Re-Bath LLC v. Northern Nevada
Claim Number: FA1002001305824
PARTIES
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.
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.
Richard Hill as Panelist.
PROCEDURAL HISTORY
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 postmaster@rebathreno.com 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
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.
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.
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.
DECISION
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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