Direct Pointe, Inc. v.
CentralPointe
Claim Number: FA0905001263554
PARTIES
Complainant is Direct Pointe, Inc. (“Complainant”), represented by S.
Brandon Owen, of Holland & Hart LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <centralpointe.com>, registered with Tucows 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.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 18, 2009; the
National Arbitration Forum received a hard copy of the Complaint on May 19, 2009.
On May 19, 2009, Tucows Inc. confirmed by e-mail to the National
Arbitration Forum that the <centralpointe.com> domain name is
registered with Tucows Inc. and that the
Respondent is the current registrant of the name. Tucows Inc.
has verified that Respondent is bound by the Tucows
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 26, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 15, 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@centralpointe.com by e-mail.
A timely Response was received and determined to be complete on June 15, 2009.
Complainant timely filed an Additional Submission, denominated a Reply,
under date of June 22, 2006. That
submission, although not strictly in compliance with the provisions of Supplemental
Rule 7 because the related fee payment was filed one day late, will, in the
interests of justice, be considered for whatever value it may have.
On June 29, 2009, Respondent timely filed a Reply to the Additional
Submission (Reply) of Complainant.
On June 19, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant alleges, among other things, the following:
Complainant is a worldwide leader in Information Technology (“IT”) outsourcing.
Since 2007, Complainant and its affiliates have used the CENTRALPOINTE
trademark to identify their IT outsourcing services.
Complainant and its affiliates have made a substantial investment in
advertising, promoting and developing the CENTRALPOINTE trademark.
As a consequence of this substantial investment, the CENTRALPOINTE
trademark is well known throughout the world.
Complainant has common law trademark rights in the CENTRALPOINTE
trademark.
When Complainant began using the CENTRALPOINTE trademark, Respondent’s
founder was Complainant’s employee, holding the titles of president and chief
executive officer.
On December 31, 2008, Complainant ended that employment relationship
with Respondent’s founder.
Following this employee’s departure from Complainant, Complainant
retained ownership of the CENTRALPOINTE trademark.
From the time of his departure from employment by Complainant, this
former employee has not been authorized to use the CENTRALPOINTE trademark in
any manner.
Without Complainant’s consent, this former employee has transferred the
contested domain name to a new account under the name of CENTRALPOINTE, and has
refused Complainant’s requests to return the stolen domain name.
Internet users who access the disputed domain name are directed to a
website prominently featuring the CENTRALPOINTE trademark, which site also
contains Complainant’s copyrighted content.
Respondent’s domain name is identical or confusingly similar to
Complainant’s CENTRALPOINTE trademark.
Respondent has never been commonly known by the contested domain name.
Respondent does not use the disputed domain name for any bona fide offering of goods or services,
nor for any legitimate noncommercial or fair use.
Respondent has no rights to or legitimate interests in the contested
domain name.
Respondent registered and uses the disputed domain name in bad
faith.
B. Respondent
Respondent alleges, among other things, the following:
Complainant has not established common law trademark rights in the alleged
mark CENTRALPOINTE.
Respondent’s founder was never an employee of Complainant, having
served Complainant only as an independent contractor.
Respondent is a
Respondent and its founder have refused to transfer the disputed domain
name to Complainant because Respondent’s founder is the lawful owner of that
domain name.
CENTRALPOINTE is a generic term which Complainant cannot and has not trademarked.
Complainant has only registered a trademark for the mark CENTRALPOINTE
SERVER.
This forum is an inappropriate one in which to attempt to resolve the
issues presented by Complainant.
Respondent has legitimate rights to and interests in the contested
domain name.
The contested domain name was registered four years before Complainant
registered the CENTRALPOINTE SERVER mark.
C. Additional Submissions
Complainant’s additional submission (Reply) asserts, inter alia, that:
Respondent’s claim that its founder owns rights to the disputed domain
name is false because the asset transfer upon which Respondent claims to rely
never occurred.
Respondent’s founder’s work on behalf of Complainant was governed by a
contract which included a “works for hire” clause, by the terms of which
Complainant retained all rights to intellectual property developed by him in
connection with that employment.
Respondent’s additional submission (Reply) alleges, among other things,
that;
Complainant transferred ownership of specific assets to Respondent’s
founder as a condition precedent to a legal separation of Respondent from
Complainant.
That transfer included any interest in any mark previously owned by
Complainant.
To properly resolve the issue of ownership of the mark and domain name
here in issue requires analysis of questions of contract law for which the
proper forum is a court of competent jurisdiction.
Respondent is currently making no use of the contested domain name
pending resolution of the business dispute spelled out in the submissions of
the parties in this proceeding.
DISCUSSION AND FINDINGS
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.”
From our review of the submissions of the
parties, it seems clear that this is not a dispute within the contemplation of
the Policy, which is intended solely to address instances of “cyber-squatting,”
defined as the abusive registration and use of Internet domain names. Rather,
this is a dispute as to the proper interpretation and application of the terms
of a business arrangement, which should be confided to the jurisdiction of the
appropriate local or national court.
See, for example, Summit
Industries, Inc. v. Jardine Performance Exhaust Inc., D2001-1001 (WIPO Oct.
15, 2001):
[T]he
question presented is outside the purview of the UDRP, in that it involves
questions of the extent of rights transferred and retained under a stock
purchase agreement. Such questions should be determined in an arbitration
conducted by agreement of the parties or by a court of law. Accordingly, the Complaint
must be dismissed.
See also Nintendo
of America Inc. v. Alex Jones, D2000-0998 (WIPO Nov. 17, 2000):
It is not
the function of an ICANN Administrative Panel to resolve all issues concerning
the use of intellectual property rights. Matters beyond the narrow purview of
the Policy are for the courts of appropriate jurisdictions.
Further see Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007):
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 …. [T]he 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.
DECISION
For the reasons above indicated, it is Ordered that the Complaint herein is hereby DISMISSED.
Terry F. Peppard, Panelist
Dated: July 2, 2009
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