MediaSphere Medical, LLC v. PenzaMedia LLC
Claim Number: FA1106001392966
Complainant is MediaSphere Medical, LLC (“Complainant”), represented by Robert E. Campbell of White & Williams LLP, New Jersey, USA. Respondent is PenzaMedia LLC (“Respondent”), represented by James Penza, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <mediaspheremedical.com> and <innovationscrm.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.
Hon. Nelson A. Diaz (ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 9, 2011; the National Arbitration Forum received payment on June 10, 2011.
On June 10, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <mediaspheremedical.com> and <innovationscrm.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 June 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@mediaspheremedical.com, postmaster@innovationscrm.com. Also on June 14, 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 July 5, 2011.
On July July 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nelson A Diaz as Panelist.
On July 11, 2011, an Additional Submission was received, which complies with Supplemental Rule 7.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Respondent, PenzaMedia, LLC, offers submissions which allege that a Mr. James Penza is the owner of the company. Mr. Penza claims to own a controlling stake in Complainant, MediaSphere Medical, LLC. By way of that arrangement, Respondent claims to be the majority owner of Complainant. In support of this argument, Respondent has offered a certificate of formation from the State of New Jersey for MediaSphere Medical, LLC, Internal Revenue Service documents showing the assignment of an Employer Identification Number to Complainant bearing Mr. Penza’s name, a photocopy of The Journal of Innovations in Cardiac Rhythm Management which appears to indentify Mr. Penza as the Chief Technology Officer of Complainant, and a brochure listing Mr. Penza as a primary contact within Complainant’s business.
Throughout the response, Respondent refers to Complainant by the name Mr. Alex Slonim. Respondent has offered a table of contents for The Journal of Innovations in Cardiac Rhythm Management, which appears to identifiy Mr. Slonim as the President of MediaSphere Medical, LLC. Mr. Slonim’s name appears again on the certificate of formation submitted by Respondent indicating that he is a member of MediaSphere Medical, LLC along with Mr. Penza. Finally, Complainant submitted a document indicating that a Mr. Alex Slonim was the party attempting to register the THE JOURNAL OF INNOVATIONS IN CARDIAC RHYTHM MANAGEMENT mark. Respondent claims that the evidence submitted supports a finding that it is the rightful owner of Complainant and as such, is the owner of any and all common law rights Complainant may or may not own in either mark.
Complainant asserts that it is the rightful owner of the marks in question and makes no allusions toward the potential ownership of its company; however, it does allege to be operating its business through the disputed domain names. The owner of the disputed domain names, as conceded by Complainant, is Respondent. For Complainant to operate its business under the disputed domain names owned by Respondent there may potentially be a business or contractual arrangement between the two entities. Unfortunately, Complainant does not address that issue specifically.
In this instance, the Panel finds that this is a business and/or contractual dispute between two companies that falls outside the scope of the UDRP. 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, 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.
Based upon the reasoning outlined in the aforementioned cases and the record, the Panel concludes that the instant dispute contains a question of contractual interpretation, and thus falls outside the scope of the UDRP. The Panel must 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 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).
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.
The Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that this matter be DISMISSED
Hon. Nelson A. Diaz (ret.), Panelist
Dated: July 13, 2011
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