The Complainants are William J. Bronsky, Coraline Bronsky Panis, OBA of Netherlands, represented by McClure Naismith LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondents are Mr. Matthew Barsauckas and Mrs. Jane Anne Barsauckas aka McKernan of Glasgow, United Kingdom; Click It Online Limited dba C of Bothwell, United Kingdom; billbronsky, billbronsky-oba, of California, United States of America. The Respondents Mr. Matthew Barsauckas and Mrs. Jane Anne Barsauckas aka McKernan are represented by Munro Liddell Solicitors, United Kingdom. 2. The Domain Names and Registrar
The disputed domain names , and are registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2010. On October 29, 2010, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain names. On November 1 and 5, 2010, Melbourne IT Ltd transmitted by email to the Center its verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainants on November 10, 2010 providing the registrant and contact information disclosed by the Registrar, and requesting the Complainants to submit an amendment to the Complaint. The Center also informed the Complainants that “any final determination as to the proper identity of the Respondent(s) will be at the sole discretion of the Panel to be appointed in this case.” The Complainants filed an amended Complaint on November 11, 2010.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on November 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 2, 2010. The Response was filed by Matthew Bronsky Barsauckas and Jane Bronsky Barsauckas with the Center on December 1, 2010.
The Center appointed Staniforth Ricketson as the sole panelist in this matter on December 8, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Subsequent to the appointment of the Panel, the parties have filed various supplementary documents or responses, which were the subject of the following Procedural Order issued by the Panel on December 16, 2010.
ADMINISTRATIVE PANEL
PROCEDURAL ORDER NO. 1
William J. Bronsky, Coraline Bronsky Panis, OBA v. Mr. Matthew Barsauckas and Mrs. Jane Anne Barsauckas aka McKernan, Click It Online Limited dba C, billbronsky, billbronsky-oba,
Case No. D2010-1835
In addition to the Complaint and Response in this proceeding, the parties have filed, at their own initiative, supplementary submissions and annexures.
Notwithstanding clear advice from the WIPO Center that there is no specific provision for such filings under the UDRP Rules, these have not been made at the request of the Panel nor was prior leave sought from the Panel to do so. In this regard, the parties’ attention is once again drawn to Rules 10 and 12, in particular rule 12 which makes it clear that further statements or documents may only be filed at the request of the Panel and are solely a matter within its discretion. The reason for such a rule are clear: the parties are to put forward their best case in the initial filings so that the proceeding may be disposed expeditiously and not be unnecessarily delayed or complicated by a continuing series of supplementary filings and responses.
In the present circumstances, the Panel is prepared to receive and consider the supplementary filings already made by the parties, but wishes to make it clear that no further documents of this kind will be received, unless requested by the Panel.
One further matter concerns the pendency of other legal proceedings involving the parties. In this regard, the Panel draws the parties’ attention to Rule 18(a), noting that it is a matter for the discretion of the Panel as to how to proceed in such circumstances. The conflicting submissions made by the parties concerning the effect of these other proceedings will be dealt with as a preliminary issue in the decision of the Panel. As previously advised, this is to be completed by December 22, 2010 after which there will be a short period of time required for formatting by the Center prior to formal notification to the parties and the relevant Registrar.
Staniforth Ricketson
Panelist
Dated: December 16, 2010
It will be seen that this order refers to several preliminary matters that need to be disposed of before moving to a decision in the proceeding. These are: (a) the status of the supplementary filings; and (b) the relevance of other pending national court proceedings. These matters are dealt with immediately below. A further preliminary matter, not directly raised in Procedural Order No 1, concerns the proper identification of the Respondents. This is dealt with under paragraphs 5 and 6 below. (a) The Supplementary Filings
Procedural Order No 1 sets out the preliminary view of the Panel on the matter of the supplementary responses that each party has made to the Complaint and Response respectively. As stated in the Order, the Panel has taken these supplemental filings into consideration, but reminds the parties that this is purely a matter for the Panel’s discretion, particularly in circumstances where no prior leave to make a supplementary filings has been sought. There are real issues of substance that arise if parties make successive filings at will in response to the last-filed document of the other side. The UDRP process is intended to provide a quick and efficient means of resolving domain name registration disputes, and this process is undermined if panels receive continuing, unsolicited filings. The issues at play here were well summarized as follows by the panel in The E.W. Scripps Company v. Sinologic Industries,WIPO Case No. D2003-0447:
“Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party’s request may be regarded as an invitation to the Panel to exercise this discretion.
The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules. The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
These principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.”
A significant consideration here is that the parties should concentrate on the requirements of the UDRP Policy, and refrain from raising matters that are extraneous to this process. In the present proceeding, in the interests of fairness, the Panel has accepted the two supplementary filings by the parties, but notes that, on the date of its Procedural Order, a further supplementary filing from the Complainants was received by the Center. Consistently with its Order, the Panel has not taken this filing into account. It has also not seen any need, in the circumstances, to seek further statements from either party. (b) Other court proceedings
In the Complaint, attention is drawn to the pendency of legal proceedings in the Scottish Court of Sessions concerning matter posted on the websites at the three domain names in dispute. The Complainants makes no submission that the present Panel proceeding should therefore be deferred until the conclusion of the Scottish cases, and this is specifically confirmed in the Complainants’ Supplemental Filing (p 8). In its Response, however, the Respondents specifically request that the present proceeding should be either suspended or terminated, pending the outcome of the Scottish proceedings (Response, paragraph [1]). Both parties have provided some detail on the content of these other proceedings.
As noted in Procedural Order No 1, it is a matter for the Panel’s discretion whether or not to proceed in these circumstances: see UDRP Rules, paragraph 18(a). This discretion is not affected by other provisions of the Policy that deal with the situation where other court proceedings which are initiated before or during the administrative proceeding: see Policy, paragraph 4(k) and see also paragraph 5.
There are a number of panel decisions dealing with the exercise of the discretion under paragraph 18(a) of the Rules: for a recent survey of some of these decisions, see the discussion by the majority panelists in Galley Inc v Pride Marketing & Procurement / Richard’s Restaurant Supply, Inc., WIPO Case No. D2008-1285, in particular the following passage:
“Firstly, and importantly, other panels have frequently exercised the discretion under paragraph 18(a) of the Rules to proceed to a decision despite concurrent or prior court proceedings. Such panels have recognized that doing so does not prevent either party, if dissatisfied with the result, from continuing to seek relief in court. See Western Holdings, LLC v. JPC Enterprise, LLC d/b/a Cutting Edge Fitness and d/b/a Strivectin SD Sales & Distribution,WIPO Case No. D2004-0426. The later case cited others in support, including Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187; Cognigen Networks, Inc. v. Pharmaceutical Outcomes Research a/k/a Cognigen Corporation,WIPO Case No. D2001-1094; AB SKF and SKF Beaings India Limited v. Vikas Pagaria,WIPO Case No. D2001-0867; and Fadesa Inmobiliaria, S.A. v. Flemming Madsen,WIPO Case No. D2001-0570; see Further Sonatel Multimédia SA v. Universal Computer Associates SUARL/Mamadou Kébé,WIPO Case No. D2005-0009; and Sharman License Holdings Limited v. Sonia Thompson a.k.a. Kazagold, Mykazaagold Music Download Service a.k.a. Kazagold, WIPO Case No. D2008-0554.
Some cases where Panels have proceeded to a decision might be distinguished from the circumstances here. Those include cases where the Panel proceeded to issue a decision as the concurrent court proceedings related to matters different to those which were the subject of the complaint. See e.g. Hesco Bastion Limited v. The Trading Force Limited,WIPO Case No. D2002-1038; Tuyap Tum Fuarcilik Yapim Anonim Sirketi (Tuyap Fairs and Exhibitions Organization Inc.) v. Tuyap /K/Koznet Kurumsal Internet Hizmetleri,WIPO Case No. D2003-0442.
Cases which might also be distinguished are those where Panels have proceeded to issue a decision despite concurrent court proceedings, because the remedy sought in the court proceeding was different to that sought in the administrative proceeding. See e.g. Cognigen Networks, Inc. v. Pharmaceutical Outcomes Research a/k/a Cognigen Corporation;WIPO Case No. D2001-1094 (cited also above); and more recently, Digital Overture Inc. v. Chris Bradfield / GoPets Ltd.,WIPO Case No. D2008-0091.
However, in other cases Panels have proceeded to a decision where both the concurrent court proceeding and the administrative proceeding dealt with similar issues about the ownership or use of disputed domain names. See e.g. Sonatel Multimédia SA v. Universal Computer Associates SUARL/Mamadou Kébé, supra; Western Florida Lighting, Inc. v. Samantha Ramirez, SamiRami, SESCO Lighting, Inc., and Cynthia Parker-Chillemi,WIPO Case No. D2008-1122. In the latter case, the Panel commented that: “the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy. This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation (see Policy, paragraph 4(k)).
There are also cases where Panels proceeded to a decision (to deny the complaint) where the dispute between the parties was broader and more complex than a dispute concerning domain names; but those Panels did not address the merits of each element of the Policy in whole or part: e.g. Jason Crouch and Virginia McNeill v. Clement Stein,WIPO Case No. D2005-1201; Knipping Kozijnen B.V. v. R.T.P. Hanssen,WIPO Case No. D2006-0622; Family Watchdog LLC v. Lester Schweiss,WIPO Case No. D2008-0183.”
There are, of course, instances in which panels have exercised their discretion in the opposite way, notably where all the issues in the proceeding were also before the national tribunal and where the parties were located in that jurisidiction: see, for example, Aussie Car loans Pty Ltd v Wilson Accountants Pty Ltd (formerly Wilson and Wilson Accountants),WIPO Case No. D2008-1477.
In the present proceeding, the Panel notes the following:
a) The Scottish proceedings do not appear to raise directly the entitlement of one party or the other to registration of the domain names: rather, they concern statements and allegations appearing on the websites attached to those domain names. Associated with this are more general disputes between the parties relating to loans and mortgages. None of these matters touches upon the registration of the domain names.
b) It is unclear what jurisdiction the Scottish court would have to make orders in relation to the domain names, particularly as the Registrar concerned (Melbourne IT) is located in another jurisdiction.
c) As part of its contract of registration with Melbourne IT, the Respondents have undertaken to be bound by the terms of the Policy under which the Panel has jurisdiction to consider the issue of entitlement in accordance with the requirements of the Policy.
In the light of these considerations, the Panel can identify no reason why it should suspend or terminate the present proceeding, and therefore exercises its discretion under paragraph 18(a) of the Rules to proceed to a decision. 4. Factual Background
Both the Complainants and the Respondents are “related by kin”, and have been involved in a continuing series of disputes with respect to loans of money that have been advanced by one to the other. As noted above, this has led to litigation that is presently taking place in the Scottish Court of Sessions. So far as the present proceeding is concerned, however, the only relevant question for determination is whether the registration of the domain names is in breach of the terms of the Policy. These registrations were made on August 17, 2010, October 5, 2010, and August 29, 2010 respectively. As all issues relating to the requirements of the Policy are in dispute, they are dealt with in the next section headed “Parties’ Contentions”. 5. Parties’ Contentions A. Complainant
The Complainants allege that the three requirements of paragraph 4(a) of the Policy have been established in the present case.
First, they claim that they have common law rights in their real names BILL BRONSKY and CORALINE BRONSKY PANIS. More specifically, the First Complainant asserts that he has built up a considerable reputation in the mark BILL BRONSKY which has become synonymous with the Third Complainant (of which the First Complainant is the sole Director and principal). There are further references to the marks OBA and BILL BRONSKY-OBA in which the First Complainant also claims rights (“OBA” is an abbreviation of the full name of the Third Respondent). There is a further allegation that the Second Complainant’s name, which is the same as the third domain name in dispute, is “unique and highly distinctive”, and therefore a common law mark entitled to protection under the UDRP. More generally, it is asserted that the three domain names are likely to confuse consumers and are therefore presumably confusingly similar within the meaning of paragraph 4(a)(i) of the Policy.
Secondly, the Complainants assert that the Respondents have no rights or legitimate interests in respect of the domain names, referring in particular to the provisions of paragraph 4(c)(i) and (ii). More generally, it is asserted that the use of the domain names is being made for the sole purpose of diverting customers and “tarnishing the reputation of and causing damage to the Complainants”. While it is acknowledged that the Respondents are “related by kin” to the Complainants, it is stated that there is no affiliation to the Complainants and that no licence or permission has been given to the Respondents to use the Complainants’ names in their domain name registrations. It is also asserted that there is no “fair use” defence available to the Respondents in relation to the content appearing on the websites located at the domain names.
Thirdly, it is asserted that these domain names were registered and have been used in bad faith. In particular, it is asserted that the Respondents knew of the Complainants’ “well known marks” at the time of registration of the domain names, that the first website contains inaccurate, misleading and in some cases defamatory information about the First and Third Complainants, and that the tone and content of this website indicates an attempt to confuse and mislead consumers, with resultant damage to the First and Third Complainants’ reputation. B. Respondent
An initial matter raised by the Respondents (apart from the request for suspension, as discussed above) is that they are not the Respondents named in the Complaint. As noted above, following the filing of the original Complaint and communication by the Center with Mebourne IT, the Complaint was amended to reflect the details of registration provided by Melbourne IT. This reveals that the domain names are registered in the names of “billbronsky”, “billbronsky-oba” and “coralinebronksypanis” at POB 10035, 9 Church Street, Glasgow, G71 7YY. These names are not the same as the Respondents, and the latter appear to deny that they are the persons who have obtained these registrations. At the same time, they acknowledge that the address for both of them and the disputed domain name registrations is the same, and proceed to respond to the amended Complaint in terms that suggest that they are (a) closely involved with the registrations, (b) clearly involved in disputation with the Complainants in relation to a number of matters, apart from the domain names (the family relationship is acknowledged), and (c) wish to respond in substantive terms to the allegations in the Complaint. There is no outright denial in the Response that they are not the parties ultimately responsible for the registrations, apart from an initial “request for clarification in respect of this point”.
As for the substance of the Response, it must be said that this is not easy to follow, as it does not engage directly with the different components of the Policy, but rather is concerned with other matters arising between the parties. Paring things back to the requirements of the Policy, however, it appears that the Respondents deny that the Complainants have exclusive rights in the name BILL BRONSKY in that this is the name of the father of both the First Complainant and First Respondent (this is not entirely clear). This leads to the conclusion that the Respondents are making both a legitimate use of the domain names and that their registration and use thereof have not been in bad faith. Furthermore, there are denials that any of the content on the associated websites is misleading, false or defamatory, although it appears clear that there are intense money disputes between the parties and that the websites have contained material relating to these disputes. 6. Discussion and Findings
Having regard both to the amended Complaint and Response, as well as the supplemental filings of the parties, it is not easy for the Panel to identify the full range of matters in dispute between the parties. However, the Panel’s sole function in the present proceeding is to deal with the registration of the domain names in terms of the Policy, and it is unnecessary for it to go beyond this.
The initial matter of the identity of the registrants may be dealt with briefly. While it is clear that the registrants identified by Melbourne IT are not the same as the named Respondents, it is also clear that the latter are closely identified with the registrations and appear to be in ultimate control. Accordingly, it is open for the Panel to proceed to a decision on the basis that any order that it may ultimately make against the Respondents will be capable of implementation by the Registrar. Having said this, however, it will be seen below that the issue of identity becomes irrelevant, in view of the Panel’s finding as to the first element of par 4(a). A. Identical or Confusingly Similar
Under paragraph 4(a) of the Policy, the Complainants must show that each of the matters set out in sub-paragraphs (i) to (iii) are satisfied. These are cumulative, not separate or alternative, requirements.
As for the first of these, namely that the disputed domain names must be “identical or confusingly similar to a trade or service mark in which the complainant has rights”, the Complainants encounter an initial and insuperable hurdle: they must point to a mark (or marks) in which they have “rights”. Where there is a registered trade or service mark, this burden is easily discharged: even one national registration will suffice, and the question then becomes whether the second limb of paragraph 4(a)(i) of the Policy is satisfied, i.e. whether the domain name is identical or confusingly similar to that mark. There is, of course, no requirement under the Policy that the relevant mark or marks should be registered: numerous panel decisions have found that so-called “common law” marks will suffice. However, the burden on a complainant here is higher, as it will be necessary to point some evidence of a reputation or goodwill attaching to the use of the mark in relation to particular goods or services, being such that a national court would be prepared to restrain its unauthorized use by a third party as in an action for passing off (in common law jurisdictions) or for unfair competition (in a civil law jurisdiction). While the requirements for success in such cases will differ from country to country, in each instance some evidence of reputation and goodwill attaching to the mark will be required in order to make good the claim that the complainant has “rights in a mark” within the meaning of paragraph 4(a)(i) of the Policy. Thus, while there are a number of domain name proceedings where complainants have been successful in asserting rights in their personal names (for example, entertainers, authors and professional athletes), this has invariably been because these complainants have been able to point to the registration of their names as trade or service marks or that they have sufficient reputation attaching to their names for the purposes of a passing off action at common law and that these names have been used as marks in relation to goods, e.g. published works (as in the case of authors) or entertainment services (as in the case of actors, singers and professional athletes): see the detailed discussion of such cases in D Lindsay, International Domain Law: ICANN and the UDRP, Hart Publishing, Oxford and Portland, Oregon, 2007, pp 212-223. Absent such accompanying reputation and goodwill, protection for personal names simpliciter is not encompassed by the terms of paragraph 4(a) of the Policy (compare here the terms of other policies, such as that for .au domain names where there is specific reference to “a name, trade mark or service mark in which the complainant has rights”: paragraph 4(a)(i) of the au Dispute Resolution Policy (auDRP) (2010-05) available at ).
In the present proceeding, the Complainants have provided no evidence of any reputation or goodwill attaching to their “common law marks”, apart from general assertions that they are well-known and that there is a general reputation attaching to them. This is insufficient for the purposes of a proceeding such as this: assertion and allegation cannot take the place of evidence, and the onus of proof here was on the Complainants in this regard. The kind of evidence that would have been of assistance to the Panel would have been as to such matters as the range of services or goods in relation to which the marks had been used, the duration and extent of that use, the volume of sales and transactions conducted under the marks, examples of advertisements and other material evidencing use of the marks, website usages, and the like. While this is not a formal court proceeding where the usual rules of evidence apply, some evidence at least of these matters was required in order for the Panel to be satisfied on the papers that the three names had been used as marks and that they had some accompanying reputation or goodwill. The Panel can only act on such evidence as has been placed before it, and, in the present proceeding, there is no basis on which it can be concluded that the Complainants have “rights” in a trade or service mark for the purposes of paragraph 4(a) of the Policy. In this regard, it should be noted that, notwithstanding the detailed supplementary filings of both parties, the matter of reputation and goodwill was not dealt with. Indeed, some further confusion was added here in relation to the name BILL BRONSKY which appears to be that of a common parent, making it even more difficult for the Complainants to show their “rights” in that name.
This conclusion makes it unnecessary for the Panel to consider the second limb of paragraph 4(a) of the Policy, namely whether the domain names are identical or confusingly similar. B. Rights or Legitimate Interests
In view of its finding under paragraph 4(a)(i) of the Policy, it is unnecessary for the Panel to make any findings in relation to par 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
In view of its finding under paragraph 4(a)(i), it is likewise unnecessary for the Panel to make any findings in relation to paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Staniforth Ricketson
Sole Panelist
Dated: December 21, 2010
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