Mr. Ronnie Almani v. Burser
LLC and Tarik Orman
Claim Number: FA0906001270892
PARTIES
Complainant is Mr. Ronnie Almani (“Complainant”), represented by Kathryn
E. Smith, of Wood, Herron & Evans, LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <weddingbands123.com> and <weddingband123.com>,
registered with Godaddy.com, Inc.
PANEL
The undersigned certifies that they have acted independently and
impartially and to the best of their knowledge have no known conflict in
serving as Panelist in this proceeding.
David A. Einhorn and G. Gervaise Davis III as
Panelists and Honorable Karl V. Fink (Ret.) as Chair.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On
A timely Response was received and determined to be complete on
An Additional Submission from Complainant was received and determined
to be in compliance with Supplemental Rule 7 on August 3, 2009.
An Additional Submission from Respondent was received and determined to
be in compliance with Supplemental Rule 7 on August 10, 2009.
All submissions were considered by the Panel.
On August 12, 2009, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed David A. Einhorn and G. Gervaise Davis III
as Panelists and Honorable Karl V. Fink (Ret.) as Chair.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant submits that the above-named Respondents are in fact, one
Respondent, per Supplemental Rule 1(d). The
fax and e-mail addresses are the same for both registrants, even though the
domains are held by registrants of different names. Complainant submits that this fact,
coupled with other factual support, evidences that the entities which control
the domain names at issue are effectively controlled by the same person and/or
entity.
Complainant further submits that the Registrants identified in each of the WHOIS records is the “single entity” identified under the UDRP and NAF’s Supplemental Rule 1(d) as the Respondent in this case, regardless of the fact that the Registrants are identified in one registration as an individual, Tarik Orman, and as a corporate entity, Burser LLC, in the other registration. Complainant submits that both Registrants, Burser LLC and Tarik Orman, are effectively one and the same entity who effectively control the domains at issue in this proceeding.
Complainant is the owner of the mark WEDDING BANDS 123 and the pending trademark application therefore.
In the spring of 2007, two long-time friends, Ronnie Almani and Chad Lieberman, decided to start the online wedding ring wholesale business now known as Wedding Bands 123 Inc. In the corporate documents filed in the New York Secretary of State’s Office, Ronnie Almani was named President of the corporation, and Chad Lieberman was named Vice-President of the corporation.
Almani spent hours of his own time, effort, and money to establish and promote the business Wedding Bands 123 Inc. at the website WEDDINGBANDS123.COM, using the mark, WEDDING BANDS 123.
On August 1, 2007, Almani and Lieberman executed a Consulting Agreement which effectively treated Lieberman as a marketing consultant to the company, Wedding Bands 123 Inc.
In December 2007, Almani and Lieberman orally reached an alternative agreement whereby Almani would pay Lieberman $3,500 to buy out Lieberman’s interest in the company.
In July 2008, demanding that he was owed more money from Almani, Lieberman leveraged his control over the disputed domains and temporarily shut down the website. Lieberman pointed the WEDDINGBANDS123.COM domain to a directory site which allowed him to temporarily profit from pay-per-click traffic looking for the company’s legitimate site.
Almani entrusted Lieberman as a fiduciary with the company’s intellectual property, and entrusted him with the registration of the domain names corresponding to the business. When Lieberman disagreed with Almani over monies he maintained he was due, Lieberman sold the domains to Respondent Tarik Orman.
On May 1, 2009, without notifying Almani or obtaining his permission, Lieberman transferred ownership of the disputed domain names to Respondent Tarik Orman. Lieberman transferred to Orman the disputed domains, as well as turnkey access to the WEDDINGBANDS123.COM site, its links, advertising accounts, and merchant accounts.
Orman reigned in control over the disputed domains and the website, and prevented Almani from contacting his own clients and prevented Almani from doing business under the company and trademark he established.
Almani filed an application in the U. S. Trademark Office in his personal name, to seek federal registration of the mark WEDDING BANDS 123. That application was filed on May 12, 2009.
On June 12, 2009, Respondent Burser LLC filed an applicationin the USPTO to seek registration of the mark www.WeddingBands123.com.
Respondents are using the disputed domain names in a manner that is
intended to compete directly with Complainant and his ongoing business, under a
mark and name that was conceived of by Complainant.
Respondents have no rights to Complainant’s mark, WEDDING BANDS 123.
By using the disputed domain names, Respondents have intentionally attempted to attract, for commercial gain, internet users to Respondents’ website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondents’ website.
B. Respondent
At the heart of this Complaint is a business dispute between
complainant and a third party, Chad Lieberman.
Burser LLC is controlled not by Mr. Orman, but by Mr. Erdem
Alganatay. Although the Complaint should
have been brought against Burser and Mr. Orman, separately, because Burser was
the party that purchased both of the Domain Names from the original registrant
and can attest to the underlying facts and intent at the time of registration,
Burser and Mr. Orman have elected to respond jointly.
When Burser purchased the <weddingband123.com> and
<weddingbands123.com> domain names (the “Domain Names”) from M.
Lieberman, Mr. Lieberman represented to Burser that he was the owner of record
and original registrant of the Domain Names.
Mr. Lieberman initially purchased the Domain Names on April 8, 2007,
before he and Complainant formed Wedding Bands 123, Inc. on May 2, 2007, and
before he did business under the WEDDING BANDS 123 mark with Complainant in
June 2007.
The issue as to whether or not Mr. Lieberman had the right to transfer
the Domain Names to Burser, or should instead, have transferred them to
Complainant, or to some other third party partners or investors in the 123
Corporation, is not an issue that the Panel is authorized under the Policy to
resolve
Complainant does not own a registered trademark for
WeddingBands123. Nor has Complainant
established that he owns common law rights in the term, or, if such rights do
exist, that he is the sole owner.
In view of the generic qualities of the WEDDING BANDS 123 mark, it is
far from certain that the mark will be found capable of registration, or that
it could be found to have acquired the necessary distinctiveness to support a
claim of trademark rights.
Because Mr. Lieberman was not fully paid for his interest in Wedding
Bands 123, Inc., Mr. Lieberman would have retained some interest in whatever
trademark arguably existed, and conveyed such rights to Respondents.
Burser acquired the Domain Names from the registrant of the Domain
Names, only after the registrant of the Domain Names approached Burser and
offered them for sale. The Domain Names
consist of the common dictionary terms “wedding bands” and “wedding band,”
combined with the common numbers "123,”
Burser is currently using the <weddingbands123.com> Domain Name
to run an online wedding bands business and transferred the
<weddingband123.com> Domain Name to Mr. Orman, who has the Domain Name
parked with GoDaddy.
Both Burser and Mr. Orman were active in the online wedding bands
industry before Complainant and Mr. Lieberman started their competing business
under the WEDDING BANDS 123 mark. In
using the Domain Names, purchased from the legal registrant, in the online
“wedding bands” industry that both Respondents were involved in before
Complainant was, it cannot be fairly said that Respondents have no rights or
legitimate interests in the Domain Names.
When Burser purchased the Domain names, it believed that Mr. Lieberman
had the full right to sell them the Domain Names and that in buying the domain
Names, Burser was acquiring the right to continue to do business under the
WEDDING BANDS 123 name.
Complainant filed his trademark application on May 12, 2009, after Mr.
Lieberman had sold and transferred the Domain Names to Burser.
C. Additional Submissions
Complainant
Mr. Almani’s use of WEDDING BANDS 123, both locally and worldwide
through the Internet, prior to Respondents’ misappropriation of the mark and
the corresponding domain names established his superior rights. Trade names are afforded the same or vary
similar protection as trademarks.
Respondents mistakenly assert that Mr. Almani must be the sole owner of
the mark in question in order to bring this action. Almani need only establish that he that he
has “rights” in the mark. Respondent’s
activities with respect to the mark in question, as well as use of the mark on
the website WEDDINGBANDS123.com prior to its misappropriation by Respondents,
establish Mr. Almani’s right to the mark and his right to seek the appropriate
remedy from this panel
Complainant’s use of the WEDDINGBANDS 123 mark and name since the
establishment of the corporation in the state of
Consumers looking for goods sold by Wedding Bands 123 associate the
corporation of the same name as the source of the goods.
Respondents’ contention that the mark is generic is belied by the fact
that Respondent, Burser LLC, also filed an application to seek registration of
a modified version of the same mark, www.WeddingBands123.com.
Respondents are in possession of two domain names WEDDINGBAND123.com
and WEDDINGBANDS123.com, which include the whole of Mr. Almani’s mark. Thus, the disputed domain names are identical
and confusingly similar to Mr. Almani’s WEDDING BANDS 123. Respondent cannot show any legitimate rights
in the domain names in dispute.
A simple records search would have indicated to the respondents that
the phrase Wedding Bands 123 was currently registered and being used as a
corporate name in
Respondent Tarik Orman substituted his name for Mr. Almani’s on the
website after he gained control over the domains, claiming to be the
“Co-Founder” of Wedding Bands 123.
Respondent
Complainant’s and Burser’s respective applications to register the
WEDDING BANDS 123 and WWW.WEDDINGBANDS123.COM
marks are both irrelevant to this proceeding.
Complainant confirms that Chad Lieberman remained the owner at all
times before Burser agreed to purchase the Domain Names in February 2009.
Complainant did not refute Respondent’s allegations that the majority
of content used for the <weddingbands123.com> website was copied from
Respondents’ websites.
Complainant disputes Respondents’ supposition that other parties may
have claims to the purported WEDDING BANDS 123 mark.
FINDINGS
For the reasons set forth below, the Panel
finds that relief shall be denied.
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.”
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.
Preliminary Issue:
Business/Contractual Dispute Outside the Scope of the
UDRP
Complainant asserts that in the spring of 2007 he and Chad Lieberman began an online company Wedding Bands 123 Inc. Mr. Lieberman registered the disputed domain names as part of their mutual start of this company. In July 2007, Mr. Lieberman stopped being a partner in the company and became a marketing consultant. In December 2007, Complainant agreed to buy out Mr. Lieberman’s interest in the company. In May 2009, Mr. Lieberman transferred registration of the disputed domain names to the Respondent.
Resolution of the issues in this case would also require analysis of contractual issues between Complainant and non-party Chad Lieberman. Courts are far better equipped to resolve those issues and this dispute.
Therefore, 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
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.
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.
This decision should not be viewed as a
ruling in favor of Respondent. The Panel is simply of the view that this
is not a dispute which it should be resolving on the merits and that its
decision should leave the domain name registrations status quo.
For the reasons stated above, the Panel finds
that it is not necessary for the Panel to consider the three elements of the
Policy.
DECISION
The Panel concludes that relief shall be DENIED.
Accordingly, the Complaint is DISMISSED.
Honorable Karl V. Fink (Ret.), Chair
David A. Einhorn, Panelist
G. Gervaise Davis III, Panelist
Dated: August 24, 2009
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