Arnott, LLC v. Dustin Heon / AccuAir Suspension, LLC
Claim Number: FA2009001914983
Complainant is Arnott, LLC (“Complainant”), represented by David A.W. Wong of Barnes & Thornburg LLP, Indiana, USA. Respondent is Dustin Heon / AccuAir Suspension, LLC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <accuair.com>, registered with Amazon Registrar, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 28, 2020; the Forum received payment on November 9, 2020.
On November 10, 2020, Amazon Registrar, Inc. confirmed by e-mail to the Forum that the <accuair.com> domain name is registered with Amazon Registrar, Inc. and that Respondent is the current registrant of the name. Amazon Registrar, Inc. has verified that Respondent is bound by the Amazon Registrar, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 12, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@accuair.com. Also on November 12, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 28, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: BUSINESS/CONTRACTUAL DISPUTE OUTSIDE THE SCOPE OF THE UDRP
Complainant contends that AccuAir Control Systems, LLC d/b/a AccuAir Suspension Limited ("ACS") was the original owner of the mark and domain name and in 2016 granted a security interest to Newtek Small Business Finance, LLC and CDS Business Services, Inc ("CDS") to all assets owned by ACS, including trademarks and the domain name. In 2020, ACS filed Chapter 7 bankruptcy and on August 21, 2020 Complainant purchased the assets of ACS in a foreclosure sale from CDS. Complainant argues that ACS transferred the domain name to Respondent during or in anticipation of this bankruptcy proceeding and has not responded to Complainant's requests for voluntary transfer of the domain name.
Respondent did not submit a response in this proceeding.
In this instance, the Panel finds that this is a business and/or contractual dispute between two companies that falls outside the scope of the UDRP. In Love v. Barnett, FA 944826 (Forum May 14, 2007), the panel stated:
A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.
In Love, the panel was concerned with possible causes of action for breach of contract. In this case, however, Respondent points out that these causes of action are currently active cases that are pending with the courts. According to the panel in Love, complex cases such as the one presented here may be better decided by the courts than by a UDRP panel:
When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.
The panel in Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning:
[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes .… The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.
Further, In Bracemart, LLC v. Drew Lima, the Panel declined to make any findings under the UDRP when there was evidence that both the complainant and the respondent at some point acted in an official capacity in the management of the company, and that “[b]ased upon this reasoning, the Panel concludes that the instant dispute relates to contractual interpretation and/or whether the relationship between Complainant and Respondent was one of employer-employee or one of partnership, which determination falls outside the scope of the Policy.” See FA 1494699 (Mar. 28, 2013). Because the question of whether the complainant or the respondent in that case had rights in the domain name relied heavily on the corporate structure of the companies involved, the Panel could not resolve the dispute under the UDRP. See id.
Based upon the reasoning outlined in the aforementioned cases and the record, the Panel concludes that the instant dispute contains a question of contractual interpretation, and thus falls outside the scope of the UDRP. The Panel therefore concludes that the Complaint should be dismissed. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); see also Frazier Winery LLC v. Hernandez, FA 841081 (Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
A. Complainant
i) Complainant acquired rights in the ACCUAIR mark and disputed domain name by assignment in a foreclosure sale of the assets of AccuAir Control Systems, LLC d/b/a AccuAir Suspension Limited ("ACS"). Complainant has rights in the ACCUAIR mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,716,024, registered Apr. 2, 2019) and subsequent assignment to Complainant. The disputed domain name is identical or confusingly similar to Complainant’s mark as it simply adds the ".com" generic top-level domain ("gTLD") to the mark.
ii) Respondent lacks rights or legitimate interests in the disputed domain name. Respondent unlawfully acquired the domain name from its original owner, ACS, either in anticipation of or during the bankruptcy of ACS. Respondent cannot use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent illegally acquired the domain name. Respondent is not commonly known by the disputed domain name and does not provide any evidence to show Respondent is commonly known by the disputed domain name.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent's change in registration behind a privacy service is an attempt to conceal the true identity of Respondent and shows bad faith registration and use. Respondent acquired the domain name in bad faith and with actual knowledge of Complainant's legal ownership of the mark and the domain name given Respondent's status as a former employee of the prior owner and the timing of the recent transfer.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was originally registered on October 13, 2011.
2. Complainant has established rights in the ACCUAIR mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,716,024, registered Apr. 2, 2019) and subsequent assignment to Complainant.
3. This dispute falls outside the scope of the Policy and should be decided by the Courts.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the ACCUAIR mark based on the registration of the mark with the USPTO (e.g. Reg. No. 5,716,024, registered Apr. 2, 2019) and subsequent assignment to Complainant. Registration of a mark with the USPTO and assignment to a complainant confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”); see also Golden Door Properties, LLC v. Golden Beauty / goldendoorsalon, FA 1668748 (Forum May 7, 2016) (finding rights in the GOLDEN DOOR mark where Complainant provided evidence of assignment of the mark, naming Complainant as assignee). Complainant provides the USTO registration of the ACCUAIR mark and evidence of assignment of the mark to Complainant. Accordingly, the Panel finds that Complainant has established rights in the ACCUAIR mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that the disputed domain name is identical or confusingly similar to Complainant’s mark as it simply adds the ".com" generic top-level domain ("gTLD") to the mark. The addition of a gTLD generally is not sufficient to distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The Panel therefore finds that the disputed domain name is identical or confusingly similar to the ACCUAIR mark under Policy ¶ 4(a)(i).
The Panel finds that this matter is outside the scope of the UDRP.
The Panel finds that this matter is outside the scope of the UDRP.
As the Panel has found that this matter is outside the scope of the UDRP the Panel concludes that the Complaint shall be DISMISSED without prejudice.
Ho Hyun Nahm, Esq., Panelist
Dated: January 5, 2021
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