Team
Claim Number: FA0707001031509
PARTIES
Complainant is Team USA Moving, Inc. (“Complainant”), represented by Stephen
P. Smith, of Team USA Moving, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <teamusamoving.com>, <teamusamovingcompany.com>,
<teamusamovers.com>, <teamusarelocation.com>, <teamusamover.com>, <teamusastorage.com>, <teamusatransport.com>, and <teamusadispatch.com>,
registered with GoDaddy.com, Inc.
PANEL
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.
Debrett G. Lyons as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 11, 2007; the
National Arbitration Forum received a hard copy of the Complaint on July 12, 2007.
On July 11, 2007, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <teamusamoving.com> domain name is registered with GoDaddy.com, Inc. and that the Respondent is
the current registrant of the name. On
July 13, 2007, GoDaddy.com, Inc.
confirmed by e-mail to the National Arbitration Forum that the <teamusamovingcompany.com>, <teamusamovers.com>,
<teamusarelocation.com>, <teamusamover.com>, <teamusastorage.com>, <teamusatransport.com>, and <teamusadispatch.com> are
registered with GoDaddy.com, Inc. and
that the Respondent is the current registrant of the names. GoDaddy.com,
Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On July 18, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 7, 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 postmaster@teamusamoving.com, postmaster@teamusamovingcompany.com, postmaster@teamusamovers.com, postmaster@teamusarelocation.com, postmaster@teamusamover.com, postmaster@teamusastorage.com, postmaster@teamusatransport.com, and postmaster@teamusadispatch.com by e-mail.
A timely Response was received and determined to be complete on August 7, 2007.
On August 17, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Debrett Lyons as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges that on or about June 7, 2007, Respondent became
the registrant of <teamusamoving.com>,
which is confusingly similar to a trademark in which Complainant has
rights. In particular, Complainant is
the proprietor of United States Federal Trademark Registration No. 3,243,542
for a stylized mark including the expression, “Team
Complainant states that it has been doing business as an interstate
moving company/broker under the name Team USA Moving, Inc. since June 17, 2002.
Complainant states that Respondent, AffordableWebProductionsInc., a/k/a
Alfred Moya, a/k/a/ Domain Is For sale, was established on December 28, 2000
and dissolved on October 4, 2002.
Complainant alleges [Panel note:
inconsistently] that it contracted with Respondent to work on Complainant’s
website over the period of October 2003 - June 2004.
Complainant asserts that the domain name <teamusamoving.com> was registered by its employee, a Joe
Devigili, on June 16, 2002, through Registrar Network Solutions. On March 4,
2004, Mr Devigili, contacted Network Solutions and formally changed the contact
information for the domain name to Stephen Smith, Complainant’s authorized
representative in these proceedings. On
March 8, 2004, Mr Smith transferred the domain name <teamusamoving.com> from Registrar Network Solutions to
Registrar Registerfly.com (eNOM, Inc.).
On or about June 7, 2007, Complainant states that it experienced email
and other communication failure and learned that the domain name <teamusamoving.com> was being
offered for sale by Respondent.
Complainant states that on or about the week of June 11, 2007, it became
aware that sometime in March 2007, RegisterFly.com lost its accreditation and
was instructed by ICANN to transfer certain registered domains to Go Daddy, including
<teamusamoving.com> and that,
by means unknown to Complainant, Respondent transferred that domain name to itself.
Complainant goes on to state that on or about June 18, 2007, Respondent
contacted Mr Smith by email to inform him of a third party bid for the domain
name <teamusamoving.com> of US$6,000.00. Respondent offered the domain name to Complainant
for US$7,000.00. On or about June 28, 2007, Respondent again emailed Mr Smith
to inform him that “teamusamoving.com package auction closes on Monday July 2
unless someone reaches my BIN of $15,000.00….”
Complainant understood that the “package” referred to in that statement meant
the following domain names:
<teamusamoving.com>
<teamusamovingcompany.com>
<teamusamovers.com>
<teamusarelocation.com>
<teamusamover.com>
<teamusastorage.com>
<teamusatransport.com>
<teamusashipping.com>
<teamusacargo.com>
<teamusafreight.com>
Complainant asserts that Respondent has registered and used the domain
names in bad faith. As further evidence
of Respondent’s bad faith dealings, Complainant states that Respondent “has
cybersquatted domain names and infringed on trademark/service marks in the
past, as evidenced by Administrative Panel Decision U-Haul International, Inc.
v AffordableWebProductionsInc.”
As required by the Rules, Complainant has in the Complaint referred to
other legal proceedings where Complainant states that it “is a member of a
class action lawsuit against Register Fly, eNOM & ICANN.”
B. Respondent
The Response gives a very different account of the relationship between
the parties and the genesis of the disputed domain names.
Respondent alleges that Mr. Devigili was the original
founder and President of Complainant’s business, but that Steve Smith,
Complainant’s current authorized representative, “stole” the company from Mr.
Devigili in 2004.
Mr. Devigili allegedly then filed a trademark
application with the United States Patent and Trademark Office to claim rights
in trade mark, TEAMUSAMOVING.COM (Serial No. 78/470,664 filed Aug. 19, 2004),
but subsequently abandoned the application.
Respondent contends that one of its founders, Alfred Moya, worked as a
consultant for Mr. Devigili’s new company, Team USA Relocation Inc. d/b/a Top
Relocation, and as consideration for his services, “was awarded rights to Mr.
Devigili’s trademark application for the TEAMUSAMOVING.COM mark as well as
registration of the <teamusamoving.com>
domain name.”
Based on this version of events, Respondent
contends that he has held the registration of the <teamusamoving.com> domain name since 1994.
As with Complainant, Respondent states that
it is involved in civil proceedings, namely, a “class action lawsuit against
Register Fly, eNOM & ICANN.”
FINDINGS
Preliminary
Issue
The Panel is of the opinion that there is an
important preliminary question as to whether this dispute falls outside the
scope of the Policy.
In the case of First Nationwide Exchange,
Inc. v. Reskyu, FA 956937 (Nat. Arb. Forum May 24, 2007), the panel considered
many of the relevant prior decisions under the Policy in the context of a
dispute where that complainant contended that the respondent was hired to
register the disputed domain name on behalf of complainant and to create content
for a corresponding website. The respondent did not complete the project and later
refused to transfer the disputed domain name to the complainant.
The panel there said:
Based on the assertions of both parties, the Panel is clearly satisfied that this is not a case of cybersquatting, but rather a business dispute arising from which there is a question concerning the rightful ownership of the disputed domain name.
In this Panel’s opinion, the first matter which calls for consideration is whether the Complaint falls outside the scope of the Policy. In 1999, the World Intellectual Property Organisation (“WIPO”) produced a report in which it noted that good faith disputes between competing right holders or other competing legitimate interests over whether two names were misleadingly similar would not fall within the scope of the UDRP.
Previous panels have found that disputes between employers and employees are outside the scope of the Policy and should be decided in a court of law. For example, in Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000), the panel held that a dispute concerning an employee’s registration of a domain name in his own name and his subsequent refusal to transfer it to his employer raised issues of breach of contract and breach of fiduciary duty that were more appropriately resolved in court, not before a UDRP panel. Whilst the present facts involve a dispute between former business partners, the case could nonetheless be seen as analogous to the Latent Tech. Group, Inc. case.
The circumstances of Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001), are closer to the current dispute, and there the panel refused to transfer the domain name, stating that the Policy did not apply because attempting “to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy.”
Additionally, in Discover
In the case of Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005), the facts were that the complainant came to a verbal agreement with the respondent that the respondent would become its Australian distributor of sporting goods. The relationship broke down and the respondent refused to transfer the relevant domain name to the complainant before compensatory claims against the complainant were met. The panelist noted that the purpose of the Policy:
[I]s 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.
In that case the panel did however go on to apply the Policy but held that the complainant had not discharged the onus in relation to the second element of Paragraph 4(a); it had failed to make out a prima facie case that the respondent lacked rights or legitimate interests in the domain name.
Again, in Draw-Tite, Inc. v.
This Panel well recognizes that its jurisdiction is limited to providing a remedy in cases of “the abusive registration of domain names,” or “Cybersquatting.” . . . Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.
In the present case, neither party has shown particular concern for the Policy or what it requires to be shown. The evidence on all material questions to be determined is lacking and the Panel considers that there would be ample weight in prior UDRP decisions to justify a ruling that the matter is properly one for another forum.
The Panel here notes other similar decisions.
See, for example, Everingham Bros. Bait Co. v. Contigo Visual,
FA 440219 (Nat. Arb. 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.”); Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb.
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.”); Frazier Winery LLC v. Hernandez, FA
841081 (Nat. Arb. 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); Love v.
Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007) where the panel said,
[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.
Weighing these authorities against the
present case, a number of critical observations can be made:
1.
As in
the First Nationwide Exchange, Inc. v. Reskyu case, supra, the Complaint pays only
casual regard to what is required to be proven under the Policy in order to
prevail. For example, there is merely a
bald statement that the domain name <teamusamoving.com> is identical to Complainant’s United
States Federal Trade Mark Registration No. 3,243,542, and only a vague
implication that the remaining 7 disputed domain names are somehow confusingly
similar to that trade mark. The
registered trade mark, the Panel observes, is for a logo-style mark, prominently
featuring a large device element. Any monopoly in the letters “
2.
The Response pays even less regard to the Policy
and gives a contradictory and inconclusive account of the background facts to
the dispute.
3. Not only do the parties give markedly different accounts of the basic
facts, but there is no clear evidence on record from which those facts might be
properly ascertained, making it impossible for this Panel operating under the Policy
to determine either credibility or decide on the essential elements.
4. Both
parties attest to their involvement in court proceedings against the Registrar
of the disputed domain names and other registrars. There is no evidence before the Panel as to
the cause(s) of action in those proceedings, nonetheless should they touch on
the rightful ownership of the disputed domain names, then as a rule, national courts are
better equipped to take evidence and to evaluate its credibility.
5.
So far
as the allegations of the parties are concerned, the dispute seems to be concerned
with contractual matters and possible breach of fiduciary duty. On the
contrasting facts presented, the Panel would not characterize the matter as
principally connected with the types of conduct the Policy was intended to
combat.
On balance, the
Panel is of the view that the dispute has insufficient connection, either by
way of the parties’ submissions or from an evidentiary standpoint, to properly
engage the Policy.
DECISION
The Panel decides that the dispute falls outside the Policy and so
outside its competence and accordingly the Complaint is DISMISSED.
Debrett G. Lyons, Panelist
Dated: August 31, 2007
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