Steven D. Welch c/o Lost Beach, Ltd. v. Internet Realty Investments Exchange, Inc.
Claim Number: FA0902001246221
Complainant is Steven D.
Welch c/o Lost Beach, Ltd. (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lostbeach.com>, registered with Dotster, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 5, 2009; the National Arbitration Forum received a hard copy of the Complaint by facsimile on February 5, 2009.
On February 5, 2009, Dotster, Inc. confirmed by e-mail to the National Arbitration Forum that the <lostbeach.com> domain name is registered with Dotster, Inc. and that the Respondent is the current registrant of the name. Dotster, Inc. has verified that Respondent is bound by the Dotster, 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 February 13, 2009, the National Arbitration Forum notified Complainant of certain deficiencies in its Complaint. On February 16, 2009, Complainant amended its Complaint to address those deficiencies and provided additional documentary evidence, including a screen-capture of the Lost Beach Resort website, proof of lostbeach.com email addresses, and proof of decreased traffic to the domain name in dispute.
On February 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 9, 2009 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.
A timely Response was received and determined to be complete on March 9, 2009.
Complainant submitted an Additional Submission to the National Arbitration Forum on March 12, 2009, which was deemed timely in accordance with the National Arbitration Forum’s Supplemental Rule 7.
Respondent submitted an Additional Submission to the National Arbitration Forum on March 16, 2009, which was deemed timely in accordance with the National Arbitration Forum’s Supplemental Rule 7.
On March 17, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant owns the Lost Beach Resort, a hotel, bar, and restaurant in
Complainant claims that he registered the domain name <lostbeach.com> on April 30, 1995 to advertise the Lost Beach Resort. Complainant also registered the lostbeachresort.com domain name, and appears to have used this domain name for a similar website promoting his resort. Complainant alleges he has maintained a website for the Lost Beach Resort on the site to which these domain names resolve, has paid annual the registration fees, and has used those domain name as the primary consumer information, reservation and contact tool for the Lost Beach Resort since 1995.
At some point, Complainant claims he transferred the domain name <lostbeach.com> to Respondent’s
servers to be hosted, with
At some point thereafter, Complainant, Respondent, and unknown members of Complainant’s family entered into a dispute; Complainant asserts that this dispute has resulted in current litigation.
On January 10, 2009, Respondent changed the content of the website to which the <lostbeach.com> domain name resolves. Respondent deleted all of the content related to the Lost Beach Resort, and posted in its place a message alerting visitors that the website is closed until Spring 2010. Respondent also discontinued Complainant’s access to emails sent to lostbeach.com-related email addresses. Complainant alleges that these steps interfered with Long Beach Resort’s ability to conduct business, and has caused great financial damage to Complainant and to Lost Beach, Ltd.. Complainant provides documentation indicating a 50% decline of global Internet traffic to the Lost Beach Resort websites.
Complainant maintains that neither Respondent nor its owner has any legitimate business interest in the domain name <lostbeach.com>, except that Respondent was hosting the website on his servers and was the administrative contact for the domain name registration. Complainant asserts that Respondent has not been commonly known by the domain name lostbeach.com or any variation thereof. Complainant alleges that Respondent’s purpose in removing the content related to the Lost Beach Resort form the website is to damage Complainant’s hotel business and to seek to assert leverage in the parties’ ongoing dispute.
Respondent is a Jamaican real estate venture, owned by
Respondent concedes it has removed any reference to the Lost Beach Resort from the website to which the <lostbeach.com> domain name resolves. Respondent states that it took such actions to end all business dealings after determining that Complainant and other members of Complainant’s family had stolen money from Respondent.
Respondent contends it has owned the domain name <lostbeach.com> since Respondent’s inception. Respondent has real property holdings in what it categorizes as the “lost beach” area of Jamaica, and states its intention to use the <lostbeach.com> domain name for its own purposes. Responded states that Complainant also owns and uses the domain name <lostbeachresort.com> for the Lost Beach Resort.
Respondent alleges that Complainant promised Respondent twenty percent of gross online revenues in return for permitting Lost Beach Resort exclusive access to the domain name <lostbeach.com>, and that Respondent has not received any payment for any <lostbeach.com> related services.
C. Additional Submissions
Complainant’s Additional Submissions
Complainant reargues that he has used the <lostbeach.com> domain name for the Lost Beach Resort for over a decade, and claims Respondent has acquiesced to Complainant’s use without consideration for that time. Complainant argues that the term of use and Respondent’s acquiescence establish a trademark in Complainant’s favor.
Complainant disagrees with Respondent’s claim of ownership, and insists
that Complainant registered both the <lostbeach.com>
domain names. Complainant states that he
began using the <lostbeachresort.com>
domain name only after January 2009 when Respondent removed the Lost Beach
Resort website from the <lostbeach.com>
domain name. Complainant also challenges
Respondent’s claimed intention to use to domain name for his own property, arguing
that Respondent’s real estate holdings in
Complainant disputes the existence of any contract with Respondent with regard to profit sharing or payment, although agrees that Respondent has not received any payment for hosting the <lostbeach.com> domain name. Complainant asserts that no payment arrangements were ever established, orally or in writing, and notes that Respondent provides no proof of such agreement. Complainant states that the services were provided at no cost within the family relationship, and that similar services were provided to Respondent without cost.
Respondent’s Additional Submissions
Respondent responds to Complainant’s allegation of ownership, reiterating its ownership interest in the <lostbeach.com> domain name and insisting that at no time did Complainant register, own, or control the domain name. Respondent states that Respondent, not Complainant, registered the domain name on April 30, 1995.
Respondent responds that its ownership interest in Jamaican properties are
in the “lost beach” area, and notes that some of Respondent’s real property
interests are currently in dispute with Complainant in
FINDINGS AND DISCUSSION
As an initial matter, the Panel must first determine whether to accept the parties’ supplemental submissions.
Although the National Arbitration Forum’s Supplemental
Rules provide a mechanism for filing Supplemental Submissions, the National
Arbitration Forum’s Supplemental Rule 7 is subject to ICANN Rules and Policy,
which grants the Panel the sole discretion to accept a supplemental
submission. See Elec. Commerce Media, Inc. v.
To the extent Complainant’s Supplemental Submission discusses issues it
should have anticipated in its Complaint, those
aspects of the Supplemental Submission will be disregarded. Bar Products.com, Inc. v. RegisterFly.com, FA 829161 (Nat. Arb. Forum Jan. 9, 2007). Here, however, there are aspects of
Complainant’s Supplemental Submission that could not have been addressed in the
Complaint. For example, in its response,
Respondent alleges the existence of a contract between Complainant and
Respondent for the hosting of Complainant’s website, and alleges Complainant’s
failure to pay pursuant to that agreement.
Because Complainant, who contests the existence of any contract, could
not have anticipated that Respondent would assert the existence of this
contract in his initial Response, Complainant is entitled to submit a further
submission addressing Respondent’s allegations.
Similarly, as Complainant alleges that Respondent’s real estate holdings
were outside of the “lost beach” area of Jamaica, there was no reason for
Complainant to address Respondent’s claim of real estate ownership in the “lost
beach” area prior to the receipt of Respondent’s answer. Accordingly, the Panel will accept
Complainant’s Supplemental Submission to the extent it addresses these
issues. In the interest of
fairness, and in recognition of the obligations imposed by Rule 10(b), the
Panel deems it appropriate to allow Respondent an opportunity to respond to
these aspects of Complainant’s Supplemental Submission, and thus the Panel will
accept Respondent’s Supplemental Submission to the extent it addresses these
Turning to the merits of this dispute, Paragraph 15(a) of 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.” As the parties’ contentions above make clear, there are a number of allegations of wrongdoing concerning the domain name <lostbeach.com>. However, the allegations in this case are better categorized as a contract dispute between two parties, whose business and personal relationship soured, rather than as a typical cybersquatting case.
This Panel is empowered to adjudicate disputes over the abusive
registration and use of an Internet domain name. This Panel and the Uniform Domain Name
Dispute Resolution Policy (“UDRP”) are not designed to adjudicate all disputes
of any kind that relate in any way to domain names. Although Complainant does alleges certain
facts that might support a claim that Respondent has cybersquatted the <lostbeach.com> domain name, the primary
quarrel between these parties is a contractual dispute related to the registration,
hosting, and use of the disputed domain name.
That, however, is not a dispute this Panel can address; resolution of
the business dispute will have to proceed in a more appropriate forum, with
jurisdiction over both the parties and the subject matter of that dispute. Thread.com, LLC v. Poploff,
D2000-1470 (WIPO Jan. 5, 2001); Love
This Panel, then, must limit its consideration to the allegations of cybersquatting, specifically those that are designed to meet the factors required by the Policy: (1) that Complainant demonstrate that the domain name is identical or confusingly similar to a mark in which the Complainant has rights, (2) that Respondent does not have rights or legitimate interests in the domain name, and (3) that Respondent registered and is using the domain name in bad faith. With respect to that third factor, it is well established that, to succeed in a UDRP proceeding, a complainant has the burden to prove both bad faith registration and bad faith use. See E-Duction, Inc. v. Zuccarini, D2000-1369 (WIPO Feb. 5, 2001).
On the record of this case, the Panel is compelled to conclude that Complainant has failed to prove bad faith registration. Complainant alleges that he registered the contested domain name in 1995, and at some point transferred the domain name to Respondent to facilitate hosting of his website. If this is true, there can be no argument of bad faith registration, as the Complainant concedes that he willingly transferred the name to Respondent. By contrast, Respondent alleges that it registered the <lostbeach.com> domain name in 1995. If that is true, it was, presumably, with the Complainant’s consent at the time, since the Complainant admits that Respondent was hosting the domain name with his consent. Thus, either way, when Respondent acquired the domain name, it was with the Complainant’s consent, and thus the registration cannot have been in bad faith.
Complainant cogently alleges that Respondent subsequently engaged in bad faith use of the domain name. Although those allegations, if true, may be sufficient to show bad faith under the Anti-Cybersquatting Consumer Protection Act (“ACPA”), they are insufficient under the Policy, which requires both bad faith registration and bad faith use.
Because the Complainant has failed to meet its burden under Paragraph 4(a)(iii) to establish bad faith, the Panel need not consider whether the domain name is identical or confusingly similar to a trademark in which the Complainant has rights or whether the Respondent has rights or legitimate interests in the disputed domain name. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (because complainant must prove all three elements under the Policy, complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
The Panel emphasizes that this decision should not be viewed as a vindication of either parties’ position. Whether Complainant transferred the contested domain name to be hosted, whether there was an implied contract for hosting the website, whether there was a contract for payment in return, whether Respondent has an interest in the “lost beach” domain name, whether Respondent was within its right to deactivate Complainant’s website as a way of pressuring Complainant’s family members in an unrelated lawsuit, and whether Respondent’s conduct constitutes bad faith use of the domain name, all are issues that will have to be addressed in another forum.
For the foregoing reasons, the Panel DENIES the Complaint.
Dated: March 31, 2009
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National Arbitration Forum
 Complainant alleges that this forum is the only available forum to resolve this dispute because he is unable to obtain personal jurisdiction over the Respondent. Whether that is true or not, it cannot vest this Panel with jurisdiction to hear a dispute that is not otherwise within the proper jurisdiction of the Panel. In any event, even if it is true that Complainant cannot obtain personal jurisdiction over Respondent, that would not prevent Complainant from filing a claim under the in rem provisions of the ACPA.