Ron Dawson Inc v. Dennis Grady
Claim Number: FA0201000103927
The Complainant is Ron Dawson Inc. of Dallas, Texas (“Complainant”) represented by Ron Dawson, Jr. The Respondent is Dennis Grady, 1 Pineview, Danbury, CT (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pestsupply.com>, registered with Network Solutions, 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.
Edward C. Chiasson, Q.C. as Panelist.
The Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on January 18, 2002; the Forum received a hard copy of the Complaint on January 22, 2002.
On January 23, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <pestsupply.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that the Respondent is bound by the Network Solutions, 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 January 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 13, 2002 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on February 13, 2002.
Subsequently, the Complainant delivered a Letter of Rebuttal to which the Respondent replied in a document dated February 20, 2002.
On February 25, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Edward C. Chiasson, Q.C. as Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The subject domain name was coined and planned for use by the Complainant for its pest control supply business since December of 1998. The term PestSupply has been used by the Complainant since 1997. The subject domain name has been used and promoted extensively by the Complainant for its Internet and website related businesses since January of 1999. The subject domain name is not a finalized National registration (pending) of the Complainant, but on December 21, 1999 the Complainant registered the subject domain name with the Dallas County Records Division of Dallas County – Dallas, Texas , as an "assumed name" under which it planned to carry on business.
The Complainant also owns similar domain names to protect its interest in PestSupply. Some of those names are: <Pestsupply.net>, <Pestsupply.org>, <Pestsupply.biz> and <Pestsupply.ws>.
Various other names have been derived from PestSupply such as: <epestsupply.com>, <apestsupply.com> and <ipestsupply.com>.
Ron Dawson Jr., acting as authorized agent for the Complainant and acting as webmaster and webdesigner for its pest control supply division, began work with web2010.com in 1998 working on miscellaneous websites. Ron Dawson Jr’s involvement with these other websites required numerous telephone calls to web2010.com asking about setting-up a new website using the subject domain name. Ron Dawson Jr. is not sure of the names of the persons he contacted at web2010.com, but only that these persons identified themselves as “sales agents”. Numerous telephone calls were made between January and March of 1999 concerning planning and technical aspects of setting up the subject domain name website on the Internet as an e-commerce enabled website.
On March 25, 1999, Ron Dawson Jr. contacted web2010.com to set-up a new website to use the subject domain name. The agreement involved registering the subject domain name, establishment of the website and installation of a shopping cart so that e-commerce transactions could take placed over the website. Web2010.com notified Ron Dawson Jr. by email on March 29, 1999 that the subject domain name website was registered and set-up and ready for business. Ron Dawson Jr. then contracted an Internet shopping cart installer doing business as PSDM.com. On March 29, 1999 PSDM contacted Ron Dawson Jr. by email and confirmed that the shopping cart program had been installed and was ready for products to be added to it.
Ron Dawson Jr. began work and over the next eight months endeavored to build the subject domain name website. As noted, the subject domain name website was registered with the Dallas County Records division in December of 1999 and a bank account opened in December of 1999 to allow Internet deposits from sales to be wired into it.
On April 14 2001, Network Solutions (Verisign Registrar) put the subject domain name on hold for non-renewal and non-payment. Ron Dawson Jr. called Network Solutions and it was discovered that the Respondent, who was believed to have been acting as an agent for the Complainant either through Web2010.com, Network Solutions, or PSDM, listed himself as the Registrant and billing contact for the subject domain name.
The Respondent did not renew the subject domain name, which lead to the shutdown of the subject domain name website for four days. Ron Dawson Jr. upon discovering this fact, paid the $35.00 renewal fee by credit card by telephone and upon advice from Network Solutions sent the Respondent a request for a Name Change Agreement. The Respondent did not reply to the request for a domain name change agreement or to subsequent emails or mailings of the domain name change agreement.
On November 14, 2001, the subject domain name again was put on hold by Network Solutions for non-payment and non-renewal although the listed date for expiration was February 10, 2002. Ron Dawson Jr. again called Network Solutions and paid by credit card the $35.00 to renew the domain name. The Respondent again failed to renew the subject domain name or to contact anyone concerning the renewal which lead to another four day shutdown of the website. Ron Dawson Jr. again emailed the Respondent about the domain name change agreement and threatened legal action if the domain name were not transferred to the Complainant
On December 19, 2001, thirty days after Ron Dawson Jr’s renewal of the subject domain name, the Respondent acting on his own and without the authorization of the Complainant or Ron Dawson Jr. changed the DNS information on the subject domain name record to reflect a different server – that of NS1.QUIK.NET. The previous DNS server was of Web2010.com – NS.WEB2010.COM.
This change of DNS information by the Respondent resulted in a complete shutdown of the Complainant’s subject domain name Internet business. All of the subject domain name Internet links were diverted to the Respondent’s NS1.QUIK.NET server resulting in click through fees to the Complainant. This diversion occurred during the busy Christmas holiday rush. The Complainant incurred a loss of tens of thousands of dollars in sales and click through costs as a result of the Respondent’s actions.
The Complainant belies that the Respondent has intercepted email and is potentially getting orders that contain valuable customer information including credit card numbers. The subject domain name order-log file for Internet placed orders was stolen in March of 2000 and approximately 100 subject domain name Internet customers’ credit card and other personal information was spread through email around the world. This was reported to the FBI in March of 2000.
On December 26, 2001, the Respondent mailed to Ron Dawson Jr., a demand letter for $60,000.00 in order to restore the DNS information and to point the DNS back to the NS.WEB2010.COM server. Ron Dawson Jr. then contacted lawyers and a letter was mailed to the Respondent demanding that he sign the domain name change agreement within three days of his receipt of the letter. The Respondent did not reply.
The subject domain name website has local Dallas, Texas area, national (USA) as well as international clients. The Complainant has a 3000 sq. ft. brick and mortar store, storage and distribution facilities and an Internet website with over 400 pages of content. Thousands of dollars are spent in the Dallas, Texas area market through radio and Yellow Pages advertisements. Thousands of dollars have been spent advertising the subject domain name on the Internet across the USA and around the world. Hundreds of links on Internet search engines point to the subject domain name website.
It is believed that the Respondent has followed steadily the success of the Complainant’s website and is attempting to gain monetarily from its popularity and success by diverting traffic that the Complainant has paid thousands of dollars to generate.
Prior to February 10, 1999, the Respondent did not disclose that he had registered the subject domain name. He has not been known by the word "pestsupply" and has made no commercial or non-commercial use of the subject domain name.
The Respondent is diverting customers from the Complainant and has taken control of a domain name that he twice let expire.
On February 9, 1999, the Respondent registered and paid in full for the subject domain name through the registry service of World Wide Names, a no longer existing group within the company WEB2010, which is now part of Hostcentric Solutions.
The Respondent did so working as an independent consultant for Parkway Exterminating Co. Inc. ("Parkway") as a result of an agreement made between him and Brian Mongillo, Vice President of Parkway on January 10, 1999 to research and implement an online spin-off of their existing brick and mortar pest control business that has been a going concern since 1932.
An initial launch date of February 2000 was planned. During the period from January 10, 1999 until February 1, 2000, the Respondent acted to meet the goals set with Brian Mongillo: one, contracted with Owascoag Fine Art Design Company (OFADC) to design and produce an online name and image including a logo and series of web commerce pages; two, contracted with OFADC to create print format representations for brochures, business cards, invoices, flyers and advertisements. These projects were initiated prior to the date the Complainant claims to have launched its website and indicate first use in commerce of the business name “Pestsupply.com”.
On December 10, 1999, prior to the planned launch of the web-based business, the project was put on hold indefinitely due to a reprioritization of business commitments.
On November 15, 2000 Brian Mongillo informed the Respondent that Parkway was ready to go forward with the implementation of the planned web site. During early December the Respondent discovered an unauthorized handle name and unauthorized server names listed in the WHOIS database on the Network Solutions Inc. web site. He immediately began communications with Network Solutions Inc in order to determine why this had happened and to re-insert his own name, handle name and server names to their respective positions.
When the Respondent received the Complainant's December 20, 2001 email it became clear to him that an unauthorized third party, possibly the Complainant or WEB2010 had somehow pirated the subject domain name and had been conducting business at that address for an undetermined period of time.
It is believed that at some point after the subject domain name was registered by the Respondent, the Complainant working with WEB2010 found that the domain name it wanted to use for its online presence was registered. At this point working with some third party, or some third party working without the knowledge of the Complainant, it had the server on the subject domain name changed to point to the website of the Complainant.
The Respondent believes that the Complainant was aware that it was not the rightful owner of the subject domain name when it initiated and conducted business using the subject domain name. Neither the Complainant, nor anyone working in association with the Complainant, including anyone from WEB2010, made an attempt to contact the Respondent to indicate that business was being conducted at the subject domain website or to arrange a legal transfer of the ownership of the subject domain name.
The Respondent also believes that the Complainant intentionally circumvented regular payment for the subject domain name by sending payment to Verisign Inc. without informing the subject domain name’s registrant. By doing so, the Respondent was unable to transact a regular payment. Several attempts were made with Network Solutions Inc. to make payment for renewal yet those payments, on at least one occasion, were never transacted or were re-credited to the Respondent’s credit card because payment already had been made.
The Complainant took steps to intimidate the Respondent into transferring the subject domain name to the Complainant. These included: several threats to the well being of the Respondent as well as several slanderous accusations with the intent to harm his credibility; threatening to file a complaint with the FBI; communicating a Cease and Desist letter; threatening to bring a lawsuit against the Respondent if he were not agree to sign over the rights to the subject domain name.
The Respondent denies that he was the Complainant's agent and says that at the time he registered the subject domain name he had not heard of the Complainant.
The Respondent denies that he attempted to extort money from the Complainant. In return for redirecting the server names to his website, the Respondent did present an offer of sale to the Complainant following a solicitation for such an offer by Ron Dawson during a telephone conversation on December 24, 2001. The Complainant's suggestion that the parties attempt to transfer the subject domain name by enacting a sale during this telephone call is an indication that the Complainant was aware and confirms that it is not and was never the rightful owner of the subject domain name.
The decision to sell the subject domain name to the Complainant was based on the belief that the domain name had been diluted in value to its rightful owners due to the unauthorized use, marketing and advertising practiced by the Complainant. This offer was made in an effort to recoup expenses, time and effort already invested.
The Complainant does not hold rights to the trademark “Pestsupply.com”. Currently the trademark is pending registration to the Respondent and Brian Mongillo.
The Respondent has never and currently is not stealing information from customers intending to interact with the Complainant or any of its related entities. Anyone accessing the web site to which the subject domain name resolves is unable to input any information or to transact any information in any way.
C. Additional Submissions
The Complainant replied.
It rejects the Respondent's assertion that he was not the Complainant's agent. Hostcentric, formerly operated as Web2010.com and is the Complainant’s current Internet Service Provider. During telephone conversations between the Complainant and Hostcentric’s Legal Department on or about November 17, 2001, Hostcentric told the Complainant that it would be impossible to determine in what capacity the Respondent acted as agent for Web2010.com in setting up the subject domain name website for the Complainant on March 29, 1999. Hostcentric did not think that he worked directly as an employee of Hostcentric, but unless a court subpoenaed the employee records for every company that Web2010.com did business with in 1999, it would be almost if not impossible to determine in what capacity the Respondent acted as agent for the Complainant. By the Respondent's own evidence, the subject domain name was registered through “World Wide Names” – a division of Web2010.com on February 9, 1999 by the Respondent. This directly points to the Respondent having inside knowledge or information concerning the Complainant’s plans to open a website using the subject domain name. Verisign’s “Guardian Policy” also is direct evidence against the Respondent’s claim that the subject domain name was established without his authorization. The only person that could have setup and changed the DNS servers of the subject domain name was the registrant, the Respondent.
The Complainant rejects the Respondent's reliance on his agreement with Parkway because the January 10, 1999 letter does not specifically say which domain name will be used by Parkway. The subsequent February 1, 1999 letter only lists the subject domain name as a possible domain name and also lists 14 others. The Pesticide Applicator Business Registration issued on November 16, 2001, does not list the subject domain name as a DBA of Parkway Exterminating – instead it lists “Sampson Pest Control – Vincent E Scala” and does not list Brian Mongillo or the subject domain name. These articles substantiate the date of registration as a business entity and first use of the subject domain name by the Complainant's filing of a DBA registered with the Texas Secretary of State on December 21, 1999.
Parkway has never been known as or has conducted business under the subject domain name. The Respondent's December 26, 2001 letter is direct evidence of his intent to extort $60,000 to sell the subject domain name back to the Complainant.
The Respondent called Ron Dawson Jr. on December 24, 2001. He told the Respondent what the legal implications and potential costs were of the Respondent’s theft and conversion of the subject domain name and the redirecting of Internet servers without any prior notification to the Complainant. Ron Dawson Jr. tried to circumvent a lengthy legal battle, which potentially could have cost hundreds of thousands of dollars. He offered the Respondent $2,500.00 for his “time” and only as a way to forego the high costs of litigation. The Respondent replied with his letter seeking payment of $60,000 for the sale of the subject domain name. On December 28, 2001, Miller and McCarthy P.C sent a demand letter to the Respondent to which he did not respond.
Concerning its trademark rights, the Complainant says that "Pestsupply" has been a DBA of the Complainant since 1998. The subject domain name was registered to the Complainant and filed with the Texas Secretary of State on December 21, 1999. The Complainant engaged in business transactions using the subject domain name starting on December 22, 1999. Brian Mongillo and the Respondent filed registration of the subject domain name on June 29, 2001 – 19 months after the Complainant first began use of the subject domain name in interstate and intrastate commerce.
The Respondent, Brian Mongillo and Parkway have never done business as "Pestsupply.com," have never been known as "Pestsupply.com" and have no legal record or any DBA or filings with any state or federal agency prior to June 29, 2001. The hand typed contracts are not legal grounds to indicate that any of these individuals have any recorded first date of use other than the registration of the subject domain name on February 9, 1999 and June 29, 2001. The Complainant has filed a Notice of Opposition with the United States Patent and Trademark Office to deny Brian Mongillo and the Respondent any National Registration of the subject domain name.
In response to the Respondent's assertion that he is not stealing information, the Complainant says that before December 19, 2001 and for the prior 33 months, it had been conducting business over the Internet using the subject domain name. The web based email addresses that are given to any web address are proprietary for that web address. Any email directed towards the subject domain name can be picked-up by that web site's web master. This is common knowledge. The Complainant has thousands of customers that sent emails to the subject domain name on a regular basis for various support and order issues. Customers routinely emailed order information and personal and credit card information. Vendors routinely emailed information, some of this information contains price lists, etc. On December 19, 2001, the Respondent changed the DNS server information for the subject domain name and directed all traffic for the subject domain name to a new website controlled by him or by one of his associates without any warning to the Complainant. On that date, all email for the subject domain name also was redirected by default to the new server. It is not known whether the Respondent made use of any of the emails or information, but it cannot be denied that he has full control of all email directed at it since December 19, 2001.
It is the Complainant’s belief that the Respondent only recently established the FREE email account using the subject domain name to sidetrack any suspicion or belief that he was or could intercept email. The Respondent has full control over all email that is pointed to web site to which the subject domain name resolves.
The Respondent and Brian Mongillo have no facts that they have ever done business as or received any monies from any paying customers prior to the Complainant's contract with Web2010.com in March of 1999 to setup the web site using the subject domain name.
The Respondent delivered an additional reply.
The Respondent has never been employed by Web 2010 or its parent company Hostcentric Technologies. The Complainant has not shown that that the Respondent has ever worked for Web 2010, the Complainant or any of its affiliates in any capacity. The Complainant simply says that it spoke with some unnamed person. No new evidence has been shown that the Respondent had any affiliation whatsoever with the Complainant.
The Complainant claims that the Respondent had prior knowledge of its plans, but cannot prove this by any means. It merely suggests and writes about supposed conversations with unknown persons that it cannot substantiate. The Respondent did not work for Web 2010, did not have any knowledge of the Complainant’s plans.
The Respondent purchased the rights to the subject domain name through a company called World Wide Names just as any other person could have done. When the Respondent purchased the subject domain name, it was “parked”, meaning that it was left pointed to a ghost server.
The agreement between the Respondent and Parkway was legal, binding and completely enforceable by both parties. The ensuing course of events produced information, included in the original Response, of transactions taking place between the two parties showing the research and follow-up for a website to be called <pestsupply.com> prior to the date the Complainant alleges to have brought his company online. Prior to the Complainant registering its DBA, research, money, communications and other actions relating to the subject domain name were underway.
The Complainant did not secure the subject domain name and did not inform the rightful owner of its intentions. Every other domain name owned by the Complainant is registered to it. It is inconceivable that the Complainant could have overlooked this when beginning its website and simply forgot to register the subject domain name. The Complainant must have been aware of the Respondent's ownership.
It can be assumed that in doing business with Web 2010 the Complainant was able to circumvent the “Guardian” policy of Network Solutions and to re-direct the subject domain name for a period of time. This has been corrected.
In its rebuttal, the Complainant has admitted soliciting an offer to purchase the domain name from the Respondent, but subsequently declining the offer.
The Complainant has illegally represented that it has a registered trademark on its website where it states that “Pestsupply.com” is a “registered trademark” of Dallas Fort Worth Pest Control. This is factually incorrect as well as illegal. Brian Mongillo currently holds a pending application to “Pestsupply.com” with the United States. Trademark and Patent Office. The Complainant has no claim to any trademark of “Pestsupply.com”. Brian Mongillo and the Respondent have done business using “Pestsupply.com” prior to the Complainant’s admitted date of December 1999. Furthermore the registration of a domain name does not require immediate transaction of sales with the general public in order to be considered being used in commerce.
The Complainant's claim of the Respondent stealing e-mail from its customers is untrue. Acting within his rights as owner and registrant of the domain name the Respondent has directed the subject domain name to point to a parked DNS server. This server is not accepting any information, e-mail, credit card numbers, orders, supply lists, etc. and is not able to do so. The Complainant currently is not operating a mail server or e-commerce enabled web server in relation to the subject domain name.
It has been shown that the Respondent, working with Parkway, registered and implemented the subject domain name in good faith. There was no intent to disrupt the business of the Complainant, slander its reputation, or to steal customers from the Complainant. There are no legal grounds to assert that either the Respondent or Parkway must have a business, registered as, or complete sales being known by a business name of the subject domain name within a certain timeframe. In this particular case, a timing conflict arose to delay the launch of a website owned and operated by the Respondent and Parkway. A domain name does not have to be, and typically is not, a business' registration name. The domain name is simply a locator for the address on a server where a particular website can be found.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Administrative 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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(2) the domain name has been registered and is being used in bad faith.
A domain name dispute generally is not an appropriate forum for the resolution of contested intellectual property rights or the determination of disputed facts where matters of credibility are seriously in issue.
There is a dispute between the parties concerning the Complainant's right in a trademark that consists of the subject domain name. It has registered the name in Texas as an assumed name for the company and is opposing the trademark registration application of the Respondent and Mr. Mongillo.
The Complainant relies on an asserted common-law trademark interest, but its use has not been extensive and collides squarely with the Respondent's registration of the subject domain name. Both parties contend for the subject domain name in the context of a website. The subject domain name does not comprise the Complainant's corporate name or the corporate name of the company with which the Respondent contracted to assist in the development of a website. The Complainant has taken steps to obtain other domain names using the word "pestsupply".
It is clear that the alleged trademark interest and the subject domain name are identical, but the Administrative Panel is not in a position to resolve the contest over who has the trademark. Indeed, the issue is pending before the appropriate United State's agency.
The Complainant contends that the Respondent acted as its agent in registering the subject domain name. It relies on conversations with others. They are inconclusive in that the contacts apparently stated that they could not verify the role played by the Respondent, although the language used by the Complainant in its submissions refers to agency. That begs the question.
The Respondent denies that he was the Complainant's agent and denies employment by the entities on which the Complainant relies.
The Respondent relies on a contract he had with Parkway and states what he did to acquire the subject domain name and when. The Complainant dismisses the contract, but there is no reason in the material presented to the Administrative Panel for doing so.
The Respondent denies that he knew of the existence of the Complainant at that time and gives an explanation for not using the subject domain name.
The information is, in part, troubling because the Respondent's failure to make use of the subject domain name does not fit well with having a legitimate interest in it. His willingness to sell the subject domain, albeit at a very high price, also is not consistent with having a legitimate interest in it.
Reconciling these inconsistencies with the contract and the documents that show an intention to acquire the domain name for a business purpose is not possible in the context of this case. On balance, it cannot be said that the Complainant has met its obligation to establish that the Respondent does not have a legitimate interest in respect of the subject domain name.
The most telling feature of the Complainant's bad faith allegation is the fact that the Respondent sought $60,000 to transfer the subject domain name to the Complainant. This fact could taint the information concerning the Respondent's initial intention in registering the subject domain name, but the offer was made in response to a solicitation from the Complainant. The parties agree that there was a solicitation by the Complainant, but the written record does not paint a clear picture of the communications.
In addition, the Respondent has taken steps to acquire a registered trademark of the subject domain name.
The record is replete with allegations by both sides that the other has improperly interfered with its interest in the subject domain name. The Complainant alleges that the Respondent has improperly obtained customer information. The Respondent denies this. The Complainant says that it reported the theft of its order-log to the FBI. The Respondent contends that the Complainant threatened to file a complaint with the FBI as a means of intimidating him. These are allegations which should be addressed in a judicial forum which is able to consider a full documentary record and testimony. The present domain name case is not such a forum.
Considering the information overall, the Complainant has not established that the subject domain name has been registered or is being used in bad faith.
Identical and/or Confusingly Similar
The subject domain name is identical to the Complainant's alleged trademark interests, but the Complainant has not established that it has a trademark or service mark for the subject domain name, which is what it alleged.
Rights or Legitimate Interests
The Complainant has not established that the Respondent does not have a legitimate interest in the subject domain name.
Registration and Use in Bad Faith
The Complainant has not established that the subject domain name has been registered or is being used in bad faith.
The Complainant is dismissed.
Edward C. Chiasson, Q.C., Panelist
Dated: March 8, 2002
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