Adya, Inc. v. A Clark / Intensity Webhosting
Claim Number: FA1011001360903
Complainant is Adya, Inc. (“Complainant”), represented by Dorian L. Jackson, California, USA. Respondent is A Clark / Intensity Webhosting (“Respondent”), represented by Ian Clark, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adyaclarity.com>, registered with eNom, Inc.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 30, 2010; the Forum received payment on November 30, 2010.
On November 30, 2010, eNom, Inc. confirmed by e-mail to the Forum that the <adyaclarity.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 December 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 23, 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@adyaclarity.com. Also on December 3, 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 December 21, 2010.
On December 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
In early January 2011, both parties made subsequent submissions to the Forum which did not comply with Supplemental Rule 7 and which are later discussed by the Panel.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges trademark rights and submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent broadly denies those allegations and argues, in particular, that the disputed domain name was registered with the full knowledge and permission of Complainant.
So far as relevant to the Discussion which follows, the pertinent facts are that Complainant manufactures water purifying tablets under the trademark ADYA and, whether or not Respondent could be described as a distributor of Complainant’s goods, Respondent has sold those goods in the past with Complainant’s permission.
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."
Preliminary Issue No. 1: Procedural Deficiency
As previously indicated, following the Complaint and Response, both parties made rounds of Additional Submissions. None of those submissions complied with the Forum’s Rules and it is open to the Panel to disregard them entirely. Nonetheless, for reasons now explained, the Panel has read and taken those submissions into account in reaching its Decision.
Preliminary Issue No. 2: Scope of the Policy
A fundamental question arises in this case as to whether the dispute between the parties properly falls for determination under the Policy.
In 1999, the World Intellectual Property Organisation produced a report in which it noted that good faith disputes between competing right holders or other competing legitimate interests over whether two names were misleadingly similar would not fall within the scope of the UDRP.
Earlier panels have held that, absent clear evidence of cybersquatting, the Policy is inapplicable to business disputes arising from which there is a question concerning the rightful ownership of the a domain name. So, for example, in Thread.com, LLC v. Poploff, WIPO Case D2000-1470, the panel refused to transfer the domain name, stating that the Policy did not apply because attempting “to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy.” (see also, First Nationwide Exchange, Inc. v. Reskyu, FA 956937 (Nat. Arb. Forum May 26, 2007)).
Similarly, previous panels have found that disputes between employers and employees are outside the scope of the Policy and should be decided in a court of law. In Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000), the panel held that a dispute concerning an employee’s registration of a domain name in his own name and his subsequent refusal to transfer it to his employer raised issues of breach of contract and breach of fiduciary duty that were more appropriately resolved in court, not before a UDRP panel (see also, Discover New England v. Avanti Group, Inc. FA 123886 (Nat. Arb. Forum Nov. 6, 2002)).
In Draw-Tite, Inc. v. Plattsburgh Spring Inc., WIPO Case D2000-0017, it was said:
“This Panel well recognizes that its jurisdiction is limited to providing a remedy in cases of ‘the abusive registration of domain names,’ or ‘Cybersquatting’ . . . Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”
Again, in Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel found the dispute to be outside the scope of the Policy because the respondent could not be characterized as a cybersquatter or individual who registered and used the domain names at issue in bad faith. The panel stated the purpose of the Policy is not to resolve disputes between parties who might each have legitimate rights in a domain name. The purpose of the Policy is to protect trademark owners from cybersquatters, that is, from people who abuse the domain name system in a very specific way, which specific way is outlined in Paragraph 4(a) of the Policy (see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Jan. 2, 2007)).
In the present case, neither party has shown particular concern for the Policy or what it requires to be shown. Were the Panel to have analysed the Complaint in accordance with the Policy, there is a real question as to whether Complainant would have satisfied Paragraph 4(a)(ii). That said, although Respondent is keen to characterize the matter as a business dispute, it gives little detail of the nature of the relationship between the parties or of the permission it alleges it had from Complainant to use and register the domain name.
What is clear, however, is that Respondent has sold Complainant’s goods bearing a trademark broadly corresponding with the disputed domain name with the Complainant’s knowledge and permission and under an unwritten agreement between the parties which Complainant is unenthusiastic to elaborate upon. On the available evidence, this is not a case squarely in line with Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903 and the many cases which have followed it’s reasoning. The Panel considers that there is ample weight in prior UDRP decisions to justify a ruling that the matter is properly one for another forum. Any hesitation the Panel may have initially had in that respect was resolved by the content of the non-compliant communications made to the Forum by the parties following the Response.
The Panel finds that the present dispute lies outside the scope of the Policy. It is accordingly decided that the Complaint be DENIED.
Debrett G. Lyons, Panelist
Dated: January 10, 2011
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