American Infrastructure, Inc. v. Jeffrey W. Rode
Claim Number: FA1003001311550
Complainant is American Infrastructure, Inc. (“Complainant”), represented by William A. Bianco, of Davis Graham & Stubbs LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <americaninfrastructureinc.com> and <americaninf.com>, registered with Network Solutions, LLC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 4, 2010.
On March 5, 2010, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <americaninfrastructureinc.com> and <americaninf.com> domain names are registered with and that the Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 March 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 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 and email@example.com by e-mail. Also on March 9, 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 29, 2010.
Complainant’s Additional Submission was received on April 2, 2010.
On April 2, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant is a contractor in the business of installing sanitary
sewer, water and storm sewer facilities, mainly in
Respondent is a former employee of Complainant and is currently
employed as a general contractor in
Complainant has common law rights in the “American Infrastructure” mark that date back to January, 2004.
The domain names in dispute are identical or confusingly similar to Complainant’s mark.
Respondent has no right or legitimate interest in the domain names. Respondent registered the domain names as the agent/or while employed by American Infrastructure. Without notice to or authorization from Complainant, Respondent listed himself, rather than Complainant, as owner of the domain names.
The domain name “americaninfrastruture.com” was registered for Complainant by Respondent, who was an acquaintance of Complainant’s Chief Operating Officer. Later, Respondent was hired as an employee of Complainant. Respondent, now an employee of Complainant, registered “americaninf.com” at Complainant’s request, but again without the knowledge of Complainant, registered himself as Owner.
In September, 2007, Respondent resigned from employment at Complainant. Complainant continued its exclusive use of both domain names.
Complainant later learned that the domain names were registered to Respondent. Complainant demanded transfer of the domains to Complainant. Respondent failed to respond to the request, thus prompting this proceeding.
Respondent is Vice President of a general contractor located in
During the years 2002 through 2004, Respondent became acquainted with the Krekelers and others now employed by Complainant while we were all employees of another company. Mr. Krekeler decided to start a new company. Mr. Krekeler and I had several conversations about the direction of the new company. A mutual interest was expressed by both of us about me joining the new company. At one meeting, the discussion of having e-mail was brought up. I agreed we should secure a domain name. As I had a couple of other domain names, I offered to just add the domain name to my current account. We decided upon “americaninfrasstructureinc.com”. No new or separate account was created. It was simply added to my current account.
On February 4, 2004, I became Vice President of Complainant and held that position until I departed the company in September of 2007. At the request of Mr. Krekeler, during 2007 I did investigate other names that were available and added them all to my account so that they would not be taken by anyone else. After I presented a list of the available names to Mr. Krekeler, he decided on “americaninf.com”.
Prior to the latest renewal of the disputed domain names, I have personally paid for the maintenance of the domain names. I have never denied Complainant the use of these domain names.
In an effort to assist with the closure of this arbitration, seeing as how the domain name “americaninfrastructureinc.com” so closely mirrors that of the company name, I would not have a problem turning this domain name over to Complainant. Should the panel determine that both should be turned over to Complainant, I will comply with the decision.
C. Additional Submissions
Complainant contends that the Response fails to rebut Complainant’s prima facie case. Complainant contends that Respondent was an agent or employee of Complainant when registering the domain names and wrongly registered them in his own name rather than in the name of the principal. Complainant further contends that it is evidence of bad faith for Respondent to refuse to transfer the domain names to Complainant.
1. Respondent consents to the transfer of the domain name <americaninfrastructureinc.com>.
2. Respondent does not clearly consent to the transfer of the domain name <americaninf.com> so this domain name remains contested.
3. The Uniform Domain Name Dispute Resolution Policy applies to alleged abusive registration of domain names. There is no evidence in this case proving abusive registration of the disputed domain names. It is beyond the scope of the Policy to decide the dispute between the parties regarding the domain name <americaninf.com>.
4. The domain name <americaninfrastructureinc.com> must be transferred to Complainant. Complainant’s Complaint as to <americaninf.com> must be dismissed.
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.
Respondent consents to transfer the <americaninfrastructureinc.com> domain name to Complainant. In a circumstance such as this the Panel is authorized to forego the traditional UDRP analysis and order immediate transfer of the <americaninfrastructureinc.com> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd.-Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant…Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Left for consideration is the domain name <americaninf.com>. Complainant cites Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) to support its position. That case held that a former employee could not register the employer’s domain name. That is factually different than this case. Complainant cites Macado’s Inc. v. Henderson, FA 1180994 (Nat. Arb. Forum June 17, 2008) to support its position. That case held that when a trademark holder permits an agent to maintain a domain name in the agent’s name for business purposes, the registration and use cannot amount to bad faith. Neither of these cases supports Complainant’s position.
There is no question that Respondent registered the domain name for the benefit of the Complainant for which Respondent was then an employee. Respondent says that Complainant was fully aware that Respondent registered the domain name in Respondent’s name. Complainant says he expected Respondent, who both agree was handling the domain names, to register the domain name to Complainant.
The Panel does not find evidence of abusive registration and/or bad faith required under the Policy. The questions here are ones of credibility, corporate management, and the business relationship between the parties. These matters are outside the scope of the Policy. See Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007) (“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.”); see also 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) (holding that a case involving breach of a fiduciary duty is not the kind of controversy that the Policy was designed to address).
Respondent does not state the reasons why he wants to retain the disputed domain name which is currently being used by Complainant with the consent of Respondent. It does not appear that the domain name could be used for any other purpose other than as it is now being used. However, it is the decision of the Panel that the Complaint regarding the domain name <americaninf.com> should be dismissed.
Under the facts and circumstances of this case the Panel concludes that relief should be
GRANTED IN PART and DENIED IN PART.
Accordingly, it is Ordered that the <americaninfrastructureinc.com> domain name be TRANSFERRED from Respondent to Complainant. It is further Ordered that the Complaint regarding the domain name <americaninf.com> be dismissed.
Tyrus R. Atkinson, Jr., Panelist
Dated: April 16, 2010
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