SBBnet, Inc. v. Mark Rodriguez d/b/a GreenMarket Ventures, LLC
Claim Number: FA0902001248881
Complainant is SBBnet, Inc. (“Complainant”), represented by Russell
A. Straub, of SBBnet Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cleanenergyquotes.com>, registered with Domaindiscover.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
A timely Response was received and determined to be complete on
Complainant submitted an Additional Submission on
Respondent submitted an Additional Submission on April 3, 2009, which was determined to be timely and in compliance with Supplemental Rule 7.
All submissions by the parties were considered.
On March 31, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The domain name is identical to a name which Respondent was asked to
register to serve his employer, Complainant. The website which used the domain name in
question was hosted and paid for by Complainant, as well as referencing the
The domain name CleanEnergyQuotes.com is used in an internet based solar energy comparison shopping service for consumers seeking to be matched with service providers and installers of solar and clean energy products and solutions. The content of the website and operations of the service were created by employees of SBBnet, Inc. on behalf of SBBnet, Inc.
Complainant has named the Respondent in this complaint as Mark Rodriguez, an individual (sole proprietor) doing business under the fictitious business name of GreenMarket Ventures, LLC. ICANN Rule 3(b)(v) states that the Complainant must provide the name of the domain name holder as Respondent according to the Whois record. GreenMarket Ventures, LLC is the legal, registered holder of the domain name as a sole and separate legal entity.
SBBnet, Inc. (“SBBnet”) owns and operates LoanBright.com (“Loanbright”), a provider of lead generation services to the mortgage industry. Mark Rodriguez is an investor and a shareholder of SBBnet, Inc. and was an employee of Loanbright from August 2002 through January 2009.
On March 12, 2008, LoanBright sent Mr. Rodriguez a letter formally terminating Mr. Rodriguez’s employment agreement with SBBnet, Inc. Mr. Rodriguez resigned his employment with Loanbright effective January 30, 2009.
In late August 2008, Mr. Rodriguez conceived an idea for creating a business that would provide web-based tools and content to consumers seeking competitive quotes for solar and clean energy solutions for their home or business. Mr. Rodriguez began to develop this idea and concept independently and completely outside the scope of any employment agreement.
On August 26, 2008 Respondent registered the CleanEnergyQuotes.com domain name in preparation with a bona fide offering of goods and services. Neither party ever intended for the domain name to be registered or held in the name of SBBnet, inc. and Complainant has provided no evidence to the contrary.
CleanEnergyQuotes.com was registered using the Domain Discover account of Respondent’s LLC and the domain name registration fee was paid for using the Visa debit card that is associated with that account. Respondent created the CleanEnergyQuotes.com website using Homestead Site Builder software it licensed for its own use, at its own expense.
On August 29, 2008 Mr. Rodriguez formed GreenMarket Ventures, LLC to provide insulation from any legal liability that could arise as a result of owning and operating CleanEnergyQuotes.com. GreenMarket Ventures, LLC, as a separate legal entity, is the registered holder of the domain.
Complainant has not shown any evidence that it has established any rights in the CleanEnergyQuotes.com trademark.
Respondent has clearly established its rights to the trademark and
domain name through its use of the names CleanEnergyQuotes.com and Clean Energy
Quotes in commerce beginning on August 31, 2008 – as well as through
registration of both the trade name and trademark ID Number 20081552357 with
the State of
GreenMarket Ventures, LLC began operation of its Internet business using the names “CleanEnergyQuotes.com” and “Clean Energy Quotes” on August 31, 2008 and thereby established its rights in the trademark.
On February 1, 2009 Mark Barlow of SBBnet Inc. sent an email to Mr. Rodriguez asking him to make other arrangements for hosting and email for CleanEnergyQuotes.com. This email is a clear acknowledgement by Complainant of the Respondent’s rights to the domain name.
Complainant has taken actions to harass Respondent, interfere with Respondent’s business relationships and disrupt Respondent’s business.
Complainant is attempting to Reverse Hijack the Respondent’s Domain Name.
Complainant filed a Civil Complaint on February 27, 2009 in the District Court of Jefferson County, Colorado. The Complainant claims in the Civil Complaint that Respondent “…converted a website domain name filed during his employment…”, thereby making ownership of the domain name inextricably related to the issues in that case. In light of a pending legal proceeding “relating to” the domain name that is the subject of the complaint, Respondent requests that this proceeding be dismissed. ICANN Rule 5(b)(vi).
C. Additional Submissions
The naming of Respondent was corrected pursuant to the Forum’s request.
Mark Rodriguez was an employee of LoanBright, which is a dba of SBBnet, Inc.
Attached to the Response are a number of emails and instant messages between Respondent and SBBnet co-workers evidencing the collaborative selection of the CleanEnergyQuotes.Com domain name, on behalf of SBBnet, and the assembly of the solar energy lead product, on behalf of SBBnet.
On August 26, 2008 Respondent registered the CleanEnergyQuotes.com domain name in response to a telephone conversation between Complainant and Respondent on August 25th.
Complainant has provided evidence that Respondent did not “use its own time and resources to take specific actions in preparation to use the domain name in commerce.”
The CleanEnergyQuotes.com business was created by Mark Rodriquez who proposed a joint venture between Mr. Rodriquez, Mark Barlow and Russell Straub.
Significant Resources that were independent from SBBnet were used for the CleanEnergyQuotes.com business.
Complainant and Respondent are embroiled in a significant business
dispute. Complainant has even filed a
lawsuit against Mr. Rodriguez in
It is undisputed that at the time Mr. Rodriguez registered the disputed domain name, he did so in good faith in preparation to establishing a business. Even by Complainant’s own evidence, Mr. Rodriguez has at least some rights in the disputed domain name.
Because Complainant has not provided evidence, much less proven that Respondent has no legitimate interest in the domain name or that Respondent registered the domain name in bad faith, to the extent the Forum decides this case, Respondent must prevail.
For the reasons set forth below, the Panel finds that the relief requested should be denied.
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.
The Panel finds that Complainant has not made a prima facie showing of common law rights
in the CLEANENERGYQUOTES.COM mark pursuant to Policy ¶ 4(a)(i) because it
determines that insufficient secondary meaning has been shown. See Kip Cashmore v. URLPro, D2004-1023 (WIPO
Complainant has not proven this element.
that Complainant has no rights in the CLEANENERGYQUOTES.COM mark because the
website resolving from the <cleanenergyquotes.com>
domain name was conceived and created by Respondent. Respondent asserts that he developed the
concept and content for the disputed domain name while he was an
employee for Complainant, but not as part of his employment at Complainant’s
company. Respondent argues that the
disputed domain name is part of a venture independent of his employment with
Complainant and Respondent has developed and funded the disputed domain name on
his own. Moreover, Respondent asserts
rights in the CLEANENERGYQUOTES.COM mark via its registration of the mark with
Complainant has not proven this element.
Respondent agrees that the <cleanenergyquotes.com> domain name was created while working for
Complainant, but denies that it was at Complainant’s direction. The Panel finds that Respondent has
not registered or used the <cleanenergyquotes.com> domain name in bad faith. The Panel finds that Respondent has not
violated any of the factors listed in Policy ¶ 4(b) or engaged in any other
conduct that would constitute bad faith registration and use pursuant to Policy
¶ 4(a)(iii). See
Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916
The purpose of the Forum is to provide remedies in cases of abusive
registration of domain names, also known as cybersquatting. The UDRP “establishes a streamlined,
inexpensive administrative dispute-resolution procedure intended only for the
relatively narrow class of cases of abusive registrations.” ICANN
Second Staff Report on Implementation Documents for the Uniform Dispute
Resolution Policy, October 24, 1999, www.icann.org/enudrp/udrp-second-staff-report-24oct99.htm,
at paragraph 4.1(c). It “does not extend
to cases where a registered domain name is subject to a legitimate dispute.”
The Forum has determined that
certain issues are outside the scope of the UDRP and thus are to be resolved in
courts of law. For instance, panels have
held contractual disputes, trademark infringement, employer/employee disputes,
breaches of fiduciary duties, and other business disputes are issues that
exceed the scope of the UDRP. Discover
Given the nature of UDRP
proceedings and the inability of the parties to fully litigate allegations of
breach of fiduciary duty, breach of contact and the original rightful ownership
of the domain name, Complainant has not proven that
the domain name had been registered and is being used in bad faith. Because of issues involved, Claimant’s claim
to ownership of the domain name should be brought in an appropriate court. See Document
Technologies, Inc. v. International Electronic Communications Inc., Case
No. D2000-0270 (WIPO
Complainant has not proven this element.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <cleanenergyquotes.com> domain name remain with Respondent.
Karl V. Fink, Panelist
Dated: April 24, 2009
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