national arbitration forum

 

DECISION

 

Door Control Services, Inc. v. Joshua Mcgeehan

Claim Number: FA1107001397555

 

PARTIES

Complainant is Door Control Services, Inc. (“Complainant”), represented by Matthew H. Swyers of The Trademark Company, PLLC, North Carolina, USA.  Respondent is Joshua Mcgeehan (“Respondent”), Missouri, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <topdooralarm.com>, <topdooralarm.net>, <topdooralarm.org>, <topdooralarm.biz>, <topdooralarm.info>, and <top-door-alarm.com>, registered with Godaddy.Com, Inc.

 

PANEL

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.

 

Calvin A. Hamilton as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 7, 2011; the National Arbitration Forum received payment on July 7, 2011.

 

On July 11, 2011, Godaddy.Com, Inc. confirmed by e-mail to the National Arbitration Forum that the <topdooralarm.com>, <topdooralarm.net>, <topdooralarm.org>, <topdooralarm.biz>, <topdooralarm.info>, and <top-door-alarm.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 July 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 4, 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@topdooralarm.com, postmaster@topdooralarm.net, postmaster@topdooralarm.org, postmaster@topdooralarm.biz, postmaster@topdooralarm.info, and postmaster@top-door-alarm.com.  Also on July 15, 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 19, 2011.

 

An Additional Submission was filed by the Complainant on or about July 27, 2011. The Submission was defective as it did not comply with the requirements of Supplemental Rule 7. Nevertheless, the document will be considered by the Panel.

 

On July 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

 

Claimant alleges that Respondent has knowingly infringed upon Complainant’s service mark TOP DOOR ALARM by registering and using domain names which are identical or nearly identical to Complainant’s trademark. Further, that Respondent has used these Domain Names for the purpose of diverting unsuspecting Internet users from Claimant’s website to the website of Respondent’s employer, a competitor of Complainant. Claimant continues that Respondent deceives Internet users who intend to access Complainant’s website into believing that the goods offered by Respondent are in some manner associated, sponsored, or affiliated with those related goods and services offered by Complainant. Moreover, to the extent that Internet users realize after being directed by Domain Names to Respondent’s employer’s website that said website is not affiliated with Complainant, injury in the form of initial interest content has already occurred. Complainant believes that for these reasons the Domain Names should be transferred to the Complainant.

 

 

B. Respondent

 

Respondent maintains that he has not infringed on any trademark nor had any intent to infringe on any patent or trademark. Respondent believes that the TOP DOOR ALARM trademark infringes Respondent’s Patent and would therefore have to be reversed. Respondent claims that he has stated as much to Matthew H. Swyers, Complainant’s authorized representative. Respondent alleges that the Door Switch has been known as the patented top of the door alarm system prior to any trademark or production of product by Door Control services Inc. Further, that the trademark is confusing to the customers of the door switch given that there was prior use of top door alarm, and that the domain names were purchased, along with other websites with the intent of building sites for each domain. Respondent also points out that the top door alarm terminology was included in the description of the door switch patent. Respondent  asserts that the TOP DOOR ALARM and all of its product and trademark are in direct violation of the door switch patent and should not be allowed to manufacture its products nor have rights to the trademark as said use of the trademark infringes Respondent’s patent. Further, that said use is in bad faith and only to steal away customers from The Door Switch web site. Finally, Respondent asserts that Claimant cannot claim exclusive use of the TOP DOOR ALARM since each individual word in the mark is not protectable making the entire mark non-protectable and at odds with the anti-dissection principle of trademark law.

 

C. Additional Submissions

As previously stated, Claimant did file an Additional Submission which, although it did not comply with the Supplemental Rule 7, will be considered by the Panel.

 

FINDINGS AND DISCUSSION

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 first consider a preliminary issue, namely:

 

·        Whether this matter is a business dispute outside the scope of the UDRP.

 

Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP

 

Respondent argues that Complainant’s TOP DOOR ALARM product infringes Respondent’s The Door Switch patent (No. 7,466, 237 approved December 16, 2008) and that Complainant did not start to produce any product prior to the door switch patent and did not get a trademark for the TOP DOOR ALARM mark until 2010.  In effect, Respondent through the prior use argument is staking out common law rights to the Names.

 

Furthermore, Respondent claims that “top door alarm” is mentioned in the patent application for the door switch patent, and therefore, the TOP DOOR ALARM mark is descriptive of Respondent’s patent. Given these factors, Respondent claims that the TOP DOOR ALARM trademark should be reversed as it conflicts with Respondent’s patent.  Indeed, in its patent application, Respondent does use a phrase which encompasses the words “…top of the door and the alarm.”

 

Respondent asserts that he emailed <info@thetrademarkcompany.com> and was put in touch with a Matthew H. Swyers.  Respondent claims that Mr. Swyers personally told him that the TOP DOOR ALARM mark would have to be reversed considering that it infringes on Respondent’s The Door Switch patent. The conversation apparently did take place. However, Claimant denies having recognized Respondent’s superior rights.

 

The Panel finds that this is a business and/or contractual dispute between two parties that falls outside the scope of the UDRP. According to Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), 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 Indus. 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 questions of which fall outside the scope of the UDRP and accordingly relief is denied. 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).

 

DECISION

 

For the reasons presented above, the Panel concludes that this dispute lies outside the scope of the UDRP policy and accordingly relief shall be DENIED.

 

 

Calvin A. Hamilton, Panelist

Dated:  August 18, 2011

 

 

 

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