Ed Craig and The Packager,
Inc. v. isConsulting
Claim Number: FA1004001318586
PARTIES
Complainant is Ed Craig and The
Packager, Inc. (“Complainant”),
represented by Ryan C. Craig,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thepackager.com>, registered with Tucows, 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.
Timothy D. O’Leary as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 12, 2010.
On April 13, 2010, Tucows, Inc. confirmed by e-mail to the
National Arbitration Forum that the <thepackager.com> domain name is
registered with Tucows, Inc. and that the
Respondent is the current registrant of the name. Tucows, Inc.
has verified that Respondent is bound by the Tucows,
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 April 20, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of May 10, 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@thepackager.com. Also on April 20, 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 May 10, 2010.
On May 17, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Timothy D. O’Leary as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
Preliminary Issue: Contractual Dispute Outside the Scope of the UDRP
Respondent contends that it was hired by Complainant to develop a website using a domain name that was previously registered by Complainant or its agent. Respondent states that at the time the contract was made, Respondent specifically discussed the disputed domain name with Complainant. Respondent informed Complainant that it was in use by another party. Complainant showed no interest trying to obtain it. Respondent contends that no request was ever made of Respondent to obtain the disputed domain name on behalf of Complainant. Respondent asserts that the contract between Respondent and Complainant contains no agreement regarding the disputed domain name and Complainant never conveyed the authority to administer existing domain names or to register new domain names to Respondent. Respondent discovered after the contract was made that the disputed domain name was available and so Respondent registered it in its own name and of its own accord at its own expense. Respondent declares that Complainant never did ask Respondent to register it. Respondent never asked Complainant for any reimbursement of those fees or expenses. Respondent argues that Complainant breeched the terms of the contract by altering the timeline and deliverables without the written authorization of Respondent. Respondent further argues that Complainant then terminated the agreement because Respondent and Complainant were no longer able to reconcile differences. Respondent states that it spent substantial time in the development of the website for Complainant and Respondent took Complainant’s deposit as payment in full for these services. Respondent further states that in its prior negotiations it has offered to transfer the disputed domain name to Complainant upon resolution of the dispute over the deposit. Respondent notes however that if Respondent refunded the deposit, Complainant would have no right to the disputed domain name based upon the agreement between the parties.
Complainant alleges that Respondent’s only connection to the disputed domain name is through Complainant. Complainant states that it hired Respondent to develop a website for Complainant and as a part of that project, Respondent registered the disputed domain name on Complainant’s behalf. Complainant declares that Complainant asked Respondent to register the disputed domain name on its behalf and agreed to reimburse Respondent for the registration fee. Complainant asserts that Respondent failed to develop the website per their agreement and after abandoning the project Respondent retained the disputed domain name. Complainant argues that Respondent is attempting to use the disputed domain name as leverage against Complainant to avoid refunding Complainant amounts that Complainant advanced to Respondent in connection with the website development agreement. Complainant states that the disputed domain name’s registration expired in January 2010 at which point Respondent renewed registration of the disputed domain name.
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. Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007). Complex cases such as the one presented are better decided by the courts than by a UDRP panel.
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.
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 Fuz 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).
DECISION
The Panel concludes
that this matter involves a contractual business dispute arising out of a business relationship and thus falls
outside the scope of the UDRP.
Accordingly, it is Ordered that the Complaint
is Dismissed.
Timothy D. O’Leary, Panelist
Dated: May 28, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page