PayPay Inc. v World Clearing US LLC c/o Oskar Duris a/k/a Global Infoservice Establishment c/o Matt, Johannes
Claim Number: FA0910001288797
Complainant is PayPay Inc. (“Complainant”), represented by Nathan
D. Meyer, of Russ August & Kabat,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <paypay.com>, <boxstr.com>, <boxstrdrive.com>, <opendrive.com>, and <buybrowser.com>, registered with 007Names, 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.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 13, 2009.
On October 12, 2009, 007Names, Inc. confirmed by e-mail to the National Arbitration Forum that the <paypay.com>, <boxstr.com>, <boxstrdrive.com>, <opendrive.com>, and <buybrowser.com> domain names are registered with 007Names, Inc. and that the Respondent is the current registrant of the names. 007Names, Inc. has verified that Respondent is bound by the 007Names, 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 October 21, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 10, 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A Response from World Clearing US, LLC (“World Clearing”) was received and determined to be deficient on November 10, 2009 by the Forum because the Response was not received in hard copy pursuant to ICANN Rule #5(a). A hard copy of this response was received on November 13, 2009 and was accepted and considered.
A Response from “Global Infoservice Establishment c/o Johannes Matt” was received and determined to be deficient on November 10, 2009 by the Forum because the Response was not received in hard copy pursuant to ICANN Rule #5(a). A hard copy of this response was received on November 11, 2009.
An Additional Submission was received from Complainant on November 13, 2009 in accordance with UDRP Supplemental Rule 7(a).
On November 16, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael A. Albert as Panelist.
On November 17, 2009, Respondent submitted an Additional Submission which was received in hard copy on November 19, 2009.
Complainant requests that the domain names be transferred from Respondent to Complainant.
According to paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant is required to prove that the three elements mentioned below are met. The Complainant makes the following assertions with respect to these elements:
(i) the Domain Name is identical or confusingly similar to trademarks or service marks to which the Complainant has rights.
Complainant contends it has used the name “PayPay” in interstate commerce for nearly a year, in addition to the marks BOXSTR, BOXTRDRIVE, OPENDRIVE, and BUYBROWSER and that these marks have become associated with the goodwill of Complainant, especially the name PayPay.
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names.
Complainant contends that the Respondent signed all rights in the disputed domain names over to Complainant as part of an Asset Purchase Agreement dated November 13, 2008 (the “Asset Purchase Agreement,”) whereby Complainant and World Clearing agreed that Complainant would acquire all World Clearing assets on November 13, 2008, including the disputed domain names, for good and valuable consideration as described therein.
(iii) the Domain Names were registered and are being used in bad faith.
Complainant contends that Respondent World Clearing obtained the disputed domain names in bad faith because (1) Respondent World Clearing had no right in the disputed domain names, and (2) Respondent was able to take possession of the disputed domain names only because its representative, Oskar Duris, had access to the passwords for the domain names through his employment agreement with Complainant.
Furthermore, Complainant contends that it previously acquired the disputed domain names in a transfer agreement from Respondent “World Clearing US LLC c/o Oskar Duris” and that “Global Infoservice Establishment c/o Matt, Johannes” is the alter ego of Respondent “World Clearing US LLC c/o Oskar Duris.”
Respondent World Clearing asserts it is the registrant for all of the disputed domain names and contends that it owned an interest in the subject domain names and that it used these domain names in commerce for its own business for many years. Respondent World Clearing alleges that Complainant entered into an Asset Purchase Agreement providing for Respondent World Clearing to transfer the disputed domain names to Complainant in exchange for certain payment terms. Respondent World Clearing states that Complainant has not fulfilled the terms of the Asset Purchase Agreement.
Respondent Global Infoservice Establishment contends that it claims the rights to the domain name “paypay.com” and that it duly signed a domain name transfer agreement with 007Names, Inc., dated December 15 and 27, 2004. Respondent Global Infoservice Establishment contends that the Complainant cannot show any proof of legal connection between Global Infoservice Establishment and World Clearing or its representative, Oskar Duris.
C. Additional Submissions
In its Supplemental Response, Complainant contends that it is in full compliance with the Asset Purchase Agreement. Furthermore, Complainant contends that Global Service’s position that it is not related to World Clearing US, LLC is false.
1. Respondent was the owner of the disputed domain names and operated them to sell payment processing technologies.
2. Complainant entered into an Asset Purchase Agreement dated November 13, 2008, whereby the Complainant agreed to purchase from World Clearing the disputed domain names for good and valuable consideration.
3. The Asset Purchase Agreement provided for payment by Complainant to Respondent World Clearing of certain shares of Complainant due on or about November 13, 2008 and certain cash payments to World Clearing within 18 months of the effective date of the transfer, with additional amounts due within 24 months of the effective date of the transfer.
4. In November of 2008, Complainant began operating the disputed domain names.
5. Complainant states that it purchased the disputed domain names from Respondent in November of 2008 and began operating them with Respondent’s representative (Oskar Duris) as Complainant’s Chief Technology Officer (CTO). During his tenure with PayPay, Inc. it appears that Mr. Duris had access to the passwords for the domain names.
6. Complainant operated the disputed domain names between November 2008 and September 2009.
7. Complainant alleges that “when Mr. Duris was dismissed as the CTO in September of 2009, he improperly used his knowledge of the domain name passwords to steal the disputed domain names.” Complainant further contends that Respondent has refused to sign a bill of sale transferring the disputed domain names to Complainant.
8. Respondent’s position is that Complainant has not fulfilled its payment or other obligations pursuant to the Asset Purchase Agreement and that Respondent has duly rescinded the Asset Purchase Agreement.
9. As discussed below, whether Respondent’s appropriation to itself of the disputed domain names constitutes a legitimate repossession of property resulting from a failure of performance under a contract or an improper and possibly even fraudulent act involving the misuse of passwords or other confidential data turns on issues of contract, tort and/or statutory law that are generally deemed to be beyond the scope of a proceeding under this Policy.
Preliminary Issue: Deficient Responses
A Response from World Clearing was received and determined to be deficient on November 10, 2009 by the Forum because the Response was not received in hard copy pursuant to ICANN Rule #5(a). A hard copy of this response was received on November 13, 2009 and was accepted and considered.
A Response from Global Infoservice Establishment was received and determined to be deficient on November 10, 2009 by the Forum because the Response was not received in hard copy pursuant to ICANN Rule #5(a). A hard copy of this response was received on November 11, 2009.
Both Responses were submitted only in electronic format prior to the Response deadline. The Panel, in its discretion, may choose whether to accept and consider these Responses. See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that the respondent’s failure to submit a hard copy of the response and its failure to include any evidence to support a finding in its favor placed the respondent in a de facto default posture, permitting the panel to draw all appropriate inferences stated in the complaint); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”). In light of the Supplemental Response received by the Complainant on November 13, 2009, the Panel has accepted and considered responses from all parties.
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
In the instant proceeding, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Complainant contends that it previously acquired the disputed domain names in a transfer agreement from Respondent “World Clearing US LLC c/o Oskar Duris” and that “Global Infoservice Establishment c/o Matt, Johannes” is the alter ego of Respondent “World Clearing US LLC c/o Oskar Duris.” Complainant also asserts that “Global Infoservice Establishment c/o Johannes Matt” has the same address as the attorney for Respondent “World Clearing US LLC c/o Oskar Duris.”
Both Respondents World Clearing and Global Infoservice Establishment contend that the Complainant cannot show any proof of legal connection between Global Infoservice Establishment and World Clearing or its representative, Oskar Duris because there is no connection between these entities.
While Complainant alleges that Respondent Global Infoservice Establishment is nothing more than an alter ego of Respondent World Clearing, despite the evidence presented in the Complainant’s Supplemental Response, the Panel finds that this is ultimately a factual dispute and that Complainant has not sufficiently presented evidence demonstrating that the listed entities are jointly controlled. Thus, the Panel, under the National Arbitration Forum’s Supplemental Rule 4(f)(ii), may be required to dismiss the Complaint in relation to those domain names not owned by the same entity named as Respondent. For the reasons discussed in the next section, however, this issue is moot.
There is an important preliminary question as to whether this dispute falls within the scope of the Policy. This dispute arises out of an underlying business relationship and transaction between the parties. As panelists in a number of prior disputes have held, the Policy was implemented to address abusive cybersquatting, not contractual or other business disputes between parties with a preexisting relationship. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“[T]he Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“[T]he Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
Furthermore, in the case of First Nationwide Exchange, Inc. v. Reskyu, FA 956937 (Nat. Arb. Forum May 24, 2007), the panel noted that “[i]n 1999, the World Intellectual Property Organisation (“WIPO”) produced a report in which it noted that good faith disputes between competing right holders or other competing legitimate interests over whether two names were misleadingly similar would not fall within the scope of the UDRP.” Similarly, in Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000), the panel held that a dispute concerning an employee’s registration of a domain name in his own name and his subsequent refusal to transfer it to his employer raised issues of breach of contract and breach of fiduciary duty that were more appropriately resolved in court, not before a UDRP panel. In Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) the panel refused to transfer the domain name, stating that the Policy did not apply because attempting “to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy.”
Additionally, the NAF has previously held that complex cases such as the one presented here may be better decided by the courts than by a UDRP panel stating: “[W]hen 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.” Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007)
The present case involves a Complainant who claims the disputed domain names pursuant to an Asset Purchase Agreement with Respondent World Clearing and alleges that these domain name registrations were fraudulently transferred back to World Clearing. These allegations involve contractual (and perhaps tort or other legal) disputes. Additionally, there are factual disputes as to the relationship between multiple Respondents. While it appears from the record that Complainant may have been the victim of fraudulent activity, the purpose of the Policy is to deal with abusive domain name registrations by deterring the abusive practice known as “cybersquatting.” As the instant case involves a complex contractual dispute and potentially fraudulent transfer of registrations, rather than cybersquatting as defined in the Policy, the Panel finds that this dispute is outside the scope of the Policy.
Because the contentions of the parties fall outside the scope of the UDRP Policy, the Panel will undertake no analysis as to the issues defined by Paragraph 4(a) of the Policy, that is: (1) whether the domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) whether the Respondent lack rights or legitimate interests in respect of the domain names; and (3) whether the domain names have been registered and are being used in bad faith.
Because this proceeding is outside the scope of the Policy, the Panel concludes that relief shall be DENIED. This decision is without prejudice to Complainant’s right to bring proceedings in another forum, with proper jurisdiction over this matter.
Michael A. Albert, Panelist
Dated: November 30, 2009
National Arbitration Forum
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