Bsecure Technologies, Inc. v. Michael Cadenhead
Claim Number: FA1008001339191
PARTIES
Complainant is Bsecure Technologies, Inc. (“Complainant”), represented by Cathryn Berryman, of Winstead, P.C., Texas, USA. Respondent is Michael Cadenhead (“Respondent”), represented by Lawrence H. Kolin, of Alvarez, Sambol & Winthrop, P.A., Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <besecure.com>, registered with GoDaddy.com, Inc.
PANEL
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.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 4, 2010.
On August 5, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <besecure.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 August 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 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@besecure.com. Also on August 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 deficient on August 30, 2010 because the Annexes were not separated from the Response.
Additional Submissions were received by the National Arbitration Forum from both parties, and those additional submissions have been fully considered in the conduct of this proceeding.
On September 14, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a world leader in the field of Internet security.
From 1982 to the present, Complainant has continuously used the trademark BSECURE in connection with its marketing of Internet security products and services.
That mark is registered with the United States Patent and Trademark Office.
Respondent is not authorized to use Complainant’s mark.
Respondent’s domain name <besecure.com> is confusingly similar to Complainant’s BSECURE mark.
The website to which the contested domain name currently resolves posts no content.
Formerly, that website posted links to the websites of Complainant’s business competitors.
Respondent is both a former employee and current shareholder of Complainant.
By virtue of this relationship, Respondent has actual knowledge of Complainant’s superior rights in the disputed domain name.
Respondent has 232 domain names registered in its name.
Respondent has no legitimate use for the subject domain name.
Respondent registered the domain name for the purpose of selling it to Complainant.
Respondent registered and uses the <besecure.com> domain name in bad faith.
B. Respondent
Respondent denies that it has registered or uses the disputed domain name in bad faith.
Respondent denies that it has used the contested domain name to divert Internet users to the websites of Complainant’s business competitors.
Because Complainant and Respondent are in different businesses, and because the websites of Complainant and Respondent are different, there is no likelihood of confusion among Internet users arising from Respondent’s use of the domain.
The expression “be secure,” which forms the core of Respondent’s domain name, consists of common terms to which Complainant has no superior right.
C. Additional Submissions
Complainant
In its Additional Submission, Complainant alleges, among other things, that:
Respondent only began to suggest that it was using or planning to use the contested domain name in connection with the marketing of a pest control business after this dispute arose.
Complainant and Respondent are both residents of and doing business in the United States, specifically in the State of Florida.
In 2006, Complainant instructed Respondent to register the disputed domain name while Respondent was an active employee of Complainant.
For a time after February of 2006, the domain name resolved to Complainant’s website.
Respondent
In its Additional Submission, Respondent alleges, among other things, that:
Respondent has not taken advantage of its present or former business relationship with Complainant in any way.
Respondent and Complainant have other disputes between them which may become the subject of civil litigation.
DISCUSSION AND FINDINGS
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.”
From our review of the submissions of the parties, it is clear that this is not a dispute within the contemplation of the Policy, which is intended solely to address instances of “cyber-squatting,” defined as the abusive registration and use of Internet domain names. Rather, this is a dispute between business associates which should be confided to the jurisdiction of the appropriate local or national courts. See, e.g., Summit Indus., Inc. v. Jardine Performance Exhaust Inc., D2001-1001 (WIPO Oct. 15, 2001):
[T]he question presented is outside the purview of the UDRP, in that it involves questions of the extent of rights transferred and retained under a stock purchase agreement. Such questions should be determined in an arbitration conducted by agreement of the parties or by a court of law. Accordingly, the Complaint must be dismissed.
See also Nintendo of Am. Inc. v. Alex Jones, D2000-0998 (WIPO Nov. 17, 2000):
It is not the function of an ICANN Administrative Panel to resolve all issues concerning the use of intellectual property rights. Matters beyond the narrow purview of the Policy are for the courts of appropriate jurisdictions.
See also Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007):
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.
DECISION
For the reasons indicated, it is Ordered that the Complaint herein be, and it is hereby, DISMISSED.
Terry F. Peppard,
Panelist
Dated: September 29, 2010
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