ESI Canton, LLC v. David Epstein
Claim Number: FA 1356618
Complainant is ESI Canton, LLC (“Complainant”), represented by Heather L. Stevenson of The Kim Firm, LLC, Georgia, USA. Respondent is David Epstein (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <earthsolutions.com>, registered with GoDaddy.com, Inc.
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.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 4, 2010; the National Arbitration Forum received payment on November 4, 2010.
On November 5, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <earthsolutions.com> domain name is registered with GoDaddy.com, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 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@earthsolutions.com. Also on November 15, 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 Response was received on December 8, 2010 after Respondent’s deadline to submit a Response. The Forum does not consider this Response to be in compliance with ICANN Rule 5(a).
On or about November 8, 2010, Respondent appears to have submitted further statements, which the Panel views as supplements to the December 8, 2010 Response.
On December 10, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael A. Albert as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends, among other things, that:
Complainant purchased the Disputed Domain Name under a bill of sale executed on or about March 18, 2010 (“Bill of Sale”) for the assets of Earth Solutions LLC, Earth Solutions, Inc., and The Jewelry Academe (collectively, “Earth Solutions”), with Respondent acting as Earth Solutions’ authorized representative;
Complainant tendered payment in the form of a check made out to Brock Clay Calhoun & Rogers, LLC as required under the Bill of Sale;
Respondent failed to deposit the check and Complainant later learned that Respondent had severed professional ties with Brock Clay Calhoun & Rogers, LLC and issued a stop payment on the check once it became clear that Respondent had no intention of cashing the check;
Respondent has modified administrative access to the Disputed Domain Name and redirected the Disputed Domain Name to a webpage using a similar graphic skin and logo, stating that due to a legal dispute the Disputed Domain Name was closed;
Respondent has obtained a copy of Complainant’s webpage, <theearthsolutions.com>, and has made the Disputed Domain Name appear identical in trademark, header and footer, graphics, logo, products, and product descriptions;
Respondent has intercepted and cashed checks from Complainant’s customers and has collected orders from customers who believed they were purchasing from <theearthsolutions.com>, when, in fact, they were placing orders through the Disputed Domain Name.
B. Respondent
Respondent contends, among other things, that:
Complainant has not paid for the assets under the Bill of Sale, including the Disputed Domain Name;
Respondent’s attorney did not sign the Bill of Sale so as to confirm the receipt of funds into escrow;
Complainant is infringing Respondent’s copyrights and trademarks by continuing to use the Disputed Domain Name and mirroring the image, display, and merchandise of the Disputed Domain Name by Complainant’s operation of <theearthsolutions.com> and <envisageessentials.com>;
Respondent is pursuing this dispute through the legal system and has retained counsel.
C. Additional Submissions
Respondent further contends, among other things, that:
Complainant is making inaccurate statements to customers indicating that it purchased Respondent’s contacts;
Complainant has previously attempted and failed to acquire rights to the Disputed Domain Name in this forum, see Claim No. FA1008001340353.
For the reasons set forth below, the Panel finds the current matter to be outside the scope of the UDRP Policy.
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 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.
The Panel will first consider two preliminary issues, namely: Whether the Panel will consider Respondent’s deficient Response, and whether this matter is a contract dispute outside the scope of the UDRP.
Preliminary Issue No. 1: Deficient Response
The Response is not in compliance with Rule 5 because it was submitted in electronic copy after the Response deadline. Under Rule 14(a) a late submission under Rule 5 amounts to a default and the Panel may infer that Respondent does not deny the allegations in the Complaint under Rule 14(b). See Allianz, Compañía de Seguros y Reaseguros S.A. v. Michael, D2009-0942 (WIPO Sept. 22, 2009). Consequences for the Respondent’s noncompliance are addressed to the Panel’s sound discretion. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the response is solely in the discretion of the panelist); see also UFCW Int’l Union v. Union Automation, FA 94665 (Nat. Arb. Forum June 8, 2000) (holding that the untimely response without a motion or affidavit does not controvert the complainant’s allegations and evidence and the panel may take all reasonable assertions in the complaint as true); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (deciding to consider the respondent’s response even though it was deficient because it provided useful information to the panel in making its decision).
The Panel has in its discretion considered the Response, notwithstanding its untimeliness. Inasmuch as no party has been shown to have been damaged by the slight delay and in the interests of considering all relevant facts and reaching an appropriate resolution of this dispute, the Panel finds that consideration of the Response is warranted.
This matter is primarily a contract dispute relating to the execution of the Bill of Sale. Specifically, the parties dispute whether Complainant adequately performed under the Bill of Sale in rendering payment. Resolution of this dispute likely involves issues pertinent to the common law of contracts in the appropriate jurisdiction and is not appropriately addressed to this forum.
The UDRP was implemented to address abusive cybersquatting, not contractual or other genuine business disputes. Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (finding dispute outside scope of ICANN Policy because issue turned on contract dispute); 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.”); 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); Discover New England v. The Avanti Group, Inc., FA 123886 (Nat. Arb. Forum Nov. 6, 2002) (finding the dispute outside the scope of the UDRP because the dispute centered on the interpretation of contractual language and whether or not a breach occurred); 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); Commercial Publ’g Co. v. EarthComm., Inc., FA 95013 (Nat. Arb. Forum July 20, 2000) (stating that the Policy’s administrative procedure is “intended only for the relatively narrow class of cases of ‘abusive registrations.’” Cases where registered domain names are subject to legitimate disputes are relegated to the courts).
Moreover, Respondent has indicated that he is concurrently pursuing this matter in the courts and has retained an attorney in advance of such efforts. Rule 18(a) gives the Panel discretion to terminate a proceeding “[i]n the event of any legal proceeding initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint.” See Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007) (dismissing the complaint because of “possible causes of action for breach of contract or fiduciary duty” and observing that “[n]ational courts are better equipped to take evidence and to evaluate its credibility” in such actions). In this case, a cause of action for breach of contract appears imminent and the disputed facts are not readily decipherable from the parties’ submissions.
For the reasons stated above, the Panel deems it unnecessary to consider the three elements of the Policy. Inasmuch as this matter is outside the scope of the Policy, the merits of the dispute cannot be reached in this proceeding.
For the reasons presented above, the Panel concludes that relief shall be DENIED.
Accordingly, the Complaint is DISMISSED.
Michael A. Albert, Panelist
Dated: December 30, 2010
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