Dean Hill Systems Ltd. v. Gregory Santana D/B/A Invicta

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 1st 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 £50,000.00. 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

1st 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.