David and Rainy Robinson v. DRIVERSITY OF ANTIOCH /STEPHANIE ANIU
Claim Number: FA1010001350486
Complainant is David and Rainy Robinson (“Complainant”), California, USA. Respondent is DRIVERSITY OF ANTIOCH /STEPHANIE ANIU (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <driversityantioch.com>, registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 5, 2010; the National Arbitration Forum received payment on October 5, 2010.
On October 7, 2010, MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE confirmed by e-mail to the National Arbitration Forum that the <driversityantioch.com> domain name is registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE and that Respondent is the current registrant of the name. MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE has verified that Respondent is bound by the MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 3, 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@driversityantioch.com. Also on October 14, 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 November 3, 2010.
On November 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant alleges that the mark DRIVERSITY was registered in the past and has been in constant use since 1994. They own and use various domain names containing that mark, including in particular <driversity.com> and <driversityofantioch.com>. The disputed domain name is confusingly similar to the Complainant’s mark.
According to the Complainant, they and the Respondent entered into a contract in 2007. The Respondent breached that contract in April 2010 and is attempting to circumvent the consequences of that breach by creating an unauthorized website using the mark DRIVERSITY.
Thus, says the Complainant, the Respondent registered the disputed domain name in bad faith to divert the Complainant’s customers to her website. The Respondent is purposely and intentionally confusing customers and she is using the disputed domain name for profit and personal gain. Her use of the web site is tarnishing the DRIVERSITY mark.
Further, according to the Complainant, the Respondent has used the disputed domain name to send spam E-Mails to the Complainant’s customers. The Respondent pretends to be associated with the Complainant when in fact she is not, thus causing customer confusion.
B. Respondent
The Respondent states that she entered into an agreement with the Complainant in 2007 for the purchase of membership interests in the Antioch business location (including goodwill) of Driversity LLC. The Respondent paid substantial amounts to the Complainant through 2009. The Respondent ceased payments when the Complainant violated and repudiated obligations under the purchase agreement.
According to the Respondent, she began the use of the DRIVERSITY mark, tradename, and the domain name <driversityofantioch.com> at the suggestion of, and with the aid of, the Complainant.
The Respondent alleges that, between 2007 and 2009, the registration of the mark DRIVERSITY was cancelled and subsequently abandoned. A new application was submitted by the Complainant in March 2010.
The Respondent alleges that, at this time, she discovered that the purchase agreement was fraudulent, statements made were not true and that the Complainant violated the purchase agreement. In April 2010, she stopped payments against the fraudulent purchase agreement and requested arbitration. The Complainant again violated the purchase agreement by refusal to arbitrate. The Respondent sought legal assistance to resolve this dispute and was again met with continued Complainant refusal.
In July 2010, according to the Respondent, the Complainants redirected the website <driversityofantioch.com>. In order to continue her business, the Respondent was forced to obtain the disputed domain name to replace the one that had been redirected.
The Respondent goes on to describe in some detail subsequent events in the dispute between the parties. For the reasons set forth below, the Panel will not summarize those details. For the same reasons, the Panel will not summarize the details provided by the Respondent regarding the trademark registration history of the mark DRIVERSITY, nor will it summarize the Respondent’s arguments regarding the doctrines of laches and acquiescence.
The Respondent requests that the Panel refuse to transfer the disputed domain name and that it return to her the original domain name <driversityofantioch.com>.
The parties are engaged in a complex commercial dispute, which includes the right to use the mark DRIVERSITY.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Before analyzing the three elements of the Policy, the Panel will consider whether the present dispute is within the scope of the Policy.
As indicated above, the parties are engaged in a complex dispute involving a number of allegations, and involving the use of the tradename or trademark DRIVERSITY. 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, the 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.
The Panel concludes that the instant dispute contains a question of contractual interpretation, and thus falls outside the scope of the UDRP. Consequently, the Panel dismisses 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).
As a further preliminary issue, the Panel must deal with the Respondent’s request that the Panel order that the domain name <driversityofantioch.com> be returned to the Respondent. This Panel has been named only to deal with the dispute regarding the domain name <driversityantioch.com>. It has no power to deal with any dispute regarding any other domain name. If the Respondent wishes to pursue a claim under the Policy regarding the domain name <driversityofantioch.com>, then she can file a Complaint in accordance with the Policy regarding that domain name.
For the reasons set forth above, the Panel need not analyze this element of the Policy.
For the reasons set forth above, the Panel need not analyze this element of the Policy.
For the reasons set forth above, the Panel need not analyze this element of the Policy.
For the reasons set forth above, the Panel concludes that the Complaint shall be DISMISSED and that relief shall be DENIED.
Accordingly, it is Ordered that the <driversityantioch.com> domain name REMAIN WITH Respondent.
Richard Hill, Panelist
Dated: November 24, 2010
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