Maher Awad v. Medtronic DNS
c/o Medtronic, Inc.
Claim Number: FA0909001282608
PARTIES
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.
PANEL
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.
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
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
·
Nonetheless,
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.
B. Respondent
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.
FINDINGS
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.
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 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.
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.
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
[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
DECISION
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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