African Leadership, Inc. v. Paul Warren
Claim Number: FA1102001373373
Complainant is African Leadership, Inc. (“Complainant”), represented by Greg Reynolds of Riley Warnock & Jacobson, PLC, Tennessee, USA. Respondent is Paul Warren (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mochaclub.org>, <africanleadership.org>, <africanleadership.com>, and <africanleadership.net>, registered with Wild West Domains, 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.
Hector A. Manoff as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 16, 2011; the National Arbitration Forum received payment on February 16, 2011.
On February 17, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <mochaclub.org>, <africanleadership.org>, <africanleadership.com>, and <africanleadership.net> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 February 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 10, 2011 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@mochaclub.org, postmaster@africanleadership.org, postmaster@africanleadership.com, and postmaster@africanleadership.net. Also on February 18, 2011, 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 March 9, 2011.
An additional submission from Complainant was timely received by the Forum on March 14, 2011.
On March 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hector A. Manoff as Panelist.
On March 18, 2011, the Forum received a timely additional submission from Respondent, which was also considered by the Panel.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant contends that it has continuously used the MOCHA CLUB mark since 2005 to identify its community based website and religious services where consumers can support ongoing educational, orphan, clean water, and health care projects in Africa. Further, Complainant contends that it has used the AFRICAN LEADERSHIP mark since 2000 to identify its various religious and humanitarian projects in Africa, such as training pastors and church leaders and funding relief and development projects.
2. While Complainant acknowledges that it lacks trademark registrations for the MOCHA CLUB and AFRICAN LEADERSHIP marks, it contends that it has common law rights in the marks because of its continued and ongoing use of the marks to promote its services.
3. Complainant alleges that it was the original registrant for the <africanleadership.org>, <africanleadership.com>, and <africanleadership.net> domain names, and that it hired Mr. Matt Ruff to manage the <mochaclub.org> domain name. Complainant also asserts that it paid all the expenses.
4. Complainant argues that when Larry Warren was removed from his capacity at Complainant’s board, he convinced Mr. Ruff to transfer the domain names to Respondent.
5. Complainant contends that Respondent Paul Warren has no rights or legitimate interest in the disputed domain names.
6. Complainant contends that the domain names were transferred for the bad faith purpose of disrupting Complainant’s business activities, and to provide Larry Warren a bargaining chip to persuade Complainant to pay substantial monies to him.
7. Complainant asserts that the forced transition to different websites caused consumer confusion and disruption to Complainant’s charitable and fundraising efforts.
B. Respondent
1. Respondent contends that his brother, Larry Warren, founded Complainant company, African Leadership, Inc., over ten years ago and that Respondent has been and is currently an agent for his brother.
2. Respondent argues that Larry Warren was the president of the company when he approached his friend Matt Ruff to register the disputed domain names so that Larry could use them for his mission work in Africa.
3. Respondent argues that since the disputed domain names were Larry Warren’s creation and used continually by him, Larry Warren gained trademark rights over the titles “African Leadership” and “Mocha Club.”
4. Respondent argues that Matt Ruff and Larry Warren registered the disputed domain names under his agent and brother, Paul Warren, since African Leadership decided not to renew their registration in the fall of 2010.
5. Respondent argues that Larry Warren separated from African Leadership in the fall of 2010 after perceiving a change in the direction that its appointed leadership desired to take, and took the disputed domain names with him.
6. Respondent asserts that Larry Warren, of whom he is an agent, has legitimate interests in the disputed domain names due to the fact that he developed and used them continuously since their registration.
7. Respondent asserts that Complainant never paid for the registration or maintenance of the disputed domain names in its corporate capacity, but this was done by Matt Ruff on behalf of Larry Warren as an individual.
8. Respondent further contends that, since Larry Warren is continuing the work in Africa for which the trademarks and disputed domain names were created, he is engaged in a bona fide offering of services related to such domain names.
9. Respondent also argues that, as an individual, Larry Warren has been commonly known to be the founder of African Leadership and has acquired trademark rights to this name.
10. Respondent argues that Larry Warren has no history of attempting to sell the
Domain Names in question, and has not acquired numerous other sites unrelated to his work in Africa.
C. Additional Submissions
Complainant
1. Respondent does not rebut the fact that Complainant has established common law trademark rights in AFRICAN LEADERSHIP and MOCHA CLUB by using these marks consistently in commerce as a source identifier for the last ten years.
2. Respondent Paul Warren does not even argue that he has personal rights or a legitimate interest in the disputed domain names and thus, fails to establish any right or legitimate interest in them. Instead, he argues that he is an “agent” for Larry Warren. However, Respondent states that the Panel should not consider this argument, because Larry Warren is not the Registrant of the disputed domain names.
3. Complainant argues that Larry Warren has not made any use of the disputed domain names since Paul Warren became the Registrant, and that Larry Warren is not “commonly known” by the disputed domain names, and that he has failed to offer any evidence in this regard.
4. Complainant further asserts that Larry Warren did not originate or create the trademarks “African Leadership” or “Mocha Club.”, and that he never used the trademarks in any individual capacity.
5. Complainant asserts that Respondent’s claim that “Complainant never paid for the registration or maintenance of the Domain Names in its corporate capacity” is false and provides an affidavit of Eddy Messick to support its assertion.
6. Complainant contends that the disputed domain names were transferred and re-registered in the name of Respondent in order to disrupt the business of African Leadership.
Respondent
1. Respondent contends that Larry Warren is commonly known by the disputed domain names and provides evidence.
2. Respondent argues that Larry Warren did originate the trademark for African Leadership.
3. Respondent argues that the sole reason that Paul Warren, acting as agent for Larry Warren, and/or Larry Warren, acting on his own behalf, has not used the Domain Names at issue is because Larry Warren is still in the first 90 days of setting up his new ministry.
4. Respondent has not solicited funds from Complainant in exchange for the disputed domain names.
After
having reviewed both parties parties’ arguments
and evidence, the Panel concludes that this dispute does not constitute a case
of abusive registration and, thus, it falls outside the scope of the Policy and
should be decided by the Courts.
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.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
Complainant
does not have a trademark registration for “AFRICAN LEADERSHIP” nor for “MOCHA
CLUB”, nort did it prove
to have acquired common law rights on those marks. Moreover, it acknowledged
that it had registered the disputed domain names several years ago, and that
they were under its control until ex board member Larry Warren left the company
less than one year ago. According to evidence submitted by Complainant, the
disputed domain names were transferred to Respondent and not registered by him.
Even
though Complainant claims that Mr. Ruff was not authorized to transfer the
domain names to Mr. Paul Warren, the Panel believes that each party might have
rights ion the
disputed domain names.
Taking into account that the UDRP was implemented to address abusive cybersquatting and not contractual or legitimate business disputes, the Panel decides to dismiss 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 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). See also Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), (holding that “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.”. See also Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Nat. Arb. Forum July 20, 2000), the panel indicated that legitimate disputes should be decided by the courts: The adopted policy establishes a streamlined, inexpensive administrative-dispute resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.” Thus, the fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute is a feature of the policy, not a flaw. The policy relegates all “legitimate disputes” to the courts. Only cases of abusive registrations are intended to be subject to the streamline [sic] administrative dispute-resolution procedure.
For the reasons presented above, the Panel concludes that relief shall be DENIED.
Accordingly, the Complaint is DISMISSED.
Hector A. Manoff, Panelist
Dated: March 29, 2011
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