Memstar PTY, LTD. c/o Wayne Shub v. Bob Kreisher
Claim Number: FA0911001296172
Complainant is Memstar PTY, LTD. c/o Wayne Shub (“Complainant”), represented by Angela
Dennis, of Carle, Mackie, Power & Ross LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <memstarna.com>, registered with Fastdomain 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.
Timothy D. O’Leary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 24, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 25, 2009.
On November 25, 2009, Fastdomain Inc. confirmed by e-mail to the National Arbitration Forum that the <memstarna.com> domain name is registered with Fastdomain Inc. and that the Respondent is the current registrant of the name. Fastdomain Inc. has verified that Respondent is bound by the Fastdomain 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 December 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 29, 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 by e-mail.
A timely Response was received and determined to be complete on December 28, 2009.
An Additional Submission was received from Complainant on January 4, 2010 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
An Additional Submission was received from Respondent on January 8, 2010 and found to be timely and complete pursuant to the National Arbitration Forum’s Supplemental Rule 7.
On January 12, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Timothy D. O’Leary as Panelist.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
In 2007, Complainant entered into an agreement to form a joint venture
partnership with Robert Kreisher. The
parties agreed to form a business that would be co-owned by Memstar and Mr.
Kreisher’s company, Mavrik North America LLC, formerly Mavrik Cellars LLC. The purpose of the business was to expand
Memstar’s existing business into the
Memstar agreed to permit the use of its trademark by Mr. Kreisher and
the joint partnership business, which would be called Memstar North America
LLC. In October 2007, with Memstar’s
permission, Mr. Kreisher filed the Articles of Incorporation in the State of
Unfortunately, after less than two years in business together, the relationship between Memstar and Mr. Kreisher failed. Memstar withdrew its permission for Mr. Kreisher to use its trademark.
Complainant asserts that Complainant had granted Respondent permission to use the MEMSTAR mark during the period of joint venture between Complainant and Respondent from October 2007 to May 2009, but has since revoked its permission. Complainant further asserts that, since May 2009, Respondent has refused to transfer the <memstarna.com> domain name, has pointed the disputed domain name to Respondent’s competing website, and therefore, has used the disputed domain name in bad faith.
Complainant denies Respondent’s allegations that the Complaint was filed in bad faith and is an attempt at Reverse Domain Name Highjacking. Complainant states that Respondent acted in bad faith in registering the domain name in his own name rather than that of the partnership business and in doing so violated his ethical duty as required of a partners.
Respondent contends that it had a business relationship with
Complainant from October 2007 to May 2009 to sell winemaking products in
At the beginning of the relationship, it was mutually
agreed that MEMSTAR NORTH AMERICA LLC (“MNA”) would market and sell the product
Case law has clearly established the need to demonstrate both that the registration was made in bad faith and that the use was in bad faith. The Complainant admits that the domain was registered with its awareness and its blessing. Complainant admits to a business relationship with Respondent that warranted Respondent’s registration of the Domain. It cannot be disputed that the Domain was registered in good faith.
Finally, Respondent argues that this UDRP proceeding is just part of larger legal maneuvers conducted by Complainant in an effort to meet Complainant’s demands and should be considered outside the jurisdiction of the UDRP.
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 May 14, 2007), the panel stated:
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 Sept. 6, 2005) concurred with this reasoning:
[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. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The 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) (“The 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.”); see also 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).
The Panel finds that the dispute involves contractual issues that are outside the scope of the Policy and inappropriate for a decision by the Panel.
Accordingly, the Complaint is dismissed.
Timothy D. O’Leary Panelist
Dated: January 26, 2010
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