPTO on April 19, 2001.

The application claims a date of first use of August 25, 1996. Normally, a trademark

application claiming use in commerce as of a certain date would be entitled

to some deference by a panel. However, in this case, the trademark application

was not filed until several months after the Complainant first contacted the

Respondent about <afm.com>, and the application has not yet been approved

by the PTO. Thus Mr. Hasse’s specimen of use has not yet been accepted, nor

has any party had an opportunity to test the asserted date of first use through

an opposition proceeding.

Moreover, Respondent has failed to provide the Panel with any evidence that

the <afm.com> domain name was, in fact, used in commerce prior to the

filing of the Complaint. The submission of blank letterhead with the <afm.com>,

The American Flea Market" name is not alone evidence of use in commerce.

The Respondent has not submitted any evidence that this letterhead was used

between 1996 and the present. For all these reasons, the Panel considers

that, in this case, the recently-filed application alone, without corroborating

evidence of prior use in commerce, is insufficient to prove that Respondent

used the <afm.com> name in connection with a bona fide offering of goods

or services prior to the commencement of this dispute.

As corroborating evidence that it used and made preparations to use <afm.com>

prior to the initiation of this dispute, the Respondent submits five letters

from programmers and Internet consultants, all written in April or May of 2001,

attesting to their work on or knowledge of <afm.com>, The American Flea

Market, as early as 1996. The first letter, from the director of the hosting

company Xterracom. states that <afm.com> . . . has been hosted at Xterra

since September of 1996." Letter from Ingo Gunther, Director, Xterracom

(April 24, 2001). It does not, however, provide any evidence of the

content of or activity on the site, or any plans with respect to future use

of <afm.com>.

The second letter asserts: "A few years ago Andy asked me for advice about

moving classifieds online in a form normally found on so called flea markets.

He called it <afm.com> (American Flea Market). He has been working on

it since then and I saw quite a few prototypes of it." Letter from Axel

Roselius (May 12, 2001). Similarly, the third letter writer says that

he "met with Andy a few times regarding a his [sic] projects including

his <afm.com> classifieds/auctions search project." Letter from Thomas

Leavitt (May 8, 2001). See also Letter from Michael B. Crawford, President,

Goingware, Inc., (April 26, 2001), ("I have consulted with Andy

Hasse and Hasse, Inc., since 1995 on a number of projects, which include

<afm.com>. . . . Regarding <afm.com>, the auctions/classifieds site,

I have provided occasional programming and conceptual input to that project

since early 1997."); Letter from John DeChello, Owner, John DeChello

Internet Consulting (May 8, 2001), ("I consulted with Andy on <afm.com>

in 1997 and 1998, and discussed the project with him from time to time

through mid-2000."). Although these letters suggest that Mr. Hasse may

have discussed a possible "American Flea Market" with other parties,

Respondent’s failure to submit documentary evidence of the alleged prototypes

or further details about the nature of the discussions raises questions about

the evidentiary value of these assertions.

Whether these submissions are sufficient to prove "demonstrable preparations"

is a close question. See, e.g., World Wrestling Fed’n Entm’t, Inc., v. Ringside

Collectibles, WIPO Case No. D2000-1306

(January 24, 2001), (stated intention to start an auction site, without

more, is insufficient to show demonstrable preparations; Chanel, Inc., v.

Estco Tech. Group, WIPO Case No. D2000-0413

(September 18, 2000), (submission of a detailed business plan constitutes evidence

of a bona fide interest). The submissions of the parties on this second element

of the claim present evidentiary issues with respect to documentation and witness

testimony perhaps better resolved in an arbitration or court proceeding designed

for broader exploration of issues through discovery and cross-examination than

in the streamlined UDRP procedural framework. Lopez v. Rock City, NAF

File No. FA0094907 (June 2, 2000). In any event, because of the Panel’s

ruling on the bad faith factor, discussed below, it is unnecessary in this case

for the Panel to render a decision on the second factor of the claim.

C. Bad Faith

To prevail, the Complainant must prove bad faith. The Complainant has failed

to meet that burden.

The Complainant alleges that bad faith exists because the Respondent registered

the domain name in order to prevent the trademark owner, AFMA, from reflecting

its mark in a corresponding domain name, and because the Respondent engaged

in a pattern of such cybersquatting conduct. Policy ¶ 4(b)(ii).

To make out a case of bad faith under this paragraph of the Policy, the Complainant

must prove two elements: (1) that the Respondent registered the domain name

to prevent a trademark owner from registering it; and (2) that the Respondent

has engaged in a pattern of cybersquatting.

The Respondent has submitted evidence that there are many other users of a

mark consisting of the letters "AFM." The existence of multiple users

of an AFM mark tends to undermine the Complainant’s assertion that Respondent

registered <afm.com> with the intent to deprive the Complainant from reflecting

its mark in a domain name. Goldline Int’l, Inc., v. Gold Line, WIPO

Case No. D2000-1151 (January 4, 2001). AFM may be a registered mark,

but the Complainant has not submitted evidence that the mark is so famous (like

other abbreviation marks such as TWA, NFL, and IBM) that the Respondent likely

registered the name in bad faith to specifically target the Complainant. Moreover,

there is no evidence whatsoever of bad faith use, and the Policy expressly requires

a showing of both. e-duction, Inc., v. Zuccarini, WIPO

Case No. D2000-1369 (February 2, 2001).

Nor is the Complainant’s assertion that the Respondent has engaged in a pattern

of cybersquatting compelling. Although some of the domain names registered to

the Respondent and its affiliates raise questions, the evidence is not sufficient

to prove that the registration of <afm.com> was part of a pattern of registering

domain names to prevent trademark owners from reflecting their own marks in

a domain name. Moreover, wading through the voluminous record, it appears that

the Respondent registered some of these domain names on behalf of clients, some

are sufficiently generic so as not to infringe on trademarks, see Micron

Techs., Inc., v. Null Int’l Research Ctr., WIPO

Case No. D2001-0608 (June 20, 2001), and those relating to the San Francisco

mayorial election may merit First Amendment protection.

The Complainant’s additional allegations that the Respondent failed to return

its phone calls or to provide information to the Complainant do not demonstrate

bad faith. There is no obligation that a party respond to letters or otherwise

provide information to a challenger in advance of a lawsuit (although doing

so is often a good way to persuade a putative challenger of the existence of

a legitimate interest or the absence of bad faith, and would strengthen a claim

of Reverse Domain Name Hijacking as it would put the Complainant on notice as

to the weakness of its allegations. See Goldline, supra).

The Panel finds that the weight of the evidence in the record does not support

a finding of bad faith in this case.

D. Reverse Domain Name Hijacking

The Panel rejects the Respondent’s request for a finding of Reverse Domain

Name Hijacking. Such a finding requires a showing of bad faith on the part of

the Complainant. Church in Houston v. Moran, WIPO

Case No. D2001-0683 (August 2, 2001). Although Respondent has prevailed

on the merits, it has not made the requisite showing of bad faith. First, the

<afm.com> domain name incorporates the AFM mark. Second, at the time the

dispute was initiated, the <afm.com> website displayed only random text

and when the Complaint was filed, the site offered only a short list of hyperlinks.

Third, the Respondent has a history of registering multiple domain names, some

containing trademarks. Fourth, it failed to respond to the Complainant’s letters,

which would have put Complainant on notice of Respondent’s defenses. Together,

these factors, all of which were cited by (and thus considered by) the Complainant,

tend to negate an inference that the Complainant brought this Complaint in bad

faith. The Panel thus finds that the Complaint was neither unreasonable nor

made in bad faith.

9. Decision

The Complainant has failed to demonstrate that the Respondent registered and

used <afm.com> in bad faith. The Panel therefore denies the Complainant’s

request to transfer the domain name from the Respondent to the Complainant.

Similarly, the Respondent has failed to demonstrate that the Complaint was brought

in bad faith. Accordingly, the Respondent’s request for a finding of Reverse

Domain Name Hijacking is also denied.

David Bernstein

Presiding Panelist

Michael Froomkin

Panelist

Dana Haviland

Panelist

Dated: August 23, 2001

Footnotes:

1. After receipt of the Center’s list of

five proposed panelists for the position of presiding panelist, the Case Manager

erroneously appointed Mr. Bernstein as Presiding Panelist before the parties

had an opportunity to rank their preferences from the Center’s list. Once this

administrative error was brought to the Panel’s attention, the Panel, on July

24, 2001, suspended its work on this case and issued an Order directing the

Case Manager to distribute to the parties the Center’s original list of five

proposed Presiding Panelists. In response, both parties expressly indicated

that they preferred that Mr. Bernstein continue as Presiding Panelist in this

case.

2. Two of the Panelists, representing a majority

of the Panel, further note that recusal of the Provider is not warranted because

only the Panel has the authority to issue a decision and ruling. Thus, even

if the Provider had a bias in favor of a party – and the Respondent’s evidence

that AFMA is active in WIPO does not rise to that level – that would be insufficient

to justify recusal given that the Provider’s responsibilities are solely administrative,

and that it is the Panel, not the Provider, that renders a decision on a complaint.

The Panel recognizes that, under the Rules, the Provider has substantial discretion

in the appointment of Panelists. That discretion is tempered in two ways. First,

if a party believes the Provider has acted upon any bias to appoint a panelist

who is not impartial, the party can move for the panelist’s recusal or removal.

Britannia Bldg. Soc’y, supra. The Respondent here has made no

such allegations. Second, in cases involving three-member panels, the party

can have substantial influence on the composition of the panel: it can offer

three nominees for one of the panel positions and can articulate its preferences

with respect to which of five proposed panelists should serve as presiding panelist.

Rule 6(e). Here, one of the Respondent’s nominees was selected for the Panel,

and the Respondent expressly agreed to the selection of Mr. Bernstein as the

Presiding Panelist.

3. The Supplemental Rules limit the portion

of the Complaint describing the grounds on which the Complaint rests to 5,000

words. Supp. Rule 10(a). The Complaint in this case complies with that requirement

(the section is just under 4,900 words). To support the allegations of the Complaint,

the Complainant has submitted 62 exhibits representing about three inches of

documentary evidence. There is no restriction in the Rules or Supplemental Rules

on the quantity of documentary evidence that can be submitted, although the

Panel notes that the unusually large volume of material in this case made it

impossible for the Panel to review the file within the 14 days provided by the

Rules for rendering a decision. Rule 15(b). The Supplemental Rules also limit

the portion of the Response responding to the statements and allegations in

the Complaint to 5,000 words. Supp. Rule 10(b). Notwithstanding the Respondent’s

complaint about the length of the Complainant’s Complaint, it is the Respondent

who has exceeded that limit; the section of the Response responding to the allegations

runs over 6,000 words.

When a Complaint fails to comply with the Rules, the Rules provide a mechanism

for rejecting the Complaint and allowing Complainant five days to cure the deficiencies.

Rule 4(b). The Rules contain no similar provisions for treatment of Responses

that fail to follow the Rules. In these circumstances, it is up to the Panel

to determine whether to accept the Response, and how to treat the Response’s

deficiencies. Here, in light of the Complainant’s voluminous submission, the

Panel has decided to accept the Response, but future parties should be aware

that panels may strike or disregard submissions that exceed the Supplemental

Rules’ word limits or otherwise violate the Rules. Cf. Talk City, Inc., v.

Robertson, WIPO Case No. D2000-0009

(February 29, 2000), (disregarding submission that lacked certification required

by Rule 5(b)(viii)).