Vail Valley Partnership
d/b/a Vail Valley Chamber & Tourism Bureau f/k/a Vail Valley Tourism &
Convention Bureau v. ecomshare c/o Office Manager
Claim Number: FA0803001163682
PARTIES
Complainant is Vail Valley Partnership d/b/a Vail
Valley Chamber & Tourism Bureau f/k/a Vail Valley Tourism & Convention Bureau (“Complainant”), represented by Pantea
Garroussi, of Davis Graham & Stubbs LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vailonsale.com>, registered with Dotster.
PANEL
The undersigned certify that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelists in this proceeding.
Kendall C. Reed, Terry F. Peppard and Dr. Reinhard Schanda, Chair, as
Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 13, 2008; the National
Arbitration Forum received a hard copy of the Complaint on March 17, 2008.
On March 14, 2008, Dotster confirmed by e-mail to the National
Arbitration Forum that the <vailonsale.com> domain name is
registered with Dotster and that the
Respondent is the current registrant of the name. Dotster
has verified that Respondent is bound by the Dotster
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 March 27, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 16, 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 postmaster@vailonsale.com by e-mail.
A timely Response was received and determined to be complete on April 15, 2008.
A timely Additional Submission was
received from Complainant on April 22, 2008, but was determined to be deficient
pursuant to the National Arbitration Forum's Supplemental Rule
7 as the payment was received after the Additional Submission deadline.
On April 23, 2008, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Kendall C. Reed, Terry F. Peppard and Dr.
Reinhard Schanda, Chair, as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant contends that it is the owner and registrant of the
federally registered service mark VAIL ON SALE, with United States Patent &
Trademark Office (“USPTO”) registration No. 3,206,219. Complainant’s application was filed on April
14, 2006 and the mark was registered on February 6, 2007. The services identified in the registration
are “providing travel lodging information services and travel lodging booking
agency services.” In addition to the
foregoing, Complainant offers in connection with the VAIL ON SALE mark snow/ski
condition, weather, local retail and business, and event planning information
and publishes advertising related to the Vail,
Complainant further contends that it is a nonprofit Colorado
organization operating as a chamber of commerce and trade association
representing businesses and promoting general commercial development in and
around the mountain resort area of Vail, Colorado. Since 2000, Complainant has been offering
lodging booking services under the VAIL ON SALE name. This use occurred both through Complainant’s
lodging booking booth maintained in Vail,
Complainant contends that the domain name at dispute is nearly identical to Complainant’s federally registered mark VAIL ON SALE. The only difference between Complainant’s federally registered mark and Respondent’s domain name is the addition of the .com TLD.
Furthermore Respondent has no right or legitimate interest in the domain name at dispute. Respondent became the registrant of the domain name at dispute on or about October 25, 2007, when Respondent’s owner, Barney Treadway, accessed Complainant’s then current registration of the Domain Name, and without notice to or authorization from Complainant, transferred registration of the Domain Name from Complainant to Respondent.
To explain this allegation Complainant contends the background as follows:
“The Domain Name was originally registered with Network Solutions, Inc. (“NSI”) on January15, 2000, for Complainant by its marketing consultant, Hill & Company. The Domain Name was used exclusively by Complainant in connection with its Vail On Sale brand selected for its new lodging booking service. For administrative convenience, registration of the Domain Name was held by Hill & Company in trust for Complainant, with the understanding that Complainant owned the Domain Name.
“In late 2000,
Complainant sought to further automate its Vail On Sale lodging booking program
and issued a request for proposal (the “RFP”) to solicit bids from technology
service vendors to perform the required services. In Section 7 on page 5 of its RFP,
Complainant identified functionality desired for its “Vail On Sale” program.
Respondent submitted the winning bid and was awarded the contract.
“While development of the new Vail On Sale booking engine progressed, the registration of the Domain Name with NSI lapsed. In connection with the launching of the improved Vail On Sale booking engine, in September of 2005 Respondent, acting as web host and technology service provider and on behalf of Complainant, registered the Domain Name in its own name with Dotster, Inc. The parties understood that the website business conducted on <vailonsale.com> belonged to Complainant as the original user of the Domain Name and owner of the Vail On Sale business. Complainant was identified on the website as the copyright owner and point of contact. Complainant entrusted Respondent with hosting and technical functions, and had no reason to believe that Respondent would assert ownership over the Domain Name, regardless of the name in which it was registered.
“Since its purchase and use of the Domain Name in early 2000, Complainant continued its exclusive use of the Vail On Sale name and website for online lodging booking services, which over the years expanded to include information on a variety of Vail area services, amenities and events. All text, data, photographs, and lodging inventory depicted on the <vailonsale.com> website was procured by Complainant through its contracts with local businesses. On the basis of this consistent and exclusive use of the Domain Name, and its federal service mark registration with the USPTO, Complainant owns common law and registered service mark rights in VAIL ON SALE.
“On or around May 2007, in connection with the launch of Complainant’s general website at visitvailvalley.com, all of its domain names were consolidated under its domain registration account, and Respondent transferred registration for the Domain Name to Complainant, bringing registration of the Domain Name in line with its actual ownership. Respondent did not at this time assert any claim to the Domain Name. In late 2006, Complainant notified Respondent that it intended to solicit new bids for web hosting and programming services for its <vailonsale.com> website. Complainant issued a new RFP, and Respondent was invited to submit a bid. Respondent did not bid on the new RFP, and Complainant selected a different technology service provider by the end of 2006.
“On or around October 22, 2007, Complainant notified Respondent of the impending move of the <vailonsale.com> website to the new technology service provider and host. On or around October 25, 2007, using its position as technology host and attendant access to Complainant’s security passwords, Respondent secretly accessed Complainant’s Domain Name registration with Dotster and transferred ownership of the registration to itself. In the process, Respondent also changed all of Complainant’s passwords to block its future access and administrative rights to the Domain Name, although Complainant is still identified as technical and administrative contact on the registration.
“In early November 2007, Respondent threatened to shut down Complainant’s <vailonsale.com> website, and for the first time asserted ownership of the Domain Name. Respondent began to shop the Domain Name for sale to select Vail based businesses, and meanwhile pressed Complainant for compensation for the Domain Name and the entire website business.
“In order to avoid the crippling disruption to Complainant and its lodging vendors that would result from shut down of the <vailonsale.com> website during the ski high season, Complainant attempted to negotiate a settlement with Respondent, with the intent to amicably regain control of the Domain Name. Respondent first demanded $100,000 and then $50,000 as a condition to returning Complainant’s Domain Name and refraining from turning off the <vailonsale.com> website. Settlement negotiations failed, and on March 6, 2008, Respondent shut down Complainant’s <vailonsale.com> website and has since retained control of the Domain Name and all content on the website. To minimize disruption to its business, on or about March 6, 2008, Complainant hastily launched its <vailonsale.net> booking site hosted by its new technology vendor. Nevertheless, Complainant’s and its lodging vendors’ businesses have been severely damaged by shut down of the <vailonsale.com> website, which continues to attract traffic based on its long history of operation and established goodwill.
“On March 10,
2008, Respondent launched its own lodging booking website at <vailonsale.com>, and has
populated the website with content, property descriptions, text, and photos
copied from Complainant’s prior <vailonsale.com>
website, and from Complainant’s new <vailonsale.net>
website. Respondent is currently
actively notifying Complainant’s lodging vendors that its website continues “as
before” and is representing to the public that Respondent’s business is the
same as and a continuation of Complainant’s business.
“Prior to
hijacking Complainant’s Domain Name and website, Respondent never conducted
business under the Vail On Sale name or on the <vailonsale.com> website, and was never known as Vail On
Sale. Respondent merely served as
Complainant’s outside web host and technology services vendor. All content, photographs, lodging inventory
data, and information offered on the <vailonsale.com>
website are owned by Complainant and its member lodging vendors that
contributed such material under contract with Complainant. From its inception, the <vailonsale.com> website identified Complainant as the owner
and provider of the site, and in fact it was Respondent’s obligation to
incorporate such information on the web pages.
Respondent only now holds registration of the Domain Name because it
embezzled it.”
Finally Complainant contends that Respondent has registered and is using the Domain Name in bad faith. Respondent has acted in bad faith by abusing Complainant’s trust and its authority as technical contact to hijack the Domain Name. Respondent took possession of the Domain Name in order to disrupt and sabotage Complainant’s businesses because it was jealous of the impending transfer of web hosting and programming services (and attendant loss of future revenues) to another technology vendor. Respondent hijacked registration of the Domain Name on October 25, 2007, long after Complainant applied on April 14, 2006 to register the VAIL ON SALE mark with the USPTO.
After hijacking the Domain Name, on information and belief Respondent actively offered to sell the Domain Name to Vail area organizations for its own profit. Respondent’s efforts were unsuccessful since the solicited organizations associated the Domain Name with Complainant and were suspicious of Respondent’s activities. Having failed to sell the Domain Name, Respondent diverted its attention to using the Domain Name and the threat of shutting down Complainant’s <vailonsale.com> website as leverage to extort payment. Complainant’s worst fears materialized when Respondent did indeed shut down Complainant’s <vailonsale.com> website at the height of busy ski season, and proceeded to use the Domain Name to confuse consumers and to divert web traffic and profits to its own new competing website. Respondent is trading on the goodwill of Complainant, and attempting to steal Complainant’s only revenue generating business by representing itself as the owner and provider of Complainant’s business. Ironically, while Respondent boldly asserts that its service is the same as Complainant’s, it is simultaneously seeking new lodging listing contracts. Apparently, Respondent is not itself convinced that it owned Complainant’s business.
On March 11,
2008, Mr. Treadway formed a new
In its Submission dated April 15, 2008, Respondent stated the following
Response:
“Case Overview:
“Ecomshare purchased the domain <vailonsale.com> on September 5th,
2002 to be used for an on-line booking engine. Though the VVP was already using
an on-line booking engine, Ecomshare believed a market existed in better
serving last minute travelers visiting the Vail,
“Ecomshare purchased the domain name, built the system using its own resources, and launched <vailonsale.com> in November of 2002. The system became successful over the next 6 years, eventually grossing $1.1M in the period of April 2007 through March 2008. In early 2006 Ecomshare provided access to the domain name record through its Dotster provided management tools. This access was supposedly provided to allow the VVP to keep the domain's administrative contacts current. On June 26, 2006, (without informing or notifying Ecomshare) the VVP used this access to Ecomshare's domain management site to change the ownership of <vailonsale.com>. Ecomshare was not aware of this until late in 2007 when the VVP stated they wanted to take <vailonsale.com> and move it to a new provider. Aware of the potential loss of its property, Ecomshare removed access to the domain name and reset the domain's ownership to Ecomshare. The VVP has now claimed “historic” ownership of the domain name and all related data and subsequently served Ecomshare with a cease and desist on Jan 24th of 2008.
“Ecomshare offered to sell the domain and all related data and materials for a single year's net commission ($100K). When that was refused we then offered to sell all rights and property for the projected gross commission amount for the upcoming month of March (~$50K). We sincerely tried to amicably resolve this situation but the VVP was unwilling to purchase the domain name and related data. Ecomshare was forced to stop taking bookings in the Vail area and remove any VVP related references on <vailonsale.com> on March 7th, 2008. We rebranded the content already existing on our servers (we did not need to “copy” anything) and set about re-establishing contact with local lodging providers. The VVP told its customers and our other clients that they faced trademark infringement lawsuits should they work with Ecomshare. We subsequently filtered all Vail content out of <vailonsale.com>.
“Specific Errors in the Complainant Claim
“1) The Complainant was not historically using <vailonsale.com> as claimed. The Complainant states that <vailonsale.com> was their “sole source of revenue” and has been continually in use as their booking solution as early as 2000. According to Rob O'Connor of Active Currents (<e-onlinebookings.com>) and from the web pages recorded from November 29th 2001 and stored at archive.org (Exhibit G), the VVP were already using a third-party booking engine not provided by Ecomshare prior to Ecomshare's registration of <vailonsale.com>. The link to “Book Now” within Exhibit G is not a link to <vailonsale.com> but is a link to <visitvailvalley.e-onlinebooking.com>.
“The VVP moved to another booking solution provided by Intrawest Partners in 2004 that they continue to use to this day (<vailvalley.rezrez.net/vps>). And even though Active Currents and Intrawest were competition for Ecomshare's <vailonsale.com>, Ecomshare was asked to link to it on the front page of <vailonsale.com> starting in 2004 so as to minimize conflict with their existing lodging program (Exhibit H). The VVP has used at least these two domains and providers for their booking services since 2001 and to my knowledge has not claimed ownership of <rezrez.net> or <e-onlinebooking.com>.
“2) The VVP claims Ecomshare was commissioned to build <vailonsale.com> in November of 2000 and was “awarded the contract” as per their Exhibit E. As is clear from these documents, the sole service contracted for at that time was the Lodging Quality Assurance program. There is no mention of <vailonsale.com>, and <vailonsale.com> was registered by Ecomshare in 2000. Since it is impossible for Ecomshare prove a lack of contract, it is the responsibility of the VVP to provide the contract they refer to for the building and hosting of <vailonsale.com>. They cannot do so as no contract exists.
“3) According to the VVP's
federal registered trademark, the VVP's own claimed first use of Vail on
“4) The Complainant was indeed the “face” of the <vailonsale.com> system due to its familiarity with local businesses. Ecomshare chose the VVP to perform this function rather than sell these services itself. The VVP appears to have then assumed ownership of the program over the next 6 years. The copyrights on the text and graphical elements used within <vailonsale.com> were associated to the VVP as the VVP provided those items to Ecomshare.
“5) While the VVP and Hill and Co appear to have had a working relationship and may have had plans to use the domains name <vailonsale.com>, it has no bearing in this matter. Ecomshare was not involved in those discussions and purchased the domain name when it was freely available for a system of Ecomshare's own design and functionality. The Complaint claims Ecomshare purchased the domain name in September of 2005 when it can be shown we purchased it in 2002.
“6) The Complainant charges Ecomshare acted out of “jealousy” with regard to an RFP in late 2006. Ecomshare did not bid on the RFP because it was not a replacement for <vailonsale.com> but a website and services involving the <visitvailvalley.com> website (Exhibit E). Ecomshare worked with the VVP to vet vendors and even began to work with the winning vendor on integration of reservation data (i.e. <vailonsale.com> data) as illustrated in Exhibit F. The RFP does not include any reference to a lodging program nor any reference to <vailonsale.com>.
“7) The July 21, 2001 archived page provided by the VVP as proof of <vailonsale.com> “use” is the same page as recorded by archive.org for the VVP's main website <visitvailvalley.com>. There was no booking service attached to this page and this merely shows that the <vailonsale.com> nameserver records temporarily pointed to the same server as was hosting the VVP's existing website. That the VVP (or Hill and Tashiro) then let the name expire in January of 2002 shows it was not in active use.
“Conclusion
“Ecomshare built <vailonsale.com> to compete with the VVP's contracted booking providers in hopes that Ecomshare could build a system that would work more efficiently and effectively than those booking systems in use by the VVP. Ecomshare does not deny the VVP's right to offer lodging services or to use any vendor of their choice. Ecomshare only rejects the VVP's claim to own the property (<vailonsale.com>) purchased and developed by Ecomshare using its own resources. The VVP has shown no evidence that they purchased <vailonsale.com> from Ecomshare or while it was in the public domain. The VVP has not provided any document or contract wherein they purchased or have rights to the <vailonsale.com> intellectual property that was created and is owned by Ecomshare. The VVP apparently agreed with Ecomshare's position earlier this year when they offered to purchase Ecomshare's rights in the program. However, the VVP's real issue seems only to be the value attached to the system that Ecomshare has spent the last 6 years developing, enhancing and maintaining. This is simply a case of a buyer thinking the selling price is too high and trying instead to force an acquisition of the seller's property.
“I swear that the documents provided in Exhibit form and the contents of this document are accurate to the best of my ability and have not been altered to disguise their true contents.
Barney Treadway”
With its additional Submission Complainant stated in response to
Respondent’s Response the following:
“The record is clear, and Respondent admits, that Complainant 1. first
selected and used the Domain Name, 2. already had a lodging booking service for
years before Respondent was engaged to develop the VAIL ON SALE website, and 3.
already had an online booking mechanism for its VAIL ON SALE business. The record also shows that in late 2000
Respondent responded to Complainant’s RFP for web based services, and that
Complainant referred to VAIL ON SALE in the RFP. Paragraph 7 of Complainant’s RFP specifically
refers to the Vail on
“Respondent falsely alleges that Complainant transferred the Domain
Name from Respondent to itself in early 2006 without Respondent’s
knowledge. While Respondent admits that
it “reset” ownership of the Domain Name to itself, it was also Respondent that
in the first place transferred registration of the Domain Name to Complainant
in early 2006. Respondent contrived this
story about Complainant stealing the Domain Name only since Complainant’s
commenced this arbitration action. In
October 2007, a few days before Respondent hijacked the Domain Name, the
parties had email exchanges regarding consolidation of all of Complainant’s
domain names on one domain registrar. By
an email to Respondent dated October 17, 2007, Complainant requested guidance
on how to move all of its domain names, expressly including the Domain Name, to
one domain registrar. The same day
Respondent advised Complainant how to do so and confirms that all those domain
names (including the Domain Name) reside on Complainant’s own account with
Dotster. This evidence controverts
Respondent’s assertion that it had no knowledge that the Domain Name was
registered to Complainant, and is consistent with all other facts and
conclusions established and alleged by Complainant, namely, that the Domain
Name and associated lodging booking business belong to Complainant.
“In Paragraph 3 of its Response, Respondent cites to the November 2002
date of first use claimed in Complainant’s federal trademark registration for
VAIL ON SALE as evidence to refute Complainant’s claim to an earlier date of
first use. It is well established that
dates identified in trademark applications and registrations establish a
rebuttable presumption of the fact they allege. Complainant has presented evidence of an
earlier date of first use to rebut the date of first use originally claimed in
its trademark application. Respondent
has not offered any evidence to further rebut Complainant’s evidence of an
earlier date of first use, and merely reasserts the date designated in
Complainant’s trademark registration.
Since Complainant has provided evidence of an earlier date of first use,
it is not bound by the November 2002 date claimed in its trademark
registration.
“In Paragraph 7 of its Response, Respondent dismisses the significance
of the July 21, 2001 evidence of Complainant’s use of the Domain Name because
Respondent notes that the lodging booking hyperlink embedded in the <vailonsale.com> front page linked to Complainant’s <visitvailvalley.com>
website. This does not, however, negate
Complainant’s active use of the Domain Name at that time, but supports it.
“Based on the undisputed fact that Respondent wrote the lodging booking
program and hosted and maintained Complainant’s VAIL ON SALE website,
Respondent has been attempting to catapult its position as technology vendor to
that of owner of the entire business and Domain Name. In doing so, Respondent does not address
Complainant’s prior use of the VAIL ON SALE name, its federal trademark
registration on the name, its historic and current operation of a lodging
booking business, its historic and current contracts and relationships with the
Vail area lodging vendors, or Respondent’s own need to improperly access
Complainant’s domain account with Dotster.
Although Complainant has only demanded return of the Domain Name and
that Respondent not infringe on Complainant’s trademark and copyrights in the
content on VAIL ON SALE website, Respondent continually thrusted its booking
engine on Complainant in order to pad amounts demanded for return of the Domain
Name. In its Response, Respondent
characterizes a $50,000 demand for transfer of “all rights and property” as a
modest amount. However, the $50,000
demanded was in addition to all lodging commissions through the end of the ski
season (projected to be approximately $15,000).
More importantly, this amount was sought as payment for property that
Complainant neither demanded nor desired (the booking engine), and for property
already belonging to Complainant (the Domain Name and copyrights to data and
content displayed on the VAIL ON SALE website). $50,000 is indeed extortionary when demanded
to return Complainant’s own property.
While Respondent admits in Paragraph 4 of its Response that the text and
graphical content on VAIL ON SALE were contributed and copyrighted by
Complainant, it has no difficultly admitting five paragraphs earlier that it
used Complainant’s copyrighted materials and “rebranded the content already
existing” on its servers. Respondent
does not appear encumbered by the need to remain consistent, operate within the
law, respect property rights of others, or even make any sense.
“Respondent’s own Response demonstrates the impossible conditions under
which Complainant has operated since Respondent hijacked the Domain Name and
used this leverage to extort unearned payments.
In doing so, Respondent continually revised history, told increasingly
implausible stories to justify its theft of the Domain Name, changed its
position, disregarded facts and evidence, and painted itself as them
victim. Through it all Respondent
suffered no harm other than the one it inflicted on itself and on Complainant
and the lodging vendors when it shut down the VAIL ON SALE website in the
middle of the ski season. Respondent’s
position has been consistent only in its incoherence and illegality, and bold
fabrications of untruths that are contradicted by evidence. Conversely, Complainant has lost use of its
Domain Name and corresponding trademark rights, resulting in significant
financial losses and immeasurable damage to Complainant’s goodwill in the VAIL
ON SALE brand. For so long as
Respondent is allowed to unlawfully squat on Complainant’s Domain Name, these
losses and damages will continue to mount.
Accordingly, Complainant requests an expeditious resolution of this
matter so that its ownership of the Domain Name is restored.
“Complainant certifies that it is concurrently with filing of this
additional statement and documents serving a copy of same on Respondent via
email. Complainant further certifies
that the information contained in this Complaint is to the best of
Complainant’s knowledge complete and accurate, that this Complaint is not being
presented for any improper purpose, such as to harass, and that the assertions
in this Complaint are warranted under these Rules and under applicable law, as
it now exists or as it may be extended by a good-faith and reasonable
argument.”
With its additional Submission Respondent stated in response to
Complainant’s additional Submission the following:
“Complainant falsely
claims that Ecomshare transferred registration to the Complainant in early
2006. Ecomshare has never initiated a transfer of ownership of its <vailonsale.com> domain. The Complaint has not provided a
invoice, contract or any legal document showing its purchase of <vailonsale.com>. As has been clearly shown in previous
documents, Ecomshare purchased the domain name on the open market and built the
corresponding booking engine with its own resources. The domain name is an
asset of Ecomshare.
“Ecomshare provided a sub-account within its own Dotster Reseller's
Account to allow the Complainant access to administrative and technical contact
records. Domain records within a single account in most any registrar including
Dotster can each have separate owners. Having an administrative account at
Network Solutions, Dotster, or any other registrar does not determine ownership
of the domains listed within the account. Ecomshare was not aware that the
Complainant had secretly changed the ownership registration of the domain on
October 17th 2007 but discovered it shortly thereafter.
Additionally, there can be little doubt that this Dotster account in question
is being provided by Ecomshare once the login credentials are provided. The
resulting screen and interface is presented in Exhibit J. The account is still
active today should independent verification be desired.
“Ecomshare has never engaged in extortion. Ecomshare has only acted to
retain ownership of its legal property. If extortion has occurred in this case,
it would more likely have occurred on the part of the Complainant who has
withheld commissions due for services provided during the months of February
($8,777.01) and March ($3,940.83) of 2008 apparently in an attempt to starve
Ecomshare into giving up its rightful property. These amounts are shown in the
previously provided Exhibit C. Exhibit C also provides evidence that $50,000 is
merely a projected gross commission amount for the month of March 2008 and can
not be considered exorbitant. Indeed the system had already created close to
$20,000 in commissions by the first week of March when we were forced to shut
it down.
“Despite the Complainant's continued use of words like “hijacking”,
“extortion”, and claims of Ecomshare telling “implausible stories” and
“changing its position”, it is still clear that Ecomshare's original claims are
indeed accurate. Ecomshare purchased <vailonsale.com> with
its own resources and also built a successful booking engine that was managed
and hosted on its own servers for over 5 years. While the Complainant initially
claimed Ecomshare had transferred the domain name from Linda Hill, they've also
claimed they had a contract with Ecomshare to build <vailonsale.com> in
2000, they've also claimed Ecomshare copied content from their servers, they've
also claimed the Complainant's only revenue generating business is <vailonsale.com>, and despite their fervent claims to ongoing
ownership they have admitted to accepting Ecomshare's ownership by offering to
buy <vailonsale.com> and related rights. Again, this is simply a case of a buyer
thinking the selling price is too high and trying instead to force an
acquisition of the seller's property.
“I swear that the documents provided in Exhibit form and the contents of
this document are accurate to the best of my ability and have not been altered
to disguise their true contents.”
FINDINGS AND DISCUSSIONS
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.”
Preliminary Issue: Potential Business Dispute Outside the Scope of the
UDRP
According to Complainant, the <vailonsale.com> domain name was originally registered on
behalf of Complainant by its marketing consultant, Hill & Company, with the
registrar Network Solutions, Inc. on January 15, 2000. Complainant asserts that it used the disputed
domain name for the next five years in accordance with its “Vail on
According to Respondent, it was the original developer
of the <vailonsale.com> domain
name, which it registered on September 5, 2002.
Respondent appears to argue that Complainant originally held the
disputed domain name prior to that time, but used the <vailonsale.com> domain name simply to resolve to a different
domain name. Respondent contends that
registration of the disputed domain name lapsed in 2002, at which point
Respondent registered the <vailonsale.com>
domain name in good faith. Respondent
alleges that it used the disputed domain name in connection with its own
business of providing an online booking engine, and has used it for the same
purposes since. Respondent contends that
it entered into a contract with Complainant to service the “Lodging Quality
Assurance program” in 2000, but this contract never referenced the <vailonsale.com> domain name as
Complainant alleges. On the contrary,
Respondent asserts that it entered into an agreement with Complainant for
Complainant to manage its sales and services on Respondent’s behalf. Respondent contends it was forced to remove
certain content related to Complainant from its website resolving from the <vailonsale.com> domain name on
March 7, 2008, so Respondent subsequently rebranded its services and altered
the corresponding website acordingly to solely reflect its own existing
business.
The Panel determines that the unclear relationship between Complainant and Respondent, as well as the circumstances concerning the registration and use of the <vailonsale.com> domain name, are outside the scope of the UDRP and best left for a court to decide. In this regard the Panel refers to the reasoning stated by the majority panel in Love v. Barnett:
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.
FA 944826 (Nat. Arb. Forum May 14, 2007). The majority panel noted that, in complex cases such as the one presented in Love, the dispute can be examined more thoroughly by a court than a UDRP panel:
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.
Love, FA 944826.
In Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec.
27, 2006), the panel was faced with “issues regarding the rightful possession
of the domain name registration for the <frazierwinery.com> domain name”
pursuant to an alleged agreement between the complainant and the respondent. Consequently, the panel determined that “this
dispute is properly one that arises under state law or common law, but in any
event is outside the scope of the UDRP.”
Based upon the reasoning outlined in Love and Frazier Winery, and the similar circumstances alleged in the
Complaint, the Panel concludes unanimously that the Complaint is comprised of a
business dispute between the parties, and thus falls outside the scope of the
UDRP. As a result, the Panel decides to
dismiss the Complaint. 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 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.”).
Having found that this dispute is outside the scope of the UDRP, the
Panel concludes that relief shall be DENIED.
Accordingly, the Complaint is DISMISSED.
Kendall C. Reed, Terry F. Peppard and
Dr. Reinhard Schanda,
Chair,
as Panelists
Dated: May 7, 2008
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration ForuM