EarPeace Technologies Inc. v. Earl Neal
Claim Number: FA0905001261524
Complainant is EarPeace Technologies Inc. (“Complainant”), represented by Steven
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <livewiresforyou.com>, registered with Godaddy.com, 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.
Dr. Reinhard Schanda as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 7, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 7, 2009.
On May 7, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <livewiresforyou.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. 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 May 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 1, 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 email@example.com by e-mail.
A Response was received and determined to be complete on June 1, 2009. However because this Response was not received in hard copy the National Arbitration Forum does not consider this Response to be in compliance with ICANN Rule 5.
Complainant submitted an Additional Submission to the National Arbitration Forum on June 9, 2009, which was determined to be deficient.
Respondent submitted an Additional Submission to the National Arbitration Forum on June 11, 2009, which was deemed timely in accordance with the National Arbitration Forum’s Supplemental Rule 7.
On June 5, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that on
Complainant began selling custom fit earphones under the trademark LIVEWIRES to artists across the music industry and users of portable music players. The earphones gradually became very popular industry-wide. Complainant emphasized the personalized attention it gave to each individual customer and placing orders for LivesWires by making ear impressions of individual’s ears and coordinating ear impression services by audiologists around the world, to provide them with custom-fitted earphones.
By 2009, Complainant was grossing approximately $500,00.00 in annual revenue from the sale of its LiveWires earphones. Members of major music bands in the recording industry began using Complainant’s LiveWires, including members of the band of Toby Keith, Steely Dan, Kenny Rogers, Sara Evans, Mark Wills, Aerosmith, Stevie Nicks, Black Sabbath, and Christina Aguilera, as well as major network reality shows, such as American Idol, Jimmy Kimmel and Dancing With the Stars. Additionally, Complainant also sold products to other organizations with noise-canceling needs such as the U.S. Navy. Many members of the bands using LiveWires formally endorsed the LiveWires product in Complainant promotional materials.
Complainant began to establish distributorships, or authorized
dealerships, across the
From June 2007 through February 2009, Complainant continuously marketed its products online using the Mark LIVEWIRES via the Disputed Domain <livewiresforyou.com>.
Complainant spent thousands of dollars establishing and promoting its business via the Disputed Domain using the Mark LIVEWIRES and LIVEWIRES FOR YOU. In addition to its capital expenditures, Complainant spent countless man hours procuring links from other websites and engaged in search engine optimization. LIVEWIRES FOR YOU, like the Mark LIVEWIRES, became distinctive and well-known throughout the music industry. Complainant established client relationships with aforementioned major figures in the music industry, including the members of the band of Toby Keith, Steely Dan, Mark Wills, Black Sabbath, and Christina Aguilera, as well as major network reality shows and other governmental organizations, including as American Idol and the U.S. Navy. Complainant also provided numerous complimentary sets of Livewires earphones to journalists for online reviews at prominent technical web sites such as cnet.com, about.com, and macnn.com.
From 1996 through 2007, thousands of unique visitors visited Disputed Domain. Individuals and other entities have come to recognize Complainant’s Mark as the distinctive identifier that it is. The Mark is well-known throughout the music industry and associated with Complainant.
On February 21, 2009, Complainant applied for federal trademark protection with U.S. Trademark Office (USTO) on the mark LIVEWIRES under Serial No. 77675288.
Complainant has common-law rights in the Mark LIVEWIRES, as well and in the similar mark LIVEWIRES FOR YOU because, inter alia, it has been using these marks in connection with an Internet based earphone retail business since 2007, and a brick and mortar based retail business since 2004. Complainant has generated hundreds of thousands of dollars of revenue using LIVEWIRES and LIVEWIRES FOR YOU, published numerous brochures using both marks filed for trademark protection with the USPTO, established distributorships and become well-recognized across the industry by major artists and consumers of earphones.
Respondent has also, in fact, acknowledged Complainant’s common law trademark rights on the notice he is currently displaying to all traffic visiting the Disputed Domain reading “Due to irreconcilable difference, In Ear Systems Inc. (TN) has found it necessary to separate itself from Ear Peace Technologies, Inc. (CA) and from the product name LiveWires.” Respondent’s recognition of its non-right in the “product name LiveWires” is a recognition of Complainant’s common law rights in the Mark.
The Mark has become famous, and Complainant had acquired secondary meaning in it for all of the aforesaid reasons before the time Respondent effectively registered it for his own use.
EarPeace technologies began shipping LivesWires to Respondent Earl Neal
in Summer 2007 for resale in
Like other distributors, Respondent was authorized to distribute LiveWires because a previous relationship of trust he had established with Complainant’s CEO, John Diles, While most authorized dealers where wholesaled LiveWires at a wholesale price of $200/unit, Respondent was authorized to purchase LiveWire earphones for $180/unit in exchange for establishing, designing and maintaining the website resolving from <livewiresforyou.com>. Respondent claimed to have knowledge of web design, and the management of the Company website was entrusted to him. This discounted price was made available to respondent for as long of Respondent continued to manage the Company website so that the Company did not have to find a third-party graphic design artist and programmer. Complainant frequently remitted payment to Respondent for commissions.
The Disputed Domain was registered by Respondent on February 3, 2007.
In March 2009, Respondent’s wife, Catherine Neal, became involved in her husband’s distributorship and a national toll-free number was installed without permission of Complainant Catherine Neal began making demands of, and grievances against, the Complainant; complaining that LiveWires were shipping too slow, and telling inquiring EarPeace customers from around the world that they would be better served by directing orders to their distributorship. Catherine began directing the Company’s customers to a new company Respondent was establishing.
The Disputed Domain was in the control of Complainant for two years before being misappropriated and re-registered by Respondent for use by a competing corporation. Respondent has posted the aforementioned Notice on the currently resolving website reading:
Due to irreconcilable differences, In Ear Systems, Inc. (TN) has found it necessary to separate itself from EarPeace Technologies, Inc. (CA), and from the product name LiveWires.
As always, In Ear Systems, Inc. will continue to provide the exceptional products and customer service that you have come to know and appreciate.
We will continue manufacturing our high quality custom in-ear headphones, but under the name – “Fidelity Custom Earphones”.
Our manufacturer is still the original manufacturer that we have always used since the inception of the LiveWires product. Our price point will be $259.00 for Fidelity Duals (Originally LiveWires) and $379.00 for Fidelity Triples. Both products will include a Pelican 1010 case, which will provide better protection for your product, but will cause a $10 increase in price for the Fidelity Duals.
Please remember that if you are a current LiveWires owner, and you purchased your product from In Ear Systems, Inc., we will still maintain our current customer service and your warranty is still valid.
We encourage you, our clients, to recommend us to your friends, family and anyone else that you find looking for in-ear products. We look forward to serving all your In-Ear Headphone needs.
Thank you for your continued support,
In Ear Systems, Inc.
Please Click Here to be linked to our new product site.
In Ear Systems, Inc.
Respondent’s acknowledgement that he must separate himself from the “product name LiveWires,” is an admission that Respondent does not have trademark rights in that Mark, which admission Respondent makes while intentionally attempting to redirect Complainant’s customers to the new corporation Respondent has created for the purpose of competing with Complainant.
In an exchange with another of complainant’s authorized dealers, Respondent affirms that he hijacked the Disputed Domain because Complainant’s shipping was “slow” and that he was unhappy with Complainant’s customer service, not because he had any legitimate rights in the Disputed Domain. If third-parties on the Internet were able to Hijack the domain names of businesses whose customer service policies they didn’t like, then escape liability under the UDRP, the Policy would be a shallow policy indeed.
Respondent asks visitors in the Notice to the site to “Please Click Here to be linked to our new product site.” Respondent has posted this notice only for the purpose of confusing Complainant’s customers and redirecting them to Respondent’s website, which establishes bad-faith registration.
Complainant had no knowledge that Respondent has registered the Disputed Domain in this own name rather than Complainant’s, as Respondent was Complainant’s web designer, web hoster, and programmer entrusted as fiduciary with Complainant’s intellectual property.
According to Complainant this dispute is properly within the scope of the UDRP.
Confusing similarity is self-manifest. The Disputed Domain, including its gTLD, is not only identical to, but whole encompass the mark LIVEWIRES and the mark LIVEWIRES FOR YOU upon which Complainant has pending federal trademark registration and used online since the Disputed Domain was created. The Disputed Domain encompasses, and is, the very domain name and Mark in which Complainant claims common-law trademark rights. Even if the gTLD differed, the Panel considers this to be irrelevant to its Policy ¶ 4(a)(i) analysis.
Respondent’s notice on the resolving website is calculated to create confusion on the part of Complainant’s customers. Respondent represents that, “As always, In Ear Systems, Inc. will continue to provide the exceptional products and customer service that you have come to know and appreciate” despite the fact that Respondent’s corporation In Ear Systems, Inc. never even existed during the two year period before and distributed nothing. Respondent’s corporation was not organized until February 2009, only days before Respondent seized the Disputed Domain. The Notice is a dishonest attempt to intentionally confuse Complainant’s customers by creating the impression that Respondent’s corporation was the entity with whom customers had been dealing.
Additionally, Complainant continues to receive almost daily calls from customers who cannot find Complainant’s domain name and are confused by the website to which the Disputed Domain is currently resolving.
By Respondent’s own admission, he is benefiting greatly from traffic intended for Complainant.
According to Complainant Respondent has no rights or legitimate interest in the Disputed Domain as Respondent has unlawfully registered the disputed Domain in bad-faith by fraudulently transferring it from the Company for whom he designed it and which Respondent affirms has rights in the “product name LiveWies.” Respondent admits expressly he was aware of Complainant’s rights, as was hired to manage the Disputed Domain and its website for the Complainant.
Respondent has now, by his own express admission in the Notice, taken the Disputed Domain for the purpose of redirecting EarPeace customers to Respondent’s competing website, and has acknowledged that his “sales have tripled” as a result of his fraudulent transfer.
Whatever revenue Respondent is deriving from the website is illegitimate as it is intended for Complainant. In accordance with Paragraph 4 of the Policy, Respondent was not using the Disputed Domain before being made aware of the dispute and Respondent’s use now is illegitimate as he knew it at the time he fraudulently transferred it and recognizes Complainant’s rights in it in his notice.
Respondent knew of the many third-party links to the Disputed Domain across the Internet, and the many customers of Complainant who visited the Disputed Domain. Respondent is intentionally attempting to divert Internet users to its website via the Disputed Domain for its own commercial gain and is therefore not making legitimate noncommercial, or fair use of the Disputed Domain pursuant to Policy ¶ 4I(iii).
Respondent contends that prior to March 2009 the pending trademark did not exist and Respondent was in partnership with Complainant and production of the LiveWires in-ear Product.
Respondent, Earl Neal, was a partner and continues to be co-developer of the LiveWires product. He was not just an “authorized dealer” as stated by the Complainant. His own website states “together with Earl Neal co-developed LiveWires”.
The name LiveWires was established by Respondent. The logo, all artwork associated with the website and the product belongs solely to the Respondent. Respondent designed the brochures, hats, etc. and all marketing materials prior March 2009.
Complainant is a forfeited corporation in
Every fee for the domain and its hosting has fallen on Respondent. Respondent is/was a partner and is still the co-developer of the product.
Respondent registered the domain name <www.livewiresforyou.com> and <www.livewires4u.com> on
If you asked anyone in the music industry who one of the main persons behind LiveWires is, they will tell you Respondent, as can be noted from web postings. Respondent is considered one of the most prominent monitor engineers in the music industry, has won awards from his industry peers and is very well respected.
In the past Respondent has been gainfully employed by Toby Keith (current), Sara Evans, Aerosmith, and Mark Wills and many others.
The domain is currently resolving to the same address it always has: <www.livewiresforyou.com>. It has not been forwarded to resolve elsewhere, ever.
The domain name has been registered to Respondent, since the inception of the name LiveWires. Respondent did not, transfer the domain name. Respondent is/was a partner and continues to be listed as co-developer of the product. It is not now nor has it ever been used in bad faith. The notice posted on the disputed domain was in protection of our company and Respondents reputation in the music industry, that has been and continues to be sullied by the Complainant as demonstrated in emails from clients. Please note that all emails were forwarded to John Diles (firstname.lastname@example.org). And by web postings on <www.Head-Fi.org>. Respondent also contacted John T Brookes (Officer of EarPeace) about the problems with EarPeace.
The domain name has been registered to Respondent since the inception of the name LiveWires. Respondent did not, transfer the domain name. Respondent is/was a partner and continues to be listed as co-developer of the product. The domain name does not auto-redirect. Visitors have a choice whether or not to go to another website. Respondent is not and has not ever attempted to sell the domain.
Respondent was not aware of any trademark for the name “livewires” until this filing. As has been stated before, this domain has been registered to Respondent since February 3, 2007. The trademark application by EarPeace was made February 2009.
Respondent has never had a domain dispute prior to this one. This domain was registered to promote the product that Respondent co-developed.
In its Additional Submission dated June 9, 2009 Complainant declared the following:
“Respondent claims that at no time has he used the Disputed Domain for anything other marketing LiveWires, despite the fact Respondent is now using the Disputed Domain to forward LiveWires’ traffic to a competing website Respondent has established.
Respondent has no stock in Ear Peace Technologies, and has never had any. Ear Peace Technologies is corporation, not a partnership. Although Respondent tried to negotiate to purchase stock in Ear Peace Technologies before fraudulently transferring its domain name, such a transaction was never consummated, and Respondent has provided no evidence of any shareholder interest.
Respondent never bore any of the costs of developing LiveWires, and was given discounted purchase rates on LiveWire products in consideration of the development work Respondent did on Ear Peace Technologies’ website – which Respondent has hijacked.
The only reason Respondent has been able to find two pieces of literature claiming he was a “co-developer” of the LiveWires product is because both documents are documents the Respondent drafted himself, which were duplicated after Respondent penned them. This statement is simply a duplicated allegation of the Respondent, not the Complainant.”
In its Additional Submission dated June 11, 2009, Respondent declared the following:
“Respondent registered the domain name <www.livewiresforyou.com> and <www.livewires4u.com>
Again, as stated before, Respondent is not and has never claimed to be an officer or stockholder in EarPeace Technologies. Respondent has never tried to purchase “stock” in EarPeace Technologies. However, Respondent was a co-developer of the product LiveWires, which until March of this year, was being co-produced by Respondent’s corporation and EarPeace Technologies. Respondent was never just an “authorized distributor” of the product, and believes that if that were the case, EarPeace would have tried before now to remove Respondent from handling the website if their allegations were true.
Respondent did not write the background information on Complainant. Art Roose, an employee of EarPeace Technologies wrote it.”
FINDINGS AND DISCUSSION
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.”
Although Respondent has provided a Response that was deficient because a hard copy of the Response was not received before the Response deadline, the Panel decides to consider Respondent’s submission. See Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process. . . ."); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”). Likewise the Panel has chosen to consider Complainant’s and Respondent’s Additional Submissions.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
Complainant asserts that Respondent was its web designer and an authorized dealer of its product, custom-molded ear buds. Complainant alleges that on February 20, 2009, Respondent “fraudulently transferred and effectively re-registered” the <livewiresforyou.com> domain name, coverting it for Respondent’s own use. Complainant further alleges that Respondent has started its own company and is using his position as Complainant’s former web designer to redirect Complainant’s customers to Respondent’s new business.
Respondent asserts that it was not an employee or authorized dealer for Complainant, but business partners in developing the custom-made ear bud business. Respondent argues that the LIVEWIRES mark was thought of while Respondent and Complainant’s CEO, John Diles, were at dinner with members of country music entertainer Toby Keith’s band and crew. Additionally, Respondent argues that the company’s sales to music industry celebrities were due to his contacts as a long-term sound engineer in the music industry.
In this instance, the Panel finds that this is a business and/or contractual dispute between two companies that falls outside the scope of the UDRP. In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel stated:
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.
In Love, the panel was concerned with possible causes of action for breach of contract. According to the panel in Love, complex cases such as the one presented here may be better decided by the courts than by 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.
The panel in Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning:
[The Policy’s purpose is 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.
Based upon the reasoning outlined in the aforementioned cases and the record, the Panel concludes that the instant dispute contains a question of contractual interpretation, and thus falls outside the scope of the UDRP. 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.”); 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).
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.
Dr. Reinhard Schanda,
Dated: June 23, 2009
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