Rumba Room, LLC v. Steve Carbajal
Claim Number: FA1104001385191
Complainant is Rumba Room, LLC (“Complainant”), represented by Joel Bernstein of McDermott Will & Emery LLP, California, USA. Respondent is Steve Carbajal (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <rumbaroom.com> and <rumbaroom.org>, registered with Network Solutions LLC.
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.
Dennis A. Foster as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 21, 2011; the National Arbitration Forum received payment on April 22, 2011.
On April 21, 2011, Network Solutions LLC confirmed by e-mail to the National Arbitration Forum that the <rumbaroom.com> and <rumbaroom.org> domain names are registered with Network Solutions LLC and that Respondent is the current registrant of the names. Network Solutions LLC has verified that Respondent is bound by the Network Solutions LLC 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 April 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 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@rumbaroom.com and postmaster@rumbaroom.org. Also on April 22, 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 May 24, 2011.
On May 26, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dennis A. Foster as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
- Complainant, a California limited liability company formed on January 10, 2000, operated a nightclub, “Rumba Room”, from July 2000 through March 2011. That nightclub is currently being relocated. In connection with its operation of the club, Complainant obtained from the United States Patent and Trademark Office (“USPTO”) a registration for the service mark, RUMBA ROOM.
- The disputed domain names, <rumbaroom.com> and <rumbaroom.org>, are virtually identical to Complainant’s RUMBA ROOM mark. The additions of the generic top-level domains, “.com” and “.org”, offer no distinction.
- Until March 1, 2010, Complainant was the registered owner of the disputed domain names. The disputed domain name, <rumbaroom.com>, furnished information concerning Complainant’s nightclub operations, while the disputed domain name, <rumbaroom.org>, resolved to the former name.
- Respondent, a 20% minority owner of Complainant, had some administrative duties with respect to Complainant, but was never authorized to assume ownership of the disputed domain names, as he did on March 1, 2010.
- Respondent, Steve Carbajal, is not commonly known as either of the disputed domain names. Respondent is passively holding the disputed domain names, with either a notice about club relocation or links to third party websites, which does not constitute a bona fide offering of goods or services.
- Respondent registered and is using the disputed domain names in bad faith. The names are the property of Complainant, and Respondent’s unauthorized appropriation of the same constitute misappropriation and hijacking.
- Since the first quarter of 2010, Respondent engaged in abusive and disruptive behavior toward Complainant that caused Respondent to be barred from Complainant’s nightclub. During the ongoing conflict, Respondent wrongly took over ownership of the disputed domain names in order to disrupt Complainant’s business in bad faith. Respondent is currently holding the names hostage as a grudge against Complainant.
- Respondent was well aware of Complainant’s rights in the RUMBA ROOM mark, which is further evidence of Respondent’s bad faith actions. Moreover, Respondent’s passive holding of the disputed domain names is additional evidence of bad faith registration and use.
B. Respondent
- Respondent is fully aware of Complainant’s USPTO registered service mark, RUMBA ROOM, as Respondent was involved in obtaining the registration for Complainant.
- The Rumba Room nightclub officially closed on March 24, 2011, and, prior to the instant Complaint, Respondent had no knowledge of the club’s planned relocation.
- Respondent registered the disputed domain names in his name to remove the technical assistant and to prevent the registrations from expiring. Complainant’s nightclub business was undergoing severe cash flow problems at the time, and Respondent was responsible for making cash transfers between business accounts on behalf of Complainant.
- At the time that Respondent registered the disputed domain names in his name, Respondent’s relationship with Complainant’s principal owner, who is Respondent’s sister, was good.
- It was at the request of Complainant’s principal owner that Respondent bought 20% ownership in Complainant from a third party, and Respondent functioned thereafter in the role of owner/operator/general manager. Respondent’s responsibilities included maintaining Complainant’s website and conducting email marketing. Through Respondent’s efforts, Complainant saved thousands of dollars over several years.
- As a part-owner of Complainant, Respondent has a legitimate interest in the disputed domain names, and Respondent’s use of the names to inform the public that Complainant’s nightclub is no longer operational is a legitimate and bona fide purpose.
- Respondent did not register the disputed domain names in bad faith and has made no attempt to profit personally from their use since said registration. Complainant’s allegations of disruptive behavior are untrue, and it is Complainant’s actions, including the unsuccessful attempts to bar Respondent’s entry in Complainant’s nightclub, that are suspicious.
- Complainant was run informally as a family-owned business, in whose success Respondent still has a vested interest. Complainant’s principal owner has never contacted Respondent directly to request a transfer of the disputed domain names. Instead, Complainant has sought to defame Respondent and to bring this unnecessary Complaint.
Complainant is a California company that had operated the Rumba Room nightclub for about a decade, its closing occurring in March 2011. Complainant owns a valid registration for the service mark, RUMBA ROOM, with the USPTO (i.e., Registration No. 3487264; issued August 19, 2008).
Respondent registered the disputed domain names, <rumbaroom.com> and <rumbaroom.org>, on March 1, 2011. The names had been previous registered by Complainant, who used them in connection with its business. Respondent, a part-owner of Complainant and the brother of Complainant’s principal owner, uses the names to inform the public that Complainant’s nightclub is closed and for links to third party websites.
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.
However, the Panel will consider a preliminary issue of whether the matter is a business dispute outside of the scope of the UDRP.
Preliminary Issue: Fiduciary/Contractual Dispute Outside the Scope of the UDRP
In the view of the Panel, both parties affirm that Complainant owns rights in a valid USPTO registration for the mark, RUMBA ROOM; and that, prior to the Respondent’s registration of the disputed domain names, <rumbaroom.com> and <rumbaroom.org>, Complainant owned them. However, the Panel also notes that both parties agree that Respondent is a 20% owner of Complainant.
The parties disagree concerning the extent of management responsibilities assumed by Respondent in connection with his ownership interests in Complainant. Complainant asserts that Respondent had minimal authority with respect to Complainant’s operations, while Respondent claims that he was very active, on an informal basis, in various aspects of Complainant’s management, including the maintenance of Complainant’s website and oversight of Complainant’s business accounts. Respondent argues further that he registered the disputed domain names in his name not in bad faith, but to prevent the effective expiration of the registration at a time when Complainant’s finances were otherwise compromised.
Neither party has submitted documents sufficient to provide the Panel with a complete understanding of Respondent’s contractual relationship, if any, with Complainant. From the record, the Panel surmises that Respondent, as a part-owner of Complainant, is likely subject to some degree of fiduciary duty with regard to Complainant.
In analyzing this case, the Panel is aware that the Policy is intended to address the circumstance of cybersquatting, not circumstances involving contractual or fiduciary disputes. See, e.g., Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also AutoNation Holding Corp. v. Rabea Alawneh, D2002-0058 (WIPO May 1, 2002) (“The scope of an ICANN proceeding is extremely narrow: it only targets abusive cybersquatting, nothing else.”).
In view of the foregoing, the Panel concludes that Respondent’s significant ownership interest in and duties with respect to Complainant create at least a prima facie case that Respondent, as well as Complainant, has some legitimate interest in the disputed domain names. As such, the present case, while possibly raising actionable contractual or fiduciary claims, does not appear to the Panel to involve a credible allegation of cybersquatting and thus falls outside the scope of the UDRP. See Courtney Love v. Brooke 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…”). See Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006).
Having found the this dispute to be outside the scope of the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <rumbaroom.com>, <rumbaroom.org> domain names REMAIN WITH Respondent.
Dennis A. Foster, Panelist
Dated: June 9, 2011
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