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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AFMA, Inc., v. Globemedia
Case No. D2001-0558
1. The Parties
The Complainant is AFMA (American Film Marketing Association), a California mutual benefit, not-for-profit corporation. The Complainant proceeds pro se.
The Respondent is Globemedia, an apparently unincorporated entity. The Respondent proceeds pro se.
2. The Domain Name and Registrar
The domain name at issue is <afm.com>. The domain name is registered with TierraNet, Inc.
3. Procedural History
AFMA filed its Complaint with the World Intellectual Property Organization ("WIPO") Arbitration and Mediation Center (the "Center") by email on April 18, 2001. The Center received a hard copy version of the Complaint on April 25, 2001. The Center verified that the Complaint satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel agrees that the Complaint satisfies the requirements, except with respect to the naming of multiple Respondents (an issue discussed in Section 5 below); with respect to that issue, the Panel requests that the Center consider, in connection with its administration of future cases, whether it is appropriate to require Complainants to amend any Complaint that names more than one Respondent. The Center formally commenced this administrative proceeding on April 25, 2001.
The Center initially designated May 14, 2001, as the response date. At the request of the Respondent, the Center extended that deadline to May 25, 2001. The Respondent timely filed its Response on May 25, 2001.
On July 4, 2001, after clearing for potential conflicts, the Center appointed Dana Haviland and Michael Froomkin as Panelists and David H. Bernstein as the Presiding Panelist in this matter . Pursuant to Rule 10(c), and to (i) provide the parties an opportunity to submit their preferences for the Presiding Panelist, and (ii) allow the Panel sufficient time to review the voluminous case file, discuss the complexities of this case, and confer to reach consensus, the Panel extended the date for expected decision.
4. Motion to Recuse
On May 9, 2001, the Respondent asked the Center to recuse itself from the proceedings. The Respondent alleged that the Center faced a conflict of interest, or the appearance of a conflict of interest, because AFMA is a member of WIPO and has been an active participant in WIPO discussions about intellectual property. After soliciting a response from AFMA, the Center, on May 16, 2001, declined to recuse itself:
"After careful study of the arguments contained in the submission on the issue of recusal, the . . . Center . . . has determined that it will continue to act as the administering authority of this matter. The Center’s role is administrative in nature as an ICANN approved provider under the UDRP".
On May 17, 2001, the Respondent reiterated its request that the Center recuse itself and appoint another arbitration body in its stead. The Respondent’s motion to recuse rests on five allegations of conflict of interest. First, the Respondent asserts that AFMA is the only U.S.-accredited non-governmental organization ("NGO") member of WIPO (and one of seven NGO members of WIPO worldwide). Second, AFMA is a member of the International Intellectual Property Alliance and has submitted comments to WIPO on the Internet domain name process. Third, at least one individual has served as an arbitrator for both WIPO and AFMA-sponsored dispute resolutions. Fourth, board and other members of AFMA have taken part in WIPO conferences for several years. And fifth, the Respondent asserts that searches with popular search engines turn up several hundred web pages that connect AFMA in some way with WIPO. The Respondent alleges that these ties, both individually and together, amount to a conflict of interest, or at least a perception of such a conflict, that calls into question the Center’s ability to appoint impartial panelists.
The Complainant opposes the Respondent’s motion. The Complainant argues that (1) the Respondent cited no authority for his request; (2) the Rules and Supplemental Rules limit the decision-making authority of an administrative dispute resolution provider ("Provider"); (3) Rule 7 charges the Panelists to disclose any justifiable doubt of their impartiality or independence; (4) Supplemental Rule 8 requires the Panelists to submit declarations of their independence; and (5) Supplemental Rule 6(b) states that the Center may provide administrative assistance only.
Through the Policy, ICANN has charged the Provider with administering the UDRP dispute resolution process. The Provider’s responsibilities include managing the case, transmitting the complaint to the respondent, appointing a panel to hear and decide the case, and handling the flow of paperwork between the complainant, respondent and panel. The Policy expressly allows the complainant to select the Provider. Policy ¶ 4(d). AFMA has selected the Center as the Provider for this dispute.
The Policy does not give panels the authority to order recusal of a provider. The Panel thus dismisses Respondent’s motion to recuse the Center. To the extent the motion is treated as one for recusal of the Panel itself, the Panel rejects that motion. Each of the panelists has certified that she or he is impartial and independent in this matter, and Respondent has not cited any other basis for seeking recusal of any panelist. See Rule 7 ("[a] Panelist shall be impartial and independent," and should be replaced if "circumstances arise that could give rise to justifiable doubt as to the impartiality or independence of the Panelist"); cf. Britannia Bldg. Soc’y v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (July 6, 2001), (discussing general principles governing recusal of a panelist) .
5. Jurisdictional Issues
Before turning to the merits, the Panel must address two jurisdictional issues. First, although the Respondent did not object, the Panel notes that Complainant has improperly named three separate parties as Respondents: Globemedia, the official registrant of the domain name; Andy Hasse, its administrative contact; and <afm.com>, the entity that is listed as the registrant on WHOIS (though, as noted above, the Registrar identifies the "registrant of record" as Globemedia). See Email from TierraNet Support to the Center (April 19, 2001), (verifying Globemedia as the registrant of record).
Neither the Policy nor the Rules provide for the naming of multiple Respondents. Rather, the Rules are quite explicit that the Respondent in a UDRP proceeding is the registrant. Rule 1 ("Respondent means the holder of a domain-name registration against which a complaint is initiated."). There is no provision for naming as additional respondents any third parties, such as administrative contacts or officers of the registrant. Plaza Operating Partners, Ltd. v. Pop Data Techs., Inc., and Joseph Pillus, WIPO Case No. D2000-0166 (June 1, 2000), (a panel has jurisdiction only over parties that have agreed to be subject to its proceedings, such as registrants of gTLDs who have so agreed through their registration agreements).
Here, only Globemedia, the domain name registrant, is a proper Respondent. Accordingly, the Panel dismisses Andy Hasse and <afm.com> as Respondents. This ruling, though, is of no moment as the only remedies available in a UDRP proceeding are transfer or cancellation of the domain name registration, and both of those remedies are available only against the registrant. Policy ¶ 4(i); Rule 3(xiv) (specifying that the complainant must agree "that its claims and remedies concerning the registration of the domain name . . . shall be solely against the domain name holder").
The second jurisdictional issue in this case arises from Respondent’s motion to dismiss the proceeding on the ground that it registered the domain name in dispute before the Policy was in place. The Respondent thus argues that the Policy does not cover its conduct. This argument is without merit.
When Globemedia registered <afm.com> in 1996, the registration agreement with the domain name’s registrar, then NSI, specified that the NSI domain dispute policy would apply. In addition, NSI reserved the right to revise the terms of the agreement. See, e.g., Ellenbogen v. Pearson, WIPO Case No. D2000-0001 (February 7, 2000), (quoting 1998, NSI registration agreement reserving right to modify dispute resolution agreement and applying UDRP to domain name registered prior to the adoption of the Policy). As revised, Respondent’s registration agreement now expressly incorporates the Policy. Moreover, by maintaining its registration, the Respondent has agreed to submit to the Policy for the resolution of domain name disputes. TierraNet, Inc., the registrar, has expressly verified to the Center and the Panel that the Policy applies to this domain name. See Email from TierraNet Support to the Center (April 19, 2001). Accordingly, Respondent’s motion to dismiss is denied.
6. Factual Background
Complainant, AFMA, is a trade association representing motion picture and television producers and distributors, and the financial institutions that fund them. AFMA conducts an annual film market called the American Film Market ("AFM"). AFMA has registered AFM with the U.S. Patent and Trademark Office ("USPTO") for "arranging and conducting an annual trade show for the motion picture industry (Reg. No. 1,309,303, issued December 11, 1984, for AFM word mark, and Reg. No. 1,748,789, issued January 16, 1993, for AFM design mark).
Respondent, Globemedia, registered the <afm.com> domain name on August 6, 1996. The site currently provides hyperlinks to online classified listings and auction sites, and promotes itself as "The American Flea Market." Globemedia’s principal is Andy Hasse, who also controls Hasse, Inc., an Internet consulting business.
7. Parties’ Contentions
Set out below is a summary of the parties’ principal contentions:
AFMA alleges that the domain name, <afm.com>, is identical or confusingly similar to its AFM mark. The addition of ".com," the Complaint argues, does not represent a material difference from AFM standing alone, nor does it deflect viewers’ perceptions of the mark.
The Complaint offers four reasons why the Respondent has no rights or legitimate interests in the domain name. First, the Respondent did not use or prepare to use the <afm.com> domain name in connection with a bona fide offering of goods or services prior to receiving the Complaint. The Complainant offers evidence that the <afm.com> website displayed random, unintelligible text in November 2000, and a "coming soon" notice in January 2001. Complaint also points to similarities in the design of the <afm.com> website at the time the Complaint was filed and the design of other websites registered by the Respondent. Second, the Respondent is not known by the name <afm.com>. Third, the Respondent has not been making a legitimate noncommercial or fair use of the <afm.com> domain name. And fourth, the large number of domain names registered by the Respondent, Andy Hasse, and Hasse, Inc., is evidence that the Respondent has no legitimate interest in the domain name.
The Complainant alleges that the Respondent registered and used the domain name in bad faith because its registration was done to prevent the Complainant from using the mark in a corresponding domain name, and that the Respondent has engaged in a pattern of such conduct. To establish a pattern, the Complainant alleges three factors: first, in two previous WIPO disputes involving the <gallimard.com>, <gallimard.org>, and <gallimard.net> domain names, Panels found a pattern of bad faith conduct on the part of Globemedia and Andy Hasse. Editions Gallimard v. Globemedia, WIPO Case No. D2000-0929 (October 18, 2000); Editions Gallimard v. Hasse, WIPO Case No. D2000-0930 (October 18, 2000). Second, the Respondent registered names of political candidates running for mayor of San Francisco as domain names in order to prevent the candidates from registering their names. Third, the Complainant submits evidence of forty-seven domain names registered to Globemedia, Andy Hasse, Hasse, Inc., or an affiliated party, and alleges that twenty-one of these domain names are confusingly similar or identical to trademarks belonging to others, and many of these domain names are not in use.
In addition to alleging a pattern of conduct, the Complainant claims that AFMA’s prior registration of the AFM mark with the USPTO constitutes constructive notice to the Respondent and therefore establishes bad faith registration and that the Respondent’s failure to use the infringing name establishes bad faith use.
The Complainant also points to four additional factors as evidence of bad faith: (1) the random text on the <afm.com> site was removed only after the Complainant contacted the Respondent about the <afm.com> domain name; (2) the Respondent has failed to use many of the domains it has registered, which constitutes abusive domain name speculation; (3) the Respondent has attempted to make its domain name registrations misleading or confusing by registering domain names using a variety of names or addresses; and (4) the Respondent did not return three of the Complainant’s telephone calls made in the fall and winter of 2000-2001, nor did the Respondent provide its attorney’s contact information to the Complainant.
The Respondent disputes Complainant’s allegations on all three factors. First, Respondent asserts that <afm.com> is not identical or confusingly similar to the Complainant’s AFM mark. The Respondent alleges that the addition of the ".com" suffix to "afm" renders the <afm.com> domain name distinct from the AFM mark. In addition, the Respondent asserts that at least 200 businesses in the United States incorporate the letters "AFM" in their business name. The Respondent also alleges that the domain name <afm.com> is not confusingly similar to the AFM mark because of the absence of the likelihood of confusion required to establish trademark infringement.
The Respondent claims that it has legitimate rights in, and has made legitimate use of, the <afm.com> domain name. The Respondent registered <afm.com> in 1996, and asserts that the domain has been in regular use since then, first as links to web space or mailing lists, then as a portal environment with a search engine, and eventually in its present form as a gateway to classified and auction websites. According to the Respondent, the site has been taken down several times for improvements. The Respondent has submitted letters from five individuals written in April and May 2001, who claim that they worked on, saw prototypes of, or were involved in some way with, the <afm.com> website since 1996.
The Respondent also claims that <afm.com>, The American Flea Market, is a known enterprise with business cards, letterhead and even custom-designed mouse pads.
The Respondent offers evidence to rebut Complainant’s claim of bad faith. The Respondent contends that it has not engaged in a pattern of bad faith conduct. The Respondent claims that the <gallimard.com>, <gallimard.net>, and <gallimard.org> names were registered to Bertrand Gallimard, and neither Andy Hasse nor anyone at Globemedia or Hasse, Inc., responded to the claims in the gallimard WIPO cases. The Respondent also refutes the charge that Andy Hasse or Hasse, Inc., engaged in cybersquatting with respect to the San Francisco mayoral election. In particular, the Respondent submits evidence that neither Andy Hasse nor Hasse, Inc., registered <clintreilly.com>, <clintonreilly.com>, <damayor.com>, or <williebrownjr.com>.
Addressing the forty-seven domain names registered to Andy Hasse or a company in his control, the Respondent argues that Andy Hasse, Hasse, Inc., and Globemedia, as Internet consultants, have registered many domain names for clients. The Respondent submits two letters from clients explaining that Andy Hasse registered domain names on their behalf. Letter from Ed Koch (May 10, 2001), (stating that Andy Hasse registered <edkoch.org> and <edkoch.com> for him); Letter from Michael Disend, Director, Power Hypnosis (May 7, 2001), (listing six domain names registered for the writer by Andy Hasse).
The Respondent asks the Panel to find Reverse Domain Name Hijacking. The Respondent claims that AFMA has proceeded in bad faith because it began preparing its Complaint shortly after sending a its first cease and desist letter to Andy Hasse, because the Complainant had knowledge of the Respondent’s rights and legitimate use of the <afm.com> domain name, and because the Complainant has submitted a large Complaint .
8. Discussion and Findings
In order to prove its case under paragraph 4(a) of the Policy the Complainant must establish:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
A. Similarity of Mark and Domain Name
The Respondent’s argument that <afm.com> is not "identical or confusingly similar" to the Complainant’s federally-registered AFM trademark is wholly without merit. The domain name consists in its entirety of the Complainant’s trademark plus the gTLD ".com". Numerous panels have held that, for purposes of evaluating the first factor, a Panel should disregard the gTLD. E.g., Sankyo Co. v. Jiajun, WIPO Case No. D2000-1791 (March 23, 2001); LG Chemical Ltd. v. ChangHwan, OH, WIPO Case No. D2000-0889 (September 25, 2000); VAT Holding AG v Vat.com, Case No. D2000-0607 (August 22, 2000); Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000). Once the gTLD is ignored, the domain name is obviously identical to Complainant’s trademark.
B. Legitimate Interest in the Domain Name
The burden of proof in UDRP actions rests firmly on Complainant. That is true for the second factor as well, and thus it is the Complainant’s burden to prove that the Respondent lacks any legitimate interest in the domain name. Once the Complainant makes out a prima facie case of lack of legitimate rights to or interest in a domain name, though, the burden of production shifts to the Respondent, who must come forward with evidence of "use, or demonstrable preparations to use, the domain name," Policy ¶ 4(c)(i). Document Technologies, Inc., v. International Elec. Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000). The burden of proof, of course, remains on the Complainant.
Here, the Complainant has shown that the Respondent registered the domain name in 1996 but, as of November 2000, only gibberish was posted on the website. Even in January 2001, the site contained only a generic "coming soon" notice. Only after the Complainant contacted the Respondent did the Respondent post the current site, which now contains the phrase "The American Flea Market," along with links to auction sites such as eBay and Sotheby’s. The Complaint has thus made an initial showing that, at the time this dispute first arose, the Respondent was not offering any bona fide goods or services at the <afm.com> site.
To overcome this prima facie showing, Respondent must come forward with evidence of some legitimate use – whether that be a legitimate commercial use, a legitimate noncommercial use, or use as a legitimate, non-infringing email address. See Kidman v. Zuccarini, WIPO Case No. D2000-1415 (January 23, 2001). Here, Respondent alleges that (1) Mr. Hasse owns a pending trademark registration in the mark <afm.com>, which proves its rights in this domain name, and (2) before it had notice of the dispute, it used and made preparations to use the <afm.com> domain name in connection with a bona fide offering of goods and services.
Mr. Hasse’s trademark application was filed with the USPTO on April 19, 2001. The application claims a date of first use of August 25, 1996. Normally, a trademark application claiming use in commerce as of a certain date would be entitled to some deference by a panel. However, in this case, the trademark application was not filed until several months after the Complainant first contacted the Respondent about <afm.com>, and the application has not yet been approved by the PTO. Thus Mr. Hasse’s specimen of use has not yet been accepted, nor has any party had an opportunity to test the asserted date of first use through an opposition proceeding.
Moreover, Respondent has failed to provide the Panel with any evidence that the <afm.com> domain name was, in fact, used in commerce prior to the filing of the Complaint. The submission of blank letterhead with the <afm.com>, The American Flea Market" name is not alone evidence of use in commerce. The Respondent has not submitted any evidence that this letterhead was used between 1996 and the present. For all these reasons, the Panel considers that, in this case, the recently-filed application alone, without corroborating evidence of prior use in commerce, is insufficient to prove that Respondent used the <afm.com> name in connection with a bona fide offering of goods or services prior to the commencement of this dispute.
As corroborating evidence that it used and made preparations to use <afm.com> prior to the initiation of this dispute, the Respondent submits five letters from programmers and Internet consultants, all written in April or May of 2001, attesting to their work on or knowledge of <afm.com>, The American Flea Market, as early as 1996. The first letter, from the director of the hosting company Xterracom. states that <afm.com> . . . has been hosted at Xterra since September of 1996." Letter from Ingo Gunther, Director, Xterracom (April 24, 2001). It does not, however, provide any evidence of the content of or activity on the site, or any plans with respect to future use of <afm.com>.
The second letter asserts: "A few years ago Andy asked me for advice about moving classifieds online in a form normally found on so called flea markets. He called it <afm.com> (American Flea Market). He has been working on it since then and I saw quite a few prototypes of it." Letter from Axel Roselius (May 12, 2001). Similarly, the third letter writer says that he "met with Andy a few times regarding a his [sic] projects including his <afm.com> classifieds/auctions search project." Letter from Thomas Leavitt (May 8, 2001). See also Letter from Michael B. Crawford, President, Goingware, Inc., (April 26, 2001), ("I have consulted with Andy Hasse and Hasse, Inc., since 1995 on a number of projects, which include <afm.com>. . . . Regarding <afm.com>, the auctions/classifieds site, I have provided occasional programming and conceptual input to that project since early 1997."); Letter from John DeChello, Owner, John DeChello Internet Consulting (May 8, 2001), ("I consulted with Andy on <afm.com> in 1997 and 1998, and discussed the project with him from time to time through mid-2000."). Although these letters suggest that Mr. Hasse may have discussed a possible "American Flea Market" with other parties, Respondent’s failure to submit documentary evidence of the alleged prototypes or further details about the nature of the discussions raises questions about the evidentiary value of these assertions.
Whether these submissions are sufficient to prove "demonstrable preparations" is a close question. See, e.g., World Wrestling Fed’n Entm’t, Inc., v. Ringside Collectibles, WIPO Case No. D2000-1306 (January 24, 2001), (stated intention to start an auction site, without more, is insufficient to show demonstrable preparations; Chanel, Inc., v. Estco Tech. Group, WIPO Case No. D2000-0413 (September 18, 2000), (submission of a detailed business plan constitutes evidence of a bona fide interest). The submissions of the parties on this second element of the claim present evidentiary issues with respect to documentation and witness testimony perhaps better resolved in an arbitration or court proceeding designed for broader exploration of issues through discovery and cross-examination than in the streamlined UDRP procedural framework. Lopez v. Rock City, NAF File No. FA0094907 (June 2, 2000). In any event, because of the Panel’s ruling on the bad faith factor, discussed below, it is unnecessary in this case for the Panel to render a decision on the second factor of the claim.
C. Bad Faith
To prevail, the Complainant must prove bad faith. The Complainant has failed to meet that burden.
The Complainant alleges that bad faith exists because the Respondent registered the domain name in order to prevent the trademark owner, AFMA, from reflecting its mark in a corresponding domain name, and because the Respondent engaged in a pattern of such cybersquatting conduct. Policy ¶ 4(b)(ii).
To make out a case of bad faith under this paragraph of the Policy, the Complainant must prove two elements: (1) that the Respondent registered the domain name to prevent a trademark owner from registering it; and (2) that the Respondent has engaged in a pattern of cybersquatting.
The Respondent has submitted evidence that there are many other users of a mark consisting of the letters "AFM." The existence of multiple users of an AFM mark tends to undermine the Complainant’s assertion that Respondent registered <afm.com> with the intent to deprive the Complainant from reflecting its mark in a domain name. Goldline Int’l, Inc., v. Gold Line, WIPO Case No. D2000-1151 (January 4, 2001). AFM may be a registered mark, but the Complainant has not submitted evidence that the mark is so famous (like other abbreviation marks such as TWA, NFL, and IBM) that the Respondent likely registered the name in bad faith to specifically target the Complainant. Moreover, there is no evidence whatsoever of bad faith use, and the Policy expressly requires a showing of both. e-duction, Inc., v. Zuccarini, WIPO Case No. D2000-1369 (February 2, 2001).
Nor is the Complainant’s assertion that the Respondent has engaged in a pattern of cybersquatting compelling. Although some of the domain names registered to the Respondent and its affiliates raise questions, the evidence is not sufficient to prove that the registration of <afm.com> was part of a pattern of registering domain names to prevent trademark owners from reflecting their own marks in a domain name. Moreover, wading through the voluminous record, it appears that the Respondent registered some of these domain names on behalf of clients, some are sufficiently generic so as not to infringe on trademarks, see Micron Techs., Inc., v. Null Int’l Research Ctr., WIPO Case No. D2001-0608 (June 20, 2001), and those relating to the San Francisco mayorial election may merit First Amendment protection.
The Complainant’s additional allegations that the Respondent failed to return its phone calls or to provide information to the Complainant do not demonstrate bad faith. There is no obligation that a party respond to letters or otherwise provide information to a challenger in advance of a lawsuit (although doing so is often a good way to persuade a putative challenger of the existence of a legitimate interest or the absence of bad faith, and would strengthen a claim of Reverse Domain Name Hijacking as it would put the Complainant on notice as to the weakness of its allegations. See Goldline, supra).
The Panel finds that the weight of the evidence in the record does not support a finding of bad faith in this case.
D. Reverse Domain Name Hijacking
The Panel rejects the Respondent’s request for a finding of Reverse Domain Name Hijacking. Such a finding requires a showing of bad faith on the part of the Complainant. Church in Houston v. Moran, WIPO Case No. D2001-0683 (August 2, 2001). Although Respondent has prevailed on the merits, it has not made the requisite showing of bad faith. First, the <afm.com> domain name incorporates the AFM mark. Second, at the time the dispute was initiated, the <afm.com> website displayed only random text and when the Complaint was filed, the site offered only a short list of hyperlinks. Third, the Respondent has a history of registering multiple domain names, some containing trademarks. Fourth, it failed to respond to the Complainant’s letters, which would have put Complainant on notice of Respondent’s defenses. Together, these factors, all of which were cited by (and thus considered by) the Complainant, tend to negate an inference that the Complainant brought this Complaint in bad faith. The Panel thus finds that the Complaint was neither unreasonable nor made in bad faith.
The Complainant has failed to demonstrate that the Respondent registered and used <afm.com> in bad faith. The Panel therefore denies the Complainant’s request to transfer the domain name from the Respondent to the Complainant. Similarly, the Respondent has failed to demonstrate that the Complaint was brought in bad faith. Accordingly, the Respondent’s request for a finding of Reverse Domain Name Hijacking is also denied.
Dated: August 23, 2001
1. After receipt of the Center’s list of five proposed panelists for the position of presiding panelist, the Case Manager erroneously appointed Mr. Bernstein as Presiding Panelist before the parties had an opportunity to rank their preferences from the Center’s list. Once this administrative error was brought to the Panel’s attention, the Panel, on July 24, 2001, suspended its work on this case and issued an Order directing the Case Manager to distribute to the parties the Center’s original list of five proposed Presiding Panelists. In response, both parties expressly indicated that they preferred that Mr. Bernstein continue as Presiding Panelist in this case.
2. Two of the Panelists, representing a majority of the Panel, further note that recusal of the Provider is not warranted because only the Panel has the authority to issue a decision and ruling. Thus, even if the Provider had a bias in favor of a party – and the Respondent’s evidence that AFMA is active in WIPO does not rise to that level – that would be insufficient to justify recusal given that the Provider’s responsibilities are solely administrative, and that it is the Panel, not the Provider, that renders a decision on a complaint.
The Panel recognizes that, under the Rules, the Provider has substantial discretion in the appointment of Panelists. That discretion is tempered in two ways. First, if a party believes the Provider has acted upon any bias to appoint a panelist who is not impartial, the party can move for the panelist’s recusal or removal. Britannia Bldg. Soc’y, supra. The Respondent here has made no such allegations. Second, in cases involving three-member panels, the party can have substantial influence on the composition of the panel: it can offer three nominees for one of the panel positions and can articulate its preferences with respect to which of five proposed panelists should serve as presiding panelist. Rule 6(e). Here, one of the Respondent’s nominees was selected for the Panel, and the Respondent expressly agreed to the selection of Mr. Bernstein as the Presiding Panelist.
3. The Supplemental Rules limit the portion of the Complaint describing the grounds on which the Complaint rests to 5,000 words. Supp. Rule 10(a). The Complaint in this case complies with that requirement (the section is just under 4,900 words). To support the allegations of the Complaint, the Complainant has submitted 62 exhibits representing about three inches of documentary evidence. There is no restriction in the Rules or Supplemental Rules on the quantity of documentary evidence that can be submitted, although the Panel notes that the unusually large volume of material in this case made it impossible for the Panel to review the file within the 14 days provided by the Rules for rendering a decision. Rule 15(b). The Supplemental Rules also limit the portion of the Response responding to the statements and allegations in the Complaint to 5,000 words. Supp. Rule 10(b). Notwithstanding the Respondent’s complaint about the length of the Complainant’s Complaint, it is the Respondent who has exceeded that limit; the section of the Response responding to the allegations runs over 6,000 words.
When a Complaint fails to comply with the Rules, the Rules provide a mechanism for rejecting the Complaint and allowing Complainant five days to cure the deficiencies. Rule 4(b). The Rules contain no similar provisions for treatment of Responses that fail to follow the Rules. In these circumstances, it is up to the Panel to determine whether to accept the Response, and how to treat the Response’s deficiencies. Here, in light of the Complainant’s voluminous submission, the Panel has decided to accept the Response, but future parties should be aware that panels may strike or disregard submissions that exceed the Supplemental Rules’ word limits or otherwise violate the Rules. Cf. Talk City, Inc., v. Robertson, WIPO Case No. D2000-0009 (February 29, 2000), (disregarding submission that lacked certification required by Rule 5(b)(viii)).