Outdoor Identities, LLC v. John Marquez
Claim Number: FA1108001405004
Complainant is Outdoor Identities, LLC (“Complainant”), represented by Andrew C. Landsman of Godfrey & Kahn, S.C., Wisconsin, USA. Respondent is John Marquez (“Respondent”), represented by John T. Marquez, Jr., Mississippi, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fishouflageapparel.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 26, 2011; the National Arbitration Forum received payment on August 26, 2011.
On August 26, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <fishouflageapparel.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. 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 August 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 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@fishouflageapparel.com. Also on August 29, 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
September 20, 2011.
On September 21, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
A timely Additional Submission was received from the Complainant on September 26, 2011.
A timely Additional Written Statement was received from the Respondent on October 3, 2011.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. The domain name <fishouflageapparel.com> is identical to Complainant’s FISHOUFLAGE trademark.
2. Respondent has no rights or legitimate interests in the disputed domain name.
3. Respondent is using the disputed domain name in bad faith.
B. Respondent
1. The disputed domain name is not confusingly similar to Complainant’s mark.
2. Respondent is commonly known by the disputed domain name and has rights therein.
3. The disputed domain name was not registered and used in bad faith.
Complainant acknowledges that there existed a “prior Agreement” between the parties, and hence does not allege that the <fishouflageapparel.com> domain name was registered in bad faith. Expanding on Complainant’s brief reference to the prior agreement, Respondent asserts that on February 27, 2009, representatives of Complainant asked Respondent if Respondent would be interested in a licensing relationship for the production of apparel. On March 31, 2009, according to Respondent, Respondent and Complainant met to develop a list of products and the parameters of the agreement. Respondent claims that, on April 9, 2009, Complainant asked Respondent to find solutions for producing apparel in the Western Hemisphere. Also in April 2009, Respondent argues that Complainant asked Respondent to create a “parallel brand” to market Fishouflage clothing and items rather than using Complainant’s brand. Respondent contends that it spent time and money developing this parallel brand. Respondent states that it received a proposed licensing agreement on December 11, 2009 and that both parties have continued to negotiate a formal licensing agreement since that time. Respondent alleges that in February 2009 Complainant proposed to make Respondent the exclusive manufacturer of light apparel with the Fishouflage prints. Respondent asserts that Complainant contacted Respondent on April 16, 2010 and told Respondent that Respondent should operate under the “Fishouflage Apparel” name and that Complainant transferred the <fishouflageapparel.com> domain name to Respondent. According to Respondent, in July 2010, Complainant began meeting with Respondent’s manufacturers in an attempt to bypass Respondent and, on September 4, 2010, Complainant notified Respondent that Respondent would no longer manufacture apparel for Complainant but could act as an online store. Finally, Respondent asserts that, on February 10, 2011 Complainant advised Respondent that it would not allow Respondent to operate an official online store.
Complainant asserts that it terminated its relationship with Respondent in August 2010 and that the disputed domain name should have been returned at the end of this relationship.
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. 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. When the Panel makes such a finding, the Panel may 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).
Having that this matter is beyond the scope of the UDRP, the panel determines that the Complaint shall be DISMISSED.
Accordingly, it is Ordered that the <fishouflageapparel.com> domain name REMAIN WITH Respondent.
John J. Upchurch, Panelist
Dated: October 20, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page