Correct Craft, Inc. v. SouthEast Correct Craft
Claim Number: FA0810001231091
Complainant is Correct Craft, Inc., represented by Bridget
Heffernan Labutta, of Allen, Dyer, Doppelt, Milbrath &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <southeastcorrectcraft.com>, registered with Network Solutions, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 27, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 27, 2008.
On October 27, 2008, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <southeastcorrectcraft.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that 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 October 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 18, 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 by e-mail.
On November 17, 2008, a Request for Extension of Time to Respond to Complaint without Complainant’s Consent was received by the National Arbitration Forum. The Request was granted and the new deadline by which Respondent could file a Response to the Complainant was set for November 25, 2008.
A timely Response was received and determined to be complete on November 24, 2008.
Both parties made timely Additional Submissions, which were in compliance with Supplemental Rule 7.
On December 3, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts trademark rights and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent used the disputed domain name in bad faith.
Respondent denies it acted in bad faith and argues that it has a legitimate interest in the domain name.
Respondent further submits that the Complaint is outside the mandate given to the Panel under the Policy.
C. Additional Submissions
Both parties made Additional Submissions which have been read and taken into account by the Panel.
1. Both parties are in the leisure boating business.
located in close proximity to each other in
3. The Complainant’s business was established in 1925 by the grandfather of the principal of Respondent’s business.
has authorized dealers for its boats and accessories located throughout the
5. Respondent was a part of that dealership network, owning and operating a business under the name Southeast Correct Craft since 1972.
6. Nonetheless, during the entire period, Respondent sold and serviced other brands and types of boats.
7. Respondent’s business relationship with Complainant terminated earlier in 2008, but in controversial circumstances.
8. Respondent had registered the domain name in 2000 and had used the disputed domain name in connection with its business with Complainant’s knowledge and without objection from Complainant.
9. Complainant recently demanded transfer of the disputed domain name and Respondent declined to do so.
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.
Based on the assertions of both parties, the Panel is satisfied that this is not a case of cybersquatting, but rather a business dispute arising from which there is a question concerning the rightful use of the disputed domain name. Accordingly, the matter which first calls for consideration is whether the Complaint falls outside the scope of the Policy.
In 1999, the World Intellectual Property Organisation (“WIPO”) produced a report in which it noted that good faith disputes between competing right holders or other competing legitimate interests over whether two names were misleadingly similar would not fall within the scope of the UDRP.
Previous panels have found that disputes between employers and employees are outside the scope of the Policy and should be decided in a court of law. For example, in Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000), the panel held that a dispute concerning an employee’s registration of a domain name in his own name and his subsequent refusal to transfer it to his employer raised issues of breach of contract and breach of fiduciary duty that were more appropriately resolved in court, not before a UDRP panel. Whilst the present facts involve a dispute between (former) business partners, the case might nonetheless be seen as analogous to the Latent Tech. Group, Inc. case.
The circumstances of Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001), are closer to the current dispute. There the panel refused to transfer the domain name, stating that the Policy did not apply because attempting “to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy.”
In Luvilon Indus. 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.
In that case the panel did however go on to apply the Policy but held that the complainant had not discharged the onus in relation to the second element of Paragraph 4(a); it had failed to make out a prima facie case that the respondent lacked rights or legitimate interests in the domain name.
Again, in Draw-Tite,
This Panel well recognizes that its jurisdiction is limited to providing a remedy in cases of “the abusive registration of domain names,” or “Cybersquatting.” . . . Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.[i]
In the present case, the Panel can see no evidence to suggest that, some eight years prior to the Complaint, Respondent registered the domain name in bad faith. Nor for that matter is bad faith registration asserted by Complainant.[ii] Moreover, the Panel is dissatisfied with Complainant’s assertion that Respondent has no rights or a legitimate interest in the domain name and believes that issue is best left to a court or other forum with greater inquisitive powers.[iii] On balance, the Panel considers that there is ample weight in prior UDRP decisions to justify its finding that the matter is properly one for another forum.
Having decided that the Complaint is not properly within the scope of the ICANN Policy, the Panel concludes that relief shall be DENIED.
Debrett Gordon Lyons, Panelist
Dated: December 15, 2008
[i] The Panel notes other similar decisions. See, for example, 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.”); 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.”); 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).
[ii] The Panel notes that Complainant alleged bad faith under Paragraph 4(b)(iv) of the Policy, namely, that “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on‑line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” The Panel is conscious that Paragraphs 4(b)(i)-(iv) are each given as examples of registration and use in bad faith and that Paragraph 4(b)(iv) is unique in targeting use, rather than registration. Nonetheless, it is open to the Panel to regard Paragraph 4(b)(iv) as having not been established where there is clearly no evidence of bad faith registration.
[iii] Amongst other inconsistencies, Complainant alleges that Respondent has no rights or legitimate interests because it is not commonly known by the name Southeast Correct Craft, however in its own supporting evidence, the declaratory statement of Angela Pilkington, Vice President of Complainant, Ms. Pilkington declares that since about 1972, Walt Meloon has operated a dealership under the name Southeast Correct Craft Inc. Moreover, Respondent provided evidence that it has been known by the business name “SouthEast Correct Craft,” for decades in association with its offering of boats, boat parts, maintenance, and financing.
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