Amazing Births LLC v. Lisa Kelly
Claim Number: FA1002001310124
Complainant is Amazing Births LLC (“Complainant”), represented by Geoffrey Lottenberg, of Lott & Friedland, P.A.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amazingbirths.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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 25, 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 25, 2010, Fastdomain Inc. confirmed by e-mail to the National Arbitration Forum that the <amazingbirths.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 February 26, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 18, 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 26, 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 18, 2010. Respondent chose to opt-in to the electronic process with its submission and submitted its Response in electronic copy only.
On March 29, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <amazingbirths.com> domain name is confusingly similar to Complainant’s Amazing Births mark.
2. Respondent does not have any rights or legitimate interests in the <amazingbirths.com> domain name.
3. Respondent registered and used the <amazingbirths.com> domain name in bad faith.
B. Respondent submitted a Response which makes the following assertions:
1. The domain name at issue is not confusingly similar to Complainant’s mark because Respondent has rights in the same mark and domain which are superior to those of Complainant.
2. Respondent has rights and legitimate interests in the domain name at issue.
3. Respondent did not register and use the <amazingbirths.com> in bad faith.
It is clear from the Complaint and the Response that several women set up a business in 2004 in the fields of pregnancy, childbirth and related services. Respondent, one of the early organizers of the business, had previously registered the <amazingbirths.com> domain name in 2002. Complainant corporation was formed in 2005 by Respondent and other women who remain members of the Complainant LLC. Complainant commenced using the AMAZING BIRTHS mark and sought and obtained USPTO registration claiming a first date of use of April 15, 2004. The women involved in the Complainant LLC had a falling out, Respondent left the business, and now Complainant seeks transfer of Respondent’s domain. The allegations of the Response essentially confirm this state of affairs.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
Respondent, Lisa Kelly, argues that the dispute before the Panel is a business dispute between three business partners. It appears from both the Complaint and the Response that Respondent registered the <amazingbirths.com> domain name before Complainant was formed. Respondent further alleges that she, along with two other partners, formed Complainant LLC after the disputed domain name was registered and contends that she has always owned the disputed domain name and that the disputed domain name was never transferred to Complainant. Respondent also claims that the partners decided to dissolve their business association and, in order to do so, the different partners were to resign their interests in Complainant. However, according to Respondent, Respondent was the only one to resign her interest in the company. Respondent asserts that the other two partners committed a fraud in removing her from Complainant, and that Respondent still retains rights and interests in the LLC and the domain name at issue.
Complainant, Amazing Births LLC, admits that Respondent registered the disputed domain name before Complainant was created but claims that Respondent registered the disputed domain name for the sole purpose of utilizing it in connection with Complainant and for Complainant’s business. Complainant contends that it owns the disputed domain name for those reasons and that Respondent should not have retained any ownership interest in the disputed domain name. Complainant denies any fraudulent scheme to deny Respondent interest in the company. According to Complainant, Respondent left Complainant and was compensated for her departure.
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. In this case, however, Respondent points out that these causes of action are currently active cases that are pending with the courts. 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 is a question of contractual interpretation, and thus falls outside the scope of the UDRP. Accordingly the Panel elects to 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).
The Panel concludes that relief shall be DENIED.
James A. Carmody, Esq., Panelist
Dated: April 12, 2010
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