Contender Boats, Inc. v. The Schmidt Group
Claim Number: FA0906001271168
Complainant is Contender
Boats, Inc. (“Complainant”), represented by Robert M. Kritzman, of Epstein Becker & Green, P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <contender.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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2009; the Forum received a hard copy of the Complaint on July 2, 2009.
On June 30, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <contender.com> domain name is registered with Godaddy.com, Inc. and that 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 July 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of July 27, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 30, 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.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant is in the business of manufacturing and selling pleasure boats under the CONTENDER brand.
Complainant is the owner of the CONTENDER mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,137,837, issued July 15, 1980, and renewed September 12, 2001).
On November 13, 2006, Complainant entered into a contract with Respondent for advertising services and website development.
Respondent registered the <contender.com> domain name under the name “The Schmidt Group,” and listed the Administrative Contact as “Ronald Schmidt” instead of its principal, Complainant, without the knowledge or authority of Complainant.
Respondent has ceased business in the website development industry, and Respondent is no longer employed as an independent contractor for Complainant.
Respondent’s <contender.com> domain name redirects Internet users to Complainant’s commercial website at the <contenderfishingboats.com> domain name.
Respondent’s <contender.com> domain name is identical to Complainant’s CONTENDER mark.
Respondent does not have any rights to or legitimate interests in the <contender.com> domain name.
Respondent registered and uses the <contender.com> domain name in bad faith.
B. Respondent failed to submit a Response 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 is 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 over the terms and conduct 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. 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):
[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.
For the reasons indicated, it is Ordered that the Complaint herein be, and it is hereby, DISMISSED.
Terry F. Peppard, Panelist
Dated: August 11, 2009
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