Re-Bath LLC v. Northern Nevada
Claim Number: FA1002001305824
Complainant is Re-Bath, LLC (“Complainant”), represented by Donna H. Catalfio, of Gallagher & Kennedy, P.A.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rebathreno.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.
On February 1, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <rebathreno.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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 2010 by which Respondent could file a Response to the Complaint, via e-mail 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. Also on February 12, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 2, 2010. Respondent chose to opt-in to the electronic process with its submission and submitted its Response in electronic copy only.
On March 9, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant states that it entered into a franchise agreement with the Respondent, who distributed its products. Some problems arose regarding the business relation and the parties negotiated an agreed termination of their relation.
The Complainant contends that the rescission agreement acted as the termination of rights in its RE-BATH mark for Respondent.
The Complainant argues that after the Respondent and the Complainant terminated their business relationship, the Respondent no longer had rights in the disputed domain name because it incorporated Complainant’s mark.
The Complainant alleges that the disputed domain name is property belonging to the Complainant based on the contractual relationship between the two parties.
For the reasons set forth below, the Complainant’s contentions regarding the three elements of the Policy need not be summarized.
The Respondent entered into a franchise agreement with the Complainant
in April of 2007 for a franchise in
According to the Respondent, domain names were not mentioned in the contract and when Respondent wanted to register a domain name, the Complainant gave no direction or input as to the choice of the domain name.
The Respondent claims that it registered the contested domain name in December of 2007, while still under contract with Complainant, for the purpose of marketing itself.
The Respondent asserts that, for the duration of its contractual relationship with the Complainant, the Complainant did not comment regarding the Respondent’s use of the contested domain name. Indeed, it told the Respondent that the choice of the domain name was up to the Respondent and that no approval by the Complainant was required.
In August of 2009, the Respondent contends that the Respondent and the Complainant agreed to nullify the contract through a rescission agreement. The Respondent argues that the rescission agreement included all assets to be transferred to the Complainant, and that the disputed domain name was purposefully not included. The Respondent alleges that the Complainant is attempting to gain control of the disputed domain name now because it wants to give it to a new franchise of the Complainant that would compete with the Respondent.
The Respondent, albeit not explicitly, implies that this case may involve reverse domain name hijacking.
For the reasons set forth below, the Respondent’s contentions regarding the three elements of the Policy need not be summarized.
The Respondent was a licensed distributor of the Complainant’s products, under a franchise relation.
During that period, it was authorized to use the Complainant’s marks, including in the contested domain name.
Some difficulties having arisen in the relation between the parties, they agreed to terminate their relation. The termination agreement does not explicitly mention the contested domain name.
The Respondent is currently using the contested domain name to point to a web page that provides factual information regarding the situation, in particular the termination of the former franchising relation.
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.
However, the Panel will first deal with a preliminary issue. It is not contested that there was a business relation between the parties, and that the dispute regarding the domain name in question is related to the discontinuance of that business relation. Both parties claim that the agreement ending the relation supports their position. The agreement in question is complex and does not explicitly mention the domain name. Whether or not the domain name was covered by the agreement is a matter that is best settled by a national court under national law.
That is, in this instance, the Panel finds that the case involves 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.
The present Panel concurs with the Panel in Love, which stated that 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.
Indeed, the Panel finds that the instant dispute concerns a question of contractual interpretation, and thus falls outside the scope of the UDRP. The Panel will therefore dismiss the Complaint. 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).
For the reasons given above, the Panel will not consider this element of the Policy.
For the reasons given above, the Panel will not consider this element of the Policy.
For the reasons given above, the Panel need not consider this element of the Policy. However, the Panel notes, obiter dictum, that it is not contested that the initial registration by the Respondent of the disputed domain name was not made in bad faith, since, at that time, the Respondent was a distributor of the Complainant’s products and had received the Complainant’s permission to use its trademark in a domain name.
Given that the Respondent, after communicating with the Complainant, is now using the contested domain name to point to a web site that provides factual information on the situation (namely that the Respondent is no longer a distributor for the Complainant), it would not appear that the present use of the contested domain name could be considered to be in bad faith in the sense of the Policy.
Having examined the facts as required under the ICANN Policy, the Panel concludes that the Complaint shall be dismissed and that relief shall be DENIED.
Richard Hill, Panelist
Dated: March 23, 2010
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