ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
1.1 The Complainant is Innersense International Inc., a corporation with a head office in Sherwood Park, Alberta, Canada.
1.2 The Respondent is Keith Manegre of Edmonton, Alberta, Canada.
1.3 The disputed domain name is innersense.com. The Registrar for the domain name is Network Solutions Inc. of Herndon, Virginia, United States of America.
1.4 This proceeding is pursuant to ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy") and ICANN's Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"). The Network Solutions Inc. Domain Name Registration Agreement regarding the innersense.com domain name subjects the Respondent to Network Solutions Inc.'s Dispute Policy, which is currently the Policy.
2. Procedural History
2.1 Based upon information provided by eResolution's Clerk's Office, the procedural history regarding this matter is as follows:
2.1.1 The electronic version of the Complainant's complaint form was filed on-line through eResolution's Web site on July 12, 2000. The hardcopy of the complaint form was received by the Clerk's Office on July 13, 2000. Payment was received by the Clerk's Office on July 13, 2000. The Complainant requested and was granted permission by eResolution to modify its complaint form and submit additional documents on July 16, 2000. The additional documents were received by eResolution on July 18, 2000.
2.1.2 Upon receiving all the required information, eResolution's Clerk's Office proceeded to: (i) confirm the identity of the Registrar for the contested domain name; (ii) verify the Registrar's Whois database and confirm all the required contact information for the Respondent; (iii) verify if the contested domain name resolved to an active Web page; and (iv) verify if the complaint was administratively compliant.
2.1.3 The inquiry led eResolution's Clerk's Office to the following conclusions: (i) the Registrar is Network Solutions, Inc.; (ii) the Whois database contained all the required contact information; (iii) the contested domain name resolved to an active Web page; and (iv) the complaint is administratively compliant.
2.1.4 On July 12, 2000, eResolution's Clerk's Office sent an email to the Registrar to obtain a copy of the Registration Agreement. The requested document was received on July 17, 2000.
2.1.5 The Clerk's Office then proceeded to send a copy of the complaint form and the required cover sheet to the Respondent, in accordance with paragraph 2(a) of the Rules.
2.1.6 The Clerk's Office fulfilled all its responsibilities under paragraph 2(a) of the Rules in connection with forwarding the complaint to the Respondent on July 20, 2000. That date is the commencement date of this administrative proceeding.
2.1.7 On July 20, 2000, the Clerk's Office notified the Complainant, the Respondent, the Registrar, and ICANN of the date of commencement of this administrative proceeding.
2.1.8 The emails sent by the Clerk's Office to the Respondent were returned "undeliverable". The Clerk's Office sent the official notification, complaint, and all annexes by UPS to the Respondent. The UPS tracking system indicated that all the documents were delivered. The Respondent's representative contacted the Clerk's Office to obtain a password on July 27, 2000, and confirmed that he had received all necessary documents.
2.1.9 The electronic version of the Respondent's response was filed on-line through eResolution's Web site on August 2, 2000. The hardcopy of the response was received by the Clerk's Office on August 7, 2000.
2.1.10 On August 11, 2000, the Clerk's Office contacted Bradley J. Freedman and requested that he act as Panelist in this proceeding.
2.1.11 On August 14, 2000, Bradley J. Freedman agreed to act as Panelist in this proceeding and filed the necessary Declaration of Independence and Impartiality.
2.1.12 On August 14, 2000, the Clerk's Office forwarded a username and a password to Bradley J. Freedman, allowing him to access the complaint form, the response form, and the evidence submitted by the parties through eResolution's Automated Docket Management System.
2.1.13 On August 14, 2000, the parties were notified that Bradley J. Freedman had been appointed as Panelist in this proceeding, and that a decision was to be, save exceptional circumstances, handed down on August 27, 2000.
2.1.14 On August 17, 2000 the Panel issued a Direction, pursuant to Rules paragraphs 10(a) and 12, in which the Panel requested further submissions and evidence from the parties regarding various issues, and delayed the date for the issuance of its decision in this matter until September 22, 2000.
3. Preliminary Issue
3.1 A question has arisen as to whether the Panel should terminate, suspend, or continue this proceeding in light of a lawsuit commenced by the Complainant against the Respondent and others regarding the innersense.com domain name. The Panel has determined to rule on this issue as a preliminary issue, pursuant to eResolution's Supplemental Rules paragraph 14.
3.2 On May 16, 2000, the Complainant commenced a lawsuit against the Respondent and others claiming relief for numerous wrongs alleged to have been committed in connection with the Respondent's registration of the innersense.com domain name. The lawsuit is known as Innersense International Inc. v. Keith Manegre and others, Court of Queen's Bench of Alberta, Judicial District of Edmonton, No. 003 09437 (the "Lawsuit").
3.3 On May 24, 2000, the Complainant sought and obtained in the Lawsuit an ex parte order (the "Court Order") restraining the Respondent and others from selling or transferring the registration of the innersense.com domain name. The material portion of the Court Order reads as follows:
The Plaintiff shall be granted an interim injunction restraining the Defendants Michelle Manegre, Keith Manegre, Technology Training Inc., or any one or more of them from directly or indirectly selling or transferring registration of the domain name innersense.com or any interest therein to anyone until further Order of this Court.
3.4 Subsequent to the issuance of the Court Order, the Respondent filed a Statement of Defence and a Counterclaim, and the Complainant filed a Statement of Defence to the Counterclaim. The Court Order expressly provides that the Respondent may apply to set aside the Court Order on two days notice. The Respondent has not attempted to do so.
3.5 Rules paragraph 18(a) reads as follows:
In the event of any legal proceedings 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.
3.6 In his response to the complaint, the Respondent submitted that the Panel lacks jurisdiction because the dispute that is the subject of this proceeding is also the subject of the Lawsuit.
3.7 On August 17, 2000 the Panel issued a Direction in which the Panel requested further submissions and evidence from the parties regarding various issues. The Direction read, in part, as follows:
The Panel invites the Complainant to provide such submissions as it considers appropriate regarding the effect of the Lawsuit and the Injunction Order granted in the Lawsuit on the Panel's jurisdiction regarding this dispute on or before September 1, 2000, and the Respondent to provide a reply to the Complainant's submissions and evidence on or before September 8, 2000.
3.8 In response to the Direction, the Complainant submitted that the Respondent was contractually bound to submit to proceedings taken pursuant to the Policy, and argued that the Panel should proceed to a decision despite the Lawsuit and Court Order. The Complainant further submitted that the burden is on the Respondent to persuade the Panel that the administrative proceeding should be suspended or terminated. The Complainant noted that in Computer Futures Recruitment Consultants v. Keith Phillips and Computerfutures Ltd., Case No. AF-0106, the Panel proceeded to a decision notwithstanding court proceedings. The Complainant also explained that it obtained the Court Order to stop the transfer of the domain name, and that the Complainant's intent "was to 'freeze' the name and then continue by commencing this proceeding".
3.9 In response to the Direction, the Respondent emphasized that the Panel has the discretion to decide whether to suspend, terminate or continue with the proceeding in light of the Lawsuit and the Court Order. The Respondent further submitted that there are issues of credibility in this matter, which are better resolved in the Lawsuit. The Respondent also submitted that it was inappropriate for the Complainant to obtain the injunction on an ex parte basis, and indicated that he may in the future apply to set aside the Court Order.
Panel's Decision on Preliminary Issue
3.10 The Panel has jurisdiction to consider the complaint. The Respondent accepted the Network Solutions Inc. Domain Name Registration Agreement when he registered the innersense.com domain name. That agreement expressly subjects the Respondent to Network Solutions Inc.'s Dispute Policy, which is currently the Policy. The Complainant properly invoked the Policy, and the Panel was constituted in accordance with the Policy.
3.11 The existence of the Lawsuit does not oust the Panel's jurisdiction. Policy paragraph 4 clearly indicates that the mere commencement of legal proceedings prior to or during a proceeding pursuant to the Policy does not oust the specialized jurisdiction of panels constituted pursuant to the Policy. Nevertheless, although the Panel has jurisdiction regarding this matter, it is necessary and appropriate for the Panel to consider whether it should exercise its discretion to suspend or terminate this proceeding or proceed to a decision.
3.12 A similar issue was considered in Weber-Stephen Products Co. v. Armitage Hardware, Case No. D2000-0187 (May 11, 2000). In that case, the complainant had initiated a parallel court proceeding pursuant to the United States Anticybersquatting Consumer Protection Act. The two-member majority of the Panel held that the parties were properly before it, that the Policy applied, and that a decision should be rendered notwithstanding the existence of the court proceeding. The third member of the Panel was of the view that the administrative proceeding should be stayed in favour of the court proceeding where the same relief was being sought and which would resolve larger issues between the parties which the panel could not decide. Judicial economy, in that Panel member's view, dictated that a multiplicity of proceedings should be avoided.
3.13 The Complainant referred the Panel to the decision in Computer Futures Recruitment Consultants v. Keith Phillips and Computerfutures Ltd., Case N. AF-0106. In that case, the complainant requested a stay of the administrative proceeding in light of legal proceedings on foot in the High Court of London. The respondent opposed the stay. For reasons that are not entirely clear, the Panel rejected the request for a stay and decided to proceed to a decision.
3.14 In this case there is an additional consideration that was not present in either Weber-Stephen Products Co. v. Armitage Hardware or Computer Futures Recruitment Consultants v. Keith Phillips and Computerfutures Ltd. Here, the Complainant sought and obtained a pre-trial injunction order from the Alberta Court of Queen's Bench that prohibits the Respondent from transferring the innnersense.com domain name registration "until further Order of this Court". The apparent purpose of the Court Order is to maintain the status quo regarding the registration of the innersense.com domain name until the disputes between the Complainant and the Respondent and others that are the subject of the Lawsuit, including the entitlement to the innersense.com domain name, are determined by the Court. Yet in this proceeding the Complainant requests that the Panel order the registration of the domain name be transferred to the Complainant. The Complainant therefore asks the Panel to make an order with a practical result that is directly contrary to the apparent purpose of the Court Order.
3.15 The Panel recognizes that the dispute before it is much narrower than the dispute that is the subject of the Lawsuit. The Panel also recognizes that were it to make a decision that the domain name registration be transferred to the Complainant, that registration transfer would be effected by the Domain Name Registrar, and not by the Respondent. Nevertheless, it would not be appropriate for the Panel to make an order with a practical result that is directly contrary to the apparent purpose of the Court Order.
3.16 The Panel's concerns arise from the fact that the Court Order does not contemplate the possibility of a decision by the Panel. It does not say, for example, that the transfer of the domain name shall be prohibited "until further Order of this Court or a Panel established pursuant to the Uniform Domain Name Dispute Resolution Policy".
3.17 The Panel's view regarding the apparent purpose of the Court Order is reinforced by the Affidavit filed by the Complainant in the Lawsuit in support of its application for the Court Order. That Affidavit says that the Lawsuit "was commenced to restore the Innersense Domain Name to Innersense and to end any dilution of the trademark and passing off", and makes no reference to the possibility of initiating administrative proceedings pursuant to the Policy. That Affidavit was referred to by the Alberta Court as the basis for the issuance of the Court Order.
3.18 Although the Panel clearly has jurisdiction regarding this dispute and the authority to make an order directing the transfer of the registration of the innersense.com domain name, due respect must be shown to the Alberta Court and the Court Order. In the circumstances, the Panel considers it inappropriate to proceed with this administrative proceeding and consider making an order that is inconsistent with the Court Order.
3.19 Were the Court Order set aside or varied to permit the transfer of the innersense.com domain name if required by the decision of a Panel established pursuant to the Policy, the Panel would be willing to re-activate this proceeding and proceed to a decision on the merits.
4.1 The Panel directs that this proceeding be and the same is hereby suspended until such time as the Order dated May 24, 2000 in Innersense International Inc. v. Keith Manegre and others, Court of Queen's Bench of Alberta, Judicial District of Edmonton, No. 003 09437, is set aside or varied to permit the transfer of the innersense.com domain name if required by the decision of a Panel established pursuant to the Policy.
4.2 If the Court Order is set aside or varied in the terms proposed above, the Complainant may reactivate this proceeding by submitting an application to the Clerk's Office and the Panel will then proceed to determine the complaint on its merits and issue its decision.
4.3 The Panel shall retain conduct of this proceeding.
5.1 Made in Vancouver, British Columbia, Canada, September 21, 2000.
(s)Bradley J. Freedman