Green Conversion systems, LLC v. W Schmidt-Pathmann
Claim Number: FA1005001327151
Complainant is Green Conversion systems, LLC represented by Kurt Rieke, of Elias Group LLP, (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <greenconversionsystems.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.
Héctor A. Manoff as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 28, 2010.
On May 28, 2010, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <greenconversionsystems.com> domain name is registered with Network Solutions, LLC and that the Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 June 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 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 June 1, 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 June 21, 2010.
On June 24, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Héctor A. Manoff as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Complainant acknowledges that they have no registered trademark or service mark to base the complaint, although the disputed domain name is identical to Complainant’s company name.
2. Complainant asserts that Respondent is the father of Mr. Philipp Schmidt-Pathmann, a former employee.
3. Complainant alleges that Mr. Philipp Schmidt-Pathmann registered the disputed domain name in its own name, but on behalf of the Complainant.
4. Complainant asserts that Mr. Philipp Schmidt-Pathmann terminated its employment relationship with Complainant in May 2010.
5. Shortly after Mr. Philipp Schmidt-Pathmann left the company, Complainant requested Network Solutions to change the registrant, administrative contact and technical contact of the disputed domain name.
6. Network Solutions informed Complainant that they received a request to modify the registrant, administrative contact and technical contact of the disputed domain name by a person possessing the User ID and password to directly access the domain registration records. After that conversation, Complainant learnt that Respondent had been designated as registrant, administrative contact and technical contact of the disputed domain name.
7. Since Network Solutions received conflicting requests to modify the records of the disputed domain name, they locked the record pending the resolution of an arbitration proceeding or presentation of a bilateral agreement between Complainant and Respondent.
8. Complainant attempted to communicate with Mr. Philipp Schmidt-Pathmann but did not receive any response.
9. Respondent is not and has never been affiliated with Complainant.
10. Complainant believes that Mr. Philipp Schmidt-Pathmann changed the domain name record purposefully to conceal the true ownership of the domain.
1. Mr. Schmidt-Pathmann’s father is not the Respondent.
2. Mr. Schmidt-Pathmann was one of the originators and co-founders of the Green Conversion Systems concept/company, and the name Green Conversion Systems was invented by Mr. Schmidt-Pathmann.
3. Mr. Schmidt-Pathmann did not enter/access the Network Solutions website/account and change any information.
4. Mr. Schmidt-Pathmann is willing to turn over disputed Domain Name to Complainant at the earliest possible date
Complainant argues that while Respondent was employed at Complainant Company, he was tasked with registering the disputed domain name for the company. Complainant also argues that Respondent in this proceeding is actually the father of a former employee at Complainant’s company and that Respondent does not know that it is the registrant of the disputed domain name, because the former employee still holds the registration and login information for the disputed domain name. Further, Complainant argues that the former employee who is in control of the disputed domain name has violated the Nondisclosure agreement that was executed as part of his Employment Agreements with Complainant.
Respondent has alleged that it used to be the Executive Vice President and co-founder of Complainant Company, and as such had registered the disputed domain name for the business. Respondent contends that Complainant Company breached an employment contract and has refused to pay Respondent for a month of work since then. Further Respondent denies any involvement in the changing or modifying of the disputed domain name registration information and maintains that Complainant breached the employment contract that the parties had in place.
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.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
The Panel finds that this is a business and/or contractual dispute between a company and its former employee that falls outside the scope of the UDRP. See Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (dispute concerning employee’s registration of domain name in his own name and subsequent refusal to transfer it to employer raises issues of breach of contract and breach of fiduciary duty that are more appropriately decided in court, not before a UDRP Panel).
Moreover, as decided in Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005), it should be noted that: [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 thus dismisses the Complaint.
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.
Héctor A. Manoff, Panelist
Dated: July 8, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum