WIPO

 

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 Respondentís 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 Respondentís Motion by filing an Opposition to Respondentís 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 Respondentís 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)