Mama Jim's Pizza, Inc. v. Baraka, Inc. c/o S. David Alani
Claim Number: FA0706001022109
Complainant is Mama Jim's Pizza, Inc. (“Complainant”), represented by Jim
Johnson, 2521 Pepperwood Street, Farmers Branch, TX 75234. Respondent is Baraka, Inc. c/o S. David
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mrjimspizza.com>, registered with Register.com, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On July 2, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 23, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mrjimspizza.com>, the domain name at issue, is confusingly similar to Complainant’s MR. JIM’S PIZZZA mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and has used the domain name at issue in bad faith.
B. Respondent makes the following assertions:
1. Complainant has rights in its claimed mark, but they are not exclusive.
2. Respondent has rights and legitimate interests in the domain name at issue and rightfully registered the same in connection with its status as a franchisee of Complainant.
3. Respondent did not register the domain name at issue in bad faith and has not used it in bad faith.
Preliminary Issue: Respondent is the Former Franchisee of Complainant; Outside the Scope of the UDRP
Complainant and Respondent agree
that Respondent signed an agreement on or about
Complainant alleges that the franchise agreement signed by Respondent does not confer rights to use the MR. JIM’S PIZZA mark in a domain name. Complainant further alleges that Respondent registered the disputed domain name without Complainant’s authorization, and then refused to transfer the registration to Complainant. As a result, Complainant terminated Respondent’s franchise agreement. Complainant has now filed this Complaint seeking transfer of the disputed domain name, and is alleging that Respondent’s registration and use of the <mrjimspizza.com> domain name is a violation of the Policy.
Respondent contends that its franchise was not listed on Complainant’s website; therefore, Respondent registered the <mrjimspizza.com> domain name to advertise its franchise. Respondent asserts that the franchise agreement gives Respondent every right to print, advertise, register, and use the MR. JIM’S PIZZA mark. Upon registration of the disputed domain name, Respondent was immediately contacted by Complainant, who was willing to transfer the registration of the <mrjimspizza.net> domain name to Respondent if Respondent agreed to transfer registration of the <mrjimspizza.com> domain name to Complainant. Respondent refused this offer.
It appears that
Respondent was authorized by the franchise agreement to use the MR. JIM’S PIZZA
mark in the disputed domain name.
However, this is a contractual interpretation question which falls
outside the scope of the Policy. The
Panel is of the opinion that it should decline to rule on the domain name issue
which appears to be merely a part of a much more involved dispute between the
parties which ought to be resolved in another forum. See
Love v. Barnett, FA 944826 (Nat. Arb.
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 Frazier Winery LLC v. Hernandez, FA
841081 (Nat. Arb. Forum
The Complaint does not raise issues of abusive registration of the <frazierwinery.com> domain name, because the disputed domain name was registered and hosted by Respondent pursuant to a business relationship with Complainant … The Complaint alleges issues regarding the rightful possession of the domain name registration for the <frazierwinery.com> domain name pursuant to the parties’ agreement. Consequently, this dispute is properly one that arises under state law or common law, but in any event is outside of the scope of the UDRP.
Accordingly, the Panel elects to dismiss the Complaint. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat.
Accordingly, it is Ordered that the Complaint be dismissed.
James A. Carmody, Esq., Panelist
Dated: August 13, 2007
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