Ultima Holdings, LLC v. Solon Advertising & Marketing
Claim Number: FA0801001129019
Complainant is Ultima Holdings, LLC (“Complainant”), represented by Alexandra
T. MacKay, of Stites Harbison, PLLC,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ultimacarolina.com>, <fontanatrace.com>, <wildflowernc.com>, <avalonnc.com>, and <blackbearnc.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he and the other panelists have acted independently and impartially and to the best their knowledge have no known conflict in serving as Panelists in this proceeding.
Daniel B. Banks, Jr., (Ret), Panelist.
Honorable Herman D. Michels, (Ret.), Panelist
Honorable Karl V. Fink, (Ret.), Panelist
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 10, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 14, 2008.
On January 11, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <ultimacarolina.com>, <fontanatrace.com>, <wildflowernc.com>, <avalonnc.com>, and <blackbearnc.com> domain names 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 January 24, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 13, 2008 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on February 13, 2008.
A timely Additional Submission was received from Complainant on February 19, 2008 in accordance with the Forum’s Supplemental Rule 7.
On February 21, 2008, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Honorable Herman D. Michels, (Ret.), Honorable Karl V. Fink, (Ret.) and Honorable Daniel B.Banks, Jr. (Ret.) as Panelists.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant is engaged in the business of real estate services, namely
property management, real estate brokerage services, real estate investment,
real estate investment trust administration in Class 36, and real estate
development services, and uses the disputed domain names in connection with its
businesses. Complainant owns and
develops real estate in
On or about January 25, 2005, Complainant’s affiliates engaged the services of Respondent in connection with advertising and marketing the developments promoted under Complainant’s marks by entering into a written contract with Respondent. Among other things, the agreements provide that Respondent may purchase media in the name of Complainant’s affiliates and must develop non-event marketing ideas for Complainant’s affiliates’ use, such as websites. Respondent registered the disputed domain names as Complainant’s agent and on Complainant’s behalf, but failed to register them in Complainant’s name.
On or about May 2006, the relationship between Complainant and its affiliates, on one hand, and Respondent, on the other hand, deteriorated. Complainant and its affiliates chose not to work with Respondent any longer. Since then, Respondent has refused to transfer the domain names to Complainant. Instead, Respondent continues to maintain the domain name registrations in its own name and refuses to permit Complainant to have full access to them.
The domain names at issue are identical or confusingly similar to
Complainant’s marks, in which Complainant has rights. The only deviation from Complainant’s marks
and the domain names consists in the geographically descriptive material. One domain name adds the words “
Complainant owns federal registrations of two versions of the ULTIMA
mark, both of which appear on each of the websites posted at the domain names
at issue. Complainant owns common law
rights in the remainder of the marks.
While these marks were originally owned by Complainant’s affiliates, on
January 3, 2008, those rights were assigned and transferred to
Complainant. Complainant and its predecessors
have used Complainant’s marks throughout the
Respondent owns no rights in and to Complainant’s marks and has no rights or legitimate interest in the domain names. Respondent is not a real estate developer but is an advertising and marketing agency. The domain names were registered by Respondent at Complainant’s request as Complainant’s agent. Respondent was not using the domain names in connection with its own bona fide offering of goods or services. Respondent is not commonly known by the domain names at issue. Respondent is not making a legitimate, noncommercial or fair use of the domain names without intent for commercial gain. Respondent is interfering with Complainant’s right to use these domain names in its business.
The domain names have been renewed, maintained and therefore used by Respondent in bad faith. Respondent maintains the domain registrations even though the business relationship between the parties has terminated and Complainant has requested return of the domain names. Respondent’s failure to assign the domain names has prevented Complainant from making changes to the websites and controlling the use of the marks. Respondent is intentionally interfering with Complainant’s right to use and control Complainant’s marks and intentionally disrupting the Complainant’s business.
As an initial matter, Respondent asserts that the matters described in the Complaint relate to a contractual and business dispute between Complainant and Respondent and, accordingly, it is improper to resolve them in a UDRP proceeding.
According to the Complaint, “Respondent originally registered the domain names at Complainant’s request and on Complainant’s behalf” and is using the domain names in connection with websites “about Complainant’s goods and its services.” These registrations occurred pursuant to agreements between Complainant and Respondent in which the parties agreed that Respondent “shall retain the ownership…to any and all materials, etc., developed by [Respondent] for [Complainant]” and that Complainant only “shall have a license to use such materials during the Term” of their relationship, which has since terminated.
Furthermore, the agreements between the Complainant and Respondent clearly provide for a method of alternative dispute resolution that Complainant has not followed. Specifically, paragraph V(Q) of the agreements states as follows:
The parties shall attempt in good faith to resolve any controversy, claim or question of interpretation arising out of or relating to this Agreement or the breach thereof by mediation to be conducted by a mutually agreed upon professional mediator. Either party my initiate a mediation proceeding by a request in writing to the other party. If any such controversy, claim or question of interpretation has not been resolved within ninety (90) days following a mediation request, then the parties shall have all rights or remedies otherwise available at law.
At no time has Complainant initiated a mediation proceeding as required by this paragraph.
Complainant and Respondent are former business partners as the result of various contractual agreements between them that have since been terminated. Pursuant to these advertising agency agreements, Respondent designed and developed certain marketing and advertising programs for Complainant across various media including the websites associated with the domain names that are the subject of this dispute. Complainant has disputed the fees it owes to Respondent for services performed under the agreements and is attempting to leverage its negotiating position by filing the Complaint in this proceeding. Until shortly before Complainant apparently began preparation of the Complaint in this matter, the parties were still attempting to negotiate a settlement of their differences, including those related to the domain names.
Respondent goes on to address the three elements required under the Policy but because this Panel is in unanimous agreement regarding the contractual nature of this dispute, further discussion of Respondent’s contentions is not necessary.
Respondent requests the Panel to deny the remedy requested by Complainant and find that Complainant has engaged in attempted reverse domain name hijacking.
C. Additional Submissions
Complainant submitted an additional submission asserting that this is a dispute about domain names and not a contractual dispute. It exclusively involves the property rights in the domain names. Also, Respondent agreed to this process as the appropriate dispute resolution policy for issues relating to the domain names in its agreement with the registrar when it registered the domain names at issue. It has also availed itself of this forum by responding to the Complaint. Accordingly, Respondent cannot not argue that this is not the appropriate mechanism for resolving the dispute related to the domain names.
Complainant then states that it never directed, permitted, or authorized registration of the domain names in Respondent’s name. Because of the business relationship, Complainant did not learn of this fact until the relationship deteriorated. At the time of registration, Respondent was also an officer of one or more of Complainant’s affiliates and Complainant had no reason to suspect the registrations were not in its name.
With respect to that part of the agreement of the parties regarding “ownership…to any and all materials, etc., developed by Respondent…,” this selective quote omits the portion of the passage that demonstrates why this excerpt is inapplicable. When the ellipses are filled in, the passage states that Respondent “shall retain the ownership and copyrights to any and all materials, etc. developed by [Respondent]…” Accordingly, this does not entitle Respondent to register the domain names that conflict with Complainant’s marks.
Respondent filled an additional response again asserting that this is a contractual dispute outside the scope of the UDRP. The dispute over the domain names is but one part of a larger contractual and business dispute between the parties that also relates to unpaid fees owed for services performed. Those services included the development of websites using the domain names at issue in this proceeding. Respondent attaches correspondence between the parties and/or their counsel regarding the dispute that Respondent is owed money by Complainant. Complainant is contending that Respondent owes Complainant considerable monies.
It is the unanimous finding of the Panel that this matter involves a contractual dispute between the parties and is outside the scope of the UDRP.
Complainant and its affiliates originally hired Respondent to undertake advertising and marketing services for Complainant. Pursuant to written agreements between the parties, Respondent registered the <ultimacarolina.com>, <fontanatrace.com>, <wildflowernc.com>, <avalonnc.com>, and <blackbearnc.com> domain names at Complainant’s request and on Complainant’s behalf. However, Complainant claims that Respondent failed to register the disputed domain names in Complainant’s name, as was purportedly required by a written contract entered into by the parties. Since the relationship between the parties deteriorated, Complainant contends Respondent has refused to transfer the disputed domain names. Thus, Complainant alleges that it has no control over the disputed domain names, which still resolve to websites promoting Complainant’s business.
Although Respondent does address each element of the Policy, Respondent also points to a different clause of its contract with Complainant, and claims that Respondent is entitled to retain ownership of any materials developed for Complainant (in this proceeding, the disputed domain names). And Respondent contends that the dispute between the parties involves not only the domain names, but the payment of fees due to Respondent from Complainant. Thus, Respondent contends that the matters involved in this proceeding relate wholly to a contractual and business dispute between Complainant and Respondent, and is not appropriate for resolution under the UDRP.
In its Additional Submission, Complainant contends that the present dispute over the domain names at issue is not part of the ongoing contractual dispute between the parties, and that therefore the UDRP is an appropriate mechanism for resolution of the domain name issue.
The issue of whether Respondent was entitled to register the disputed domain names in its own name, rather than Complainant’s, is, in the opinion of the Panel, an issue outside the scope of the Policy. The Complainant and Respondent have a complicated business relationship concerning issues that are better left for the courts to evaluate. See 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.”); see also 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); see also Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007) (“When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.”).
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.”
The Panel also declines to find that Complainant was attempting reverse domain hijacking.
It is the decision of the Panel that this matter be DISMISSED without prejudice. The Panel also finds that there was no reverse domain name hijacking in this case.
Daniel B. Banks, Jr., (Ret.), Panel Chair
Honorable Herman D. Michels, (Ret.), Panelist
Honorable Karl V. Fink, (Ret.), Panelist
Dated: March 6, 2008
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