Maher Awad v. Medtronic DNS c/o Medtronic, Inc.
Claim Number: FA0909001282608
Complainant is Maher Awad (“Complainant”), represented by Michael
I. Santuccci, of Santucci, Priore & Long, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <einstitute.com>, registered with Markmonitor Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
A timely Response was received and determined to be complete on
On October 5, 2009 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant contends that:
· On September 2004, the Respondent offered to buy the disputed domain name from the Complainant through a domain name broker SEDO.com.
· Complainant did not receive payment and the transfer was refused.
the Respondent took steps to transfer the disputed domain name to itself on
· To date, no legitimate use of the domain name was completed by the Respondent, other than merely holding the disputed domain name.
· The disputed domain name currently points to the Complainant’s website relating to equipment.
By the Response submitted the Respondent replies to the allegations of the Complainant as follows:
· It offered to purchase the domain name at issue and the Complainant accepted Respondent’s offer.
· It made payment to a third-party domain broker as agreed upon by the parties and the disputed domain name was then transferred to Respondent pursuant to Complainant’s authorization.
· It is the proper owner of the domain name.
· If the Complainant was not paid by the third-party broker, then that is an issue between Complainant and the third-party.
· The case presented by the Complainant is outside the jurisdiction of the UDRP.
· The Complainant has acted in bad faith as it failed to disclose to the Panel that (1) Respondent provided to Complainant proof of payment to the third-party broker, (2) the third-party tacitly acknowledged that it, not Respondent, failed to pay Complainant, and (3) the third-party advised Complainant how to receive payment. Complainant then suggested to the Panel that Respondent is acting in bad faith, a false and misleading assertion clearly contradicted by the evidence Complainant failed to disclose.
The main issue in these proceedings is to determine whether an UDRP Panel has jurisdiction on a business/contractual dispute as it is the matter brought to its attention. The Panel considers that the UDRP was implemented to address abusive registration of dispute domain names, not this type of contract dispute. Therefore, the Panel decides that this matter falls outside the jurisdiction of a UDRP Panel.
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 contends that
Respondent “wrongfully acquired” the disputed domain by agreeing to purchase
the domain name but not paying Complainant.
Complainant alleges that at the end of September 2004, Respondent agreed
to purchase the <einstitute.com> domain name from
Complainant. Next, Complainant alleges,
Respondent never paid for the disputed domain name, but “took steps to transfer
the domain name to itself on
Respondent argues that the agreed upon sale was
conducted through a domain name broker, Sedo.com LLC. Sedo.com issued an invoice to Respondent
which Respondent promptly paid.
Respondent submitted with its Response a copy of the invoice and the
check cashed by Sedo.com LLC on
Based on the allegations of both parties, the Panel is of the opinion that this is a business and/or contractual dispute between two parties.
Such matter falls outside the scope of the UDRP, as it concerns the non-payment issue.
In Love v. Barnett, FA 944826 (Nat. Arb.
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.
panel in Luvilon Industries NV v.
Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO
[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.
In the view of the said finding,
the Panel dismisses the Complaint. See Everingham Bros. Bait Co.
v. Contigo Visual, FA 440219 (Nat. Arb. Forum
Based on the findings above the Panel concludes that relief shall be DENIED, as the Complaint is dismissed.
Beatrice Onica Jarka Panelist
Dated: October 19, 2009
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