BioMedical Technology Solutions, Inc. v. Suresh
Shottam
Claim
Number: FA0707001048716
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@demolizer.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.
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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
FINDINGS
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.
DISCUSSION
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.
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.
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
in
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.
Arb. Forum
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be DENIED.
Linda M. Byrne, Panelist
Dated:
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum