EarPeace Technologies Inc.
v. Earl Neal
Claim Number: FA0905001261524
PARTIES
Complainant is EarPeace Technologies Inc. (“Complainant”), represented by Steven
L.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <livewiresforyou.com>, registered
with Godaddy.com,
Inc.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@livewiresforyou.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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
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.
On
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.
Mount
1.877.730.8806
In
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.
On
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 (johndiles@aol.com). 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>
on
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).
DECISION
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,
Panelist
Dated: June 23, 2009
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