Nosey Parker, LLC v. The Purple Turtle
Claim Number: FA0912001300536
Complainant is Nosey Parker LLC (“Complainant”), represented by Steve
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <noseyparkerguide.com>, registered with GoDaddy.com, 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.
R. Glen Ayers served as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 24, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 4, 2010.
On December 28, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <noseyparkerguide.com> domain name is registered with GoDaddy.com, Inc. and that the 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 Icahn’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 6, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 26, 2010 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 Response was received and determined to be partly deficient on January 27, 2010.
Complainant’s Additional Submission was received on February 1, 2010. The Additional Submission was received in a timely manner according to Supplemental Rule 7.
Respondent’s Additional Submission was received on February 5, 2010. The Additional Submission was also received in a timely manner according to Supplemental Rule 7(a).
On February 2, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant alleges, in its original Complaint, that the domain name, <noseyparkerguide.com>, is identical to or confusingly similar to the recently registered trademark, “NOSEY PARKER”. Attached to the Complaint is an exhibit showing that the trademark was registered on August 25, 2009. Also attached is a text of the current webpage at <noseyparkerguide.com>, which states that website and related websites have been disabled by Respondent, the Purple Turtle, Inc. Complainant alleges that it intially contacted Respondent on April 15, 2008. Thereafter, it asserts that Respondent offerred it’s services to Complainant. Complainant specifically states that it “recently discovered the Respondent had registered the domain name of April 18, 2008, two weeks prior to soliciting the services to Complainant.” Complainant also asserts that it has requested a transfer of the domain name but that the transfer has not occurred. Complainant says Respondent went on to develop the website for Complainant, but refused to sign a contract with Complainant. Complainant also states that there was never a written contract. Complainant asserts that Respondent has no ownership rights in Complainant or the trademark NOSEY PARKER. Complainant asserts that Respondent has never used the domain name for its own business or acquired any trade or service mark rights. Complainant asserts that Respondent is not partaking in legitimate use. It asserts that Respondent is “intentionally using the domain name to divert Complainant’s customers and to tarnish Complainant’s trademark.”
Complainant asserts that the “registration by Respondent was prior to Respondent’s soliciation of business from Complainant and solely for the purpose of soliciting funds from Complainant.” Complainant asserts that Respondent is using the domain to divert customers and is using the trademark to defame the Complainant. Complainant asserts that Respondent will not transfer the domain name, “unless Complainant pays amounts that Complainant does not believe are owed to Respondent….”
Respondent asserts that this Complaint was not filed until ten (10)
months after the parties entered into a business arrangement whereby Respondent
“developed and designed” the <noseyparkerguide.com> website. Respondent asserts that Complainant had no
trademark rights at the time Respondent registered the domain name. Respondent
states that it met Complainant for the first time on April 15, 2008. It asserts
that Complainant hired Respondent to review design elements, plan for the
website, and to do design work on the proposed “Nosey Parker Guidebook”. Complainant
sent, on April 15, 2008, designs and graphics for comment. Respondent was, it
asserts, responsible for hosting the website and creating hardcopies for the
guidebook. Respondent asserts that it registered the domain name at issue and
advised the Complainant by an e-mail, attached to its Response, which is dated
April 22, 2008. In the interim, on April 18, 2008, Complainant had advised Respondent
Although the parties never entered into a written contract, Respondent asserts that the Complainant has never paid it the fair value of its services in the amount of $542,525.00. Attached as an exhibit is a lawsuit filed by Respondent as Plaintiff asserting claims for hundreds of thousands of dollars.
In further Response, Respondent asserts that it has not acted in bad faith. It asserts that it registered the domain name after the parties entered into a business relationship. It asserts that there was no trademark at the time that the parties entered into the relationship of the domain name registered. It does not assert that it has any rights in the domain name.
C. Additional Submissions
1. Complainant’s Additional Submissions
Complainant’s additional submission asserts that it has common law rights in the trademark which existed before the actual registration. Complainant asserts that it has included a trademark symbol on presentations made to potential clients in printed guidebooks. As to rights in the name, Complainant asserts again that Respondent has no rights to the name. Complainant against asserts that it did not discover that the domain name was registered in Respondent’s name until February 2009, and provides e-mail correspondence indicating as much. Complainant disputes the alleged business relationship, and asserts that Respondent’s conduct was not acting in bad faith.
2. Respondent’s Additional Submission
Respondent’s additional submission asserts this is a dispute between contracting parties, and Respondent asserts that there is not sufficient evidence of a common law trademark. Respondent continues to assert a course of dealing between the parties which would defeat the allegations made by Complainant.
Finally, as to bad faith, Respondent says essentially that it has never used the domain name or mark in bad faith and that the traditional elements of bad faith are wholly lacking in this business dispute.
In its conclusion, Respondent argues that this is a contract and business dispute and not a domain name dispute, and it should not be addressed by the domain dispute process.
Initial finding concerning a deficient Response.
Although Respondent’s Response was not received by the Forum in hard copy prior to the Response deadline, and this is a technical violation of ICANN Rule 5, the panel chooses, at its discretion, to accept the Response where, in situations like this one, the electronic Response was timely submitted. See J. W. Spear & Sons, TLC v. Fun League Mgmt, F.A. 180628 (Nat. Arb. Forum Oct. 17, 2003).
Preliminary Issue: Business or contractual disputes outside the scope of the UDRP.
Respondent has filed a state court lawsuit,
which predates this Complaint, asserting a breach of contract and damages of
approximately $550,000.00. It has asserted a lien, apparently valid under the
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.
This case is also more than just a domain dispute between the parties. A lawsuit has been filed. The lawsuit involves complex issues of fact and perhaps law, and is better decided by a court then by the UDRP panel. Again, the Love v. Barnett panel spoke to these issues.
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.
For similar reasoning, the panel refers the parties to Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005). Therefore, the panel treats the Response and additional submission by Respondent as containing motions to dismiss and the panel has determined to dismiss the Complaint.
See Everingham Bros. Ball 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 cyber-squatting, 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.)
Although the Panel has determined to dismiss this Complaint, the Panel would, if necessary, find that there are no facts establishing a common law mark prior to date of the registration of the domain name. A common law mark is a trademark without registration because it is found, as a factual matter, to create a secondary meaning identifying the holder’s goods and/or services. Here, there is no evidence sufficient to support a “common law mark.”
Respondent may have registered or even may
have purchased the domain name from a third party at the inception of the
relationship. It is very unclear to the Panel what happened to the British
domain name, <noseyparker.com>. Did Respondent
purchase it? In that case, the domain name derivative, <noseyparkerguide.com> may never have belonged to
Complainant. Did Respondent just register the new domain name in its own name?
That is not clear. Further, it is not clear whether Respondent gave notice to
Complainant of the domain name registration (“tied up” is not the equivalent to
“I have registered”). These are just the sort of disputed factual issues not
developed in the Complaint and Response, which must be devloped in the courts
of the State of
The Panel would note that interest in the name is not an issue. Respondent has not made any attempt to rebut those allegations of Complainant. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under UDRP & 4(a)(ii) before the burden shifts to the Respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satsified its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
As to “bad faith,” it is difficult to find bad faith in this case. Having read the screen shot of the current website, there is simply little evidence of bad faith, and Complainant does not appear to have established a prima facie case.
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.
There is no discussion of the elements of the domain name dispute and
the resolution of those elements, because the Panel has determined to dismiss
this matter. For the reasons stated above, this matter should and must go to
the state courts of the State of
Having determined that this dispute shall be dismissed, the relief requested is DENIED.
R. Glen Ayers, Panelist
Dated: February 16, 2010
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