Claim Number: FA0707001048716
Complainant is BioMedical Technology Solutions, Inc. (“Complainant”), represented by Gayle
L. Strong, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <demolizer.com>, registered with Godaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Linda M. Byrne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 30, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 31, 2007.
On August 3, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <demolizer.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. 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 August 13, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 4, 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.
On September 1, 2007, Respondent requested, pursuant to Supplemental Rule 6, an extension of time to respond to the Complaint. On September 4, 2007, the National Arbitration Forum, over Complainant’s objections, granted Respondent an extension and set a new deadline of September 19, 2007 for a filing of a Response.
A timely Response was received and determined to be complete on
Both Complainant and Respondent filed an Additional Submission on a timely basis.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant submits that it is the owner of a federal registration for DEMOLIZER. Complainant also argues that certain circumstances are irrelevant to this proceeding, in particular the 2002 agreement between Thermal Waste Technologies (TWT) and Infectious Waste Technologies (IWT). IWT, according to Complainant, is merely a former licensee of the Demolizer system but has no current rights to the Demolizer name or technology. Complainant takes the position that the IWT agreement was terminated in 2004 and is no longer in effect.
Complainant also contends that Respondent’s domain name <demolizer.com> is identical and therefore confusingly similar to Complainant’s trademark; that Respondent has not proven any rights or legitimate interest with respect to the domain name; and that Respondent registered and used the domain name in bad faith.
Respondent argues that he has a legitimate interest in the <demolizer.com> domain name. Respondent was the president of IWT, which sold medical waste disposal products and services. In 2002, IWT entered into an agreement with Thermal Waste Technologies (TWT), which included a grant of certain rights to IWT in the Demolizer patented technology.
Respondent takes the position that TWT’s attempt to
terminate the agreement in 2004 was ineffective in view of the agreement’s
termination provisions and the surrounding facts. Respondent also argues that a court in
Respondent asserts that Complainant has no rights in the DEMOLIZER trademark. Although Complainant claims to be the successor in interest to TWT, Respondent alleges that TWT had no valid rights to grant to the Complainant in view of TWT’s ongoing agreement with IWT from 2002. Respondent also argues that he has a legitimate interest in the <demolizer.com> domain name by virtue of his plans to use the domain name in conjunction with wellness counseling services.
Respondent states that he intends to sue Complainant for damages in view of Complainant’s allegedly improper and fraudulent actions. Respondent denies that he has acted in bad faith and instead charges the Complainant with having done so. Respondent also alleges that Complainant’s allegations amount to reverse domain name hijacking.
C. Additional Submissions
Complainant’s Additional Submission asserts that Complainant has a clear chain of title to the DEMOLIZER trademark, and that Respondent knew of Complainant’s rights before registering the <demolizer.com> domain name. Complainant reiterates that Respondent has provided no evidence of legitimate rights, and that Respondent’s wellness counseling argument is unsupported. Complainant points out the Respondent has not used the <demolizer.com> domain name other than in association with a parking service sponsored by Respondent’s registrar.
Respondent’s Additional Submission argues that
Complainant has not proven that Respondent acted in bad faith in registering
the domain name. Respondent also argues
that there is no likelihood of confusion because Complainant’s DEMOLIZER
services are different from Respondent’s pl
Complainant owns a
Respondent was the President of Infectious Waste Technologies (“IWT”) and IWT entered into an agreement with Univec Inc. and its subsidiary Thermal Waste Technologies (“TWT”) in 2002. Under this agreement, IWT was given the right to act “as the Sales Agent and Distributor for the Demolizer® System.” The agreement is silent with respect to the registration and use of domain names but states, “TWT agrees that if TWT has not filed for Trademark protection of Demolizer® System in any territory except the United States, IWT, it [sic] successors or assigns shall have exclusive right to file for and obtain Demolizer ® System Trademark, for the term of this Agreement.” The Agreement also states, “TWT hereby conveys without limitation or qualification sole and exclusive right and interest in and to …the Trade name Demolizer®, Demolizer System and Trademark… Section 26 of the Agreement states, “This Agreement may only be terminated by TWT for substantial and demonstrable cause or active and deliberate fraud (“Cause”), which results in severe and recurring damage to TWT, which must be objectively demonstrated and quantified.”
On July 4, 2003, the <demolizer.com> domain name was registered by an employee of IWT, which is the company for which Respondent was president.
TWT sent IWT a letter dated
In 2005, TWT sought an order
of injunction from a court in
In 2006 and 2007, Complainant corresponded with the registrar and with Domains by Proxy, in an attempt to obtain the identity of the registrant for the <demolizer.com> domain name. However, Complainant was unable to obtain this information. Respondent renewed the <demolizer.com> domain name on July 4, 2007, and Complainant’s attempt to register the domain name by being placed on the registrar’s wait list was ineffective.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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
(3) the domain name has been registered and is being used in bad faith.
One of the primary questions before
the Panel is whether Complainant has rights in the DEMOLIZER mark, as well as
whether Respondent has rights in the <demolizer.com> domain name. However, this Panel concludes that this is a
contractual interpretation question which falls outside the scope of the
Policy. The Panel defers to the
reasoning stated by the majority panel in Love
v. Barnett, FA 944826 (Nat. Arb. Forum
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.
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.
The enforceability and interpretation of the 2002 agreement appears to
be relevant in determining the relative rights of Complainant and
Respondent. The parties to the agreement
(Complainant’s predecessor in interest and Respondent’s company) are in privity
with the Complainant and Respondent. In
view of the fact that this dispute involves a contractual dispute, litigation
Based upon the reasoning outlined in the aforementioned cases and the
similar circumstances alleged in the Complaint, this Panel concludes that the
Complaint contains a question of contractual interpretation, and thus falls
outside the scope of the UDRP. It is
therefore appropriate for this Complaint to be dismissed. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Linda M. Byrne, Panelist
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