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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Readygo, Inc. v. Michael Lerner Productions

Case No. D2000-0298

 

1. The Parties

Complainant is Readygo, Inc., a California corporation.

Respondent is Michael Lerner, doing business as Michael Lerner Productions, located in San Francisco, California, USA.

 

2. The Domain Name(s) and Registrar(s)

The disputed domain name is <learnthenet.com>.

The registrar is Network Solutions, Inc., Herndon, Virginia, USA.

 

3. Procedural History

This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, ("the Rules").

The complaint was filed on April 17, 2000. The response was filed on May 15, 2000. Complainant has requested an opportunity to reply. Mark V.B. Partridge was appointed single panelist.

On June 8, 2000, I issued an Order which permitted Complainant to file a reply. A copy of that Order is attached as Appendix A. The Reply was received on June 21, 2000. Respondent was also given leave to file a Response to the Reply, which was received on July 13, 2000. Both have been considered in the preparation of this decision.

4. Factual Background

Based on the submissions of the parties, I make the following findings of fact:

The www.learnthenet.com web site was launched in April 1996, by Paradesa Media, a California partnership comprised of Andrew Goodman and Respondent Michael Lerner (Response 8; see also Reply Annex 12 p. 3, 10). The domain name www.learnthenet.com was registered by Paradesa Media on April 25, 1996, (Response to Reply, Annex K).

The founders of Complainant were Michael Lerner, Anita Rosen and Al Moser (Reply Annex 10). Complainant began doing business in the Fall of 1997, (Reply 1). According to the Complainant’s Business Plan prepared in February 1998, Michael Lerner had been the Executive Director of Paradesa Media and the "inspiration and creative force behind the creation and execution of Learn the Net" (Reply Annex 12 p. 10). The Business Plan also states that Learn the Net.com had been in operation "over the last two years" (Id.).

On October 27, 1997, Michael Lerner prepared a memo to Anita Rosen and Al Moser stating the value of assets he would bring to the "new company." These assets include the "LTN website," but do not specifically mention the LEARN THE NET trademark or the www.learnthenet.com domain name (Reply Annex 10).

On October 28, 1997, Michael Lerner was identified as the Executive Director of Learn the Net, Inc. (Reply Annex 6).

Michal Lerner subsequently became the President of Learn the Net, Inc., the predecessor of Complainant, which was incorporated in March 1998, (Response 15).

On March 1, 1998, Paradesa Media and Andrew Goodman assigned to Michael Lerner all rights in the name "Learn the Net" and in the domain name <learnthenet.com> (Response Annex A). Complainant questions the validity and legal effect of this assignment (Reply 2), but asserts that it was prepared by Complainant’s former counsel, Charlotte Salomon (Reply 3; Reply Annex 7). Andrew Goodman states by affidavit that the assignment is valid (Response to Reply, Annex J).

On March 5, 1998, an entity identified as "Learn the Net" filed an application with the U.S. Patent and Trademark Office to register LEARN THE NET as a trademark. (Complaint, Annex 3). The application was signed by "Anita Rosen, founder."

Complainant’s former counsel prepared an assignment document dated March 10, 1998, which purports to assign undisclosed intellectual property from Michael Lerner to Learn the Net, Inc. (Reply Annex 7). Complainant admits it never saw executed copies of this document, and there is no signed agreement in the materials submitted by either party (Reply 3). Complainant claims the Respondent has represented to Complainant that the assignment was executed (Id.). Respondent claims the assignment was never executed (Response to Reply 10).

On March 19, 1998, an email from Michael Lerner to Al Moser states that references to "Paradesa" should be changed to "Learn the Net" (Reply Annex 9). The email message also states "I just received the assignment of rights contract from Charlotte" (Id.).

On March 31, 1998, Michael Lerner was still acting as President of Complainant, Learn the Net, Inc., as shown in a license agreement he executed on Complainant’s behalf on that date (Complaint, Annex 4). Under that agreement, Learn the Net, Inc. grants a license in certain "Content" together with the corresponding trademarks and trade names on the packaging of the Content. It is not clear which trademarks are covered by the license.

On April 15, 1998, Anita Rosen registered the domain names <apprendrelinternet.com>, <erlernedasinternet.com> and <conoscereilnet.com> (Response Annex F).

On June 2, 1998, Michael Lerner sent an email to Al Moser and Anita Rosen regarding Complainant’s financial problems. It appears from the email message that Complainant received funding of $50,000 in March 1998, and that Lerner contributed $15,000 prior to that date. Lerner also states in the email message that the funding was used for various expenses, including "domain name registration." (Reply Annex 13).

In about June 1998, there was a falling out between the parties, which resulted in the termination of Michael Lerner’s relationship with Complainant. Thereafter, Complainant changed its name to Learn On Net, Inc. and then to its current name, Readygo, Inc. (Response 21). On August 13, 1998, Respondent’s attorney sent Anita Rosen a letter that details some of the issues causing the falling out between the parties (Response to Reply Annex M).

Complainant offers a course entitled "Learn the Net" on its current web site at www.readygo.com (Reply Annex 14).

At the time this action was filed, Respondent’s web site at www.learnthenet.com stated that the content of the Learn the Net web site "may not be duplicated or distributed without written permission from Learn the Net, Inc., which reserves all rights" (Reply Annex 8). Other references on the web site contain the statement "Learn The Net (www.learnthenet.com) is Copyright 1996-2000. Michael Lerner Productions. All Rights Reserved" (Complaint Annex 9).

On February 22, 2000, Michael Lerner filed a Notice of Opposition against Complainant’s application to register LEARN THE NET as a trademark (Response Annex G). A principal issue in the Opposition is the dispute over ownership of rights in the mark at issue here. It appears that proceeding is pending between the parties.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that it is the owner of the LEARN THE NET trademark and disputed domain name, and accuses Respondent of acting in bad faith.

B. Respondent

Respondent claims that it is the owner of the LEARN THE NET mark and the disputed domain name, and accuses Complainant of acting in bad faith.

 

6. Discussion and Findings

Under Paragraph 4(a)(i) of the Policy, Complainant must establish three elements. The first necessary element is whether the domain name at issue is identical or confusingly similar "to a trade or service mark in which the complainant has rights."

In the United States, trademark rights are based on use. Registration is not required, although an issued registration is evidence of rights. Mere application does not create any rights in the mark until the application matures to registration. Here, Complainant does not own a trademark registration, but merely has a pending application. That application is insufficient to establish rights in the LEARN THE NET mark, and Complainant must show that it has acquired rights in the mark through prior use or assignment.

From the evidence, it appears that the mark and domain name were first adopted and used by Paradesa Media in April 1996, and were assigned to Michael Lerner in 1998, while he was acting as one of the founders of Complainant. At that time, the parties considered an assignment of the disputed name from Lerner to Complainant. Further, during the period when Lerner was actively engaged in Complainant’s activities, Complainant filed an application to register the mark, claiming use back to April 1996. Since Complainant had no relationship to Paradesa Media and did not begin operations until October 1997, this application is consistent with its claim that it received an assignment of rights from Lerner. Lerner, however, denies that he assigned those rights, and there is no evidence of an executed assignment document to support Complainant’s position. It also appears that Lerner has continued to use the LEARN THE NET mark after his falling out with Complainant, which is consistent with his claim that he never assigned rights in the mark to Complainant.

The other two necessary elements of this case may also turn on this issue. If Lerner transferred his rights to Complainant, he might lack a legitimate interest in the domain name. If he retained the rights, however, the opposite result could be reached. Similarly, whether or not Lerner retained rights would be relevant in determining if the corresponding domain name was registered and used in bad faith.

The resolution of this dispute over ownership of rights in the mark is a complex matter, ill suited to the summary procedures available under the Policy. The current Policy is based on the report and recommendations of the World Intellectual Property Organization, "The Management of Internet Names and Addresses: Intellectual Property Issues," April 30, 1999. As stated at Paragraph 172 of that Report, "good faith disputes between competing right holders or other competing legitimate interests . . . would not fall within the scope of the procedure." That may be the situation here. More importantly, the dispute over the ownership of rights in the mark is currently pending before the Trademark Trial and Appeal Board based on Registrant’s Notice of Opposition against Complainant’s application to register the mark at issue. That proceeding, which allows for discovery, deposition testimony, oral argument and appeal, is better suit for the resolution of the ownership issue.

Paragraph 18 of the Rules states:

"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 decided whether to suspend or terminate the administrative proceeding, or to proceed to a decision."

The issue of ownership is central to the resolution of this dispute. That issue is the subject of the TTAB proceeding initiated prior to this proceeding. The TTAB is in a better position to resolve the ownership dispute. Under the circumstances, I believe I should defer to the prior proceeding. It would be inappropriate and potentially unfair to proceed to a decision on the summary record here while a dispute over a necessary element of the Complainant’s case is pending before a tribunal in a superior position to address the issue. Therefore, I exercise my discretion under Paragraph 18 of the Rules to terminate this proceeding. I appreciate that both parties have spent time and resources to present their positions here. That effort, however, should be applicable in other proceedings addressing the ownership dispute.

 

7. Decision

In accordance with Paragraph 18 of the Rules, I have decided to terminate this administrative proceeding because the central issue in this dispute is the subject of a legal proceeding before the Trademark Trial and Appeal Board initiated prior to this proceeding. This decision is without prejudice to the initiation of a new proceeding under the Policy after the resolution of the TTAB proceeding.

 


 

Mark V.B. Partridge
Presiding Panelist

Dated: July 17, 2000

 


 

 

APPENDIX A

ADMINISTRATIVE PANEL

PROCEDURAL ORDER NO. 1

Readygo, Inc. v. Michael Lerner Productions

Case No. D2000-0298

 

1. The Parties

Complainant is Readygo, Inc., a California corporation

Respondent is Michael Lerner doing business as Michael Lerner Productions, located in San Francisco, California, USA

 

2. The Domain Name(s) and Registrar(s)

learnthenet.com

The registrar is Network Solutions, Inc., Herndon, Virginia, USA

 

3. Procedural History

This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999, ("the Rules").

The complaint was filed on April 17, 2000. The response was filed on May 15, 2000. Complainant has requested an opportunity to reply.

 

4. Factual Background

Complainant is a provider of on line educational services. Complainant’s home page appears at www.readygo.com. The specimen submitted by Complaint does not show any use of the phrase "learn the net," although Complainant claims it provides instructional services under that name. Complainant filed an application to register LEARN THE NET as a trademark on March 5, 1998, claiming first use in commerce on April 1996. The application is pending in the U.S Patent and Trademark Office and has been opposed by Respondent.

Respondent Michael Lerner is the former President of Learn the Net, Inc., the predecessor of Complainant, and now offers services in direct competition with the services offered by Complainant. It appears that the web site www.learnthenet.com was launched in April 1996, by Paradesa Media, a partnership comprised of Andrew Goodman and Respondent. On March 1, 1998, the partnership and Goodman assigned its rights in the name "Learn The Net" and the domain name www.learnthenet.com to Lerner. Learn the Net, Inc. was incorporated in 1998, and began dissolution proceedings in June 1998.

 

5. Parties’ Contentions

Complainant contends that it owns rights in the trademark LEARN THE NET and that Respondent’s domain name was registered and used in bad faith.

Respondent claims that it is the owner of the trademark LEARN THE NET and that the domain name was registered and used in good faith.

 

6. Discussion

The first issue is whether the Panel will grant Complainant’s request to file a reply. Complainant alleges in its request that "the response contains numerous misstatements of facts and at least one document whose genuineness is at issue." The request is pursuant to Paragraphs 10(a), 10(b), and 12 of the Rules.

Rules 10(a) and (b) requires that the proceeding be conducted in accordance with the Policy and Rules and that each party is given a fair opportunity to present its case.

Rule 12 permits the Panel in its sole discretion to request further statements or documents from either party.

Although the Rules do not provide for a reply as of right, some Panels have considered unsolicited replies. See, e.g., Cedar Trade Associates, Inc. v. Ricks, ICANN Case No. FA0002000093633; Aero-Turbine, Inc. v. Mcayman, Ltd., ICANN Case No. FA000200093675; Travel Services, Inc. v. Tour COOP of Puerto Rico, ICANN Case No. FA0001000092524; Heelquick!, Inc. v. Goldman, et al., ICANN Case No. FA0001000092527. Other Panel’s have refused to consider such submissions. See, e.g. Easyjet Airline Co., Ltd. v. Steggles, ICANN Case No. D2000-0024; J.P.Morgan v. Resource Marketing, ICANN Case No. D2000-0035.

In other cases, however, where the record appears incomplete or unclear, the Panel has requested additional submissions. For example, in InfoSpace.com, Inc. v. Tennenbaum Offer, ICANN Case No. D2000-0075 (http://www.wipo.int/amc/en/domains/decisions/html/d2000-0075.html), this Panel requested an additional submission from the Respondent, stating:

Paragraph 12 permits the Panel to request, in its sole discretion, further statements or documents from either of the Parties. Paragraph 15(b) permits the Panel to extend the deadline for a decision in cases involving exceptional circumstances. Although we are reluctant to invoke these provisions because they will involve additional delay in reaching a decision and will impose additional expense on the dispute resolution service provider, we believe the use of these provisions is the best procedure for this case.

Here, in the interest of reaching a fully informed result and to provide each party with a fair opportunity to present its case, I conclude that it is appropriate to allow Complainant to submit a reply.

 

7. Conclusion

For the reasons stated above, we exercise our discretion under the Paragraphs 12 and 15(b) of the Rules to permit the Complainant to file a reply memorandum within ten days after Notice of this interim decision. The reply should be limited to the misstatements of fact and disputed evidence in the Response, and should reargue Complainant’s case in chief.

 


 

Mark V. B. Partridge
Presiding Panelist

Dated: June 8, 2000

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0298.html

 

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