Clement Ng / Lost Ones Limited v. Winston Tong / Lost Ones Limited
Claim Number: FA1108001405402
Complainant is Clement Ng / Lost Ones Limited (“Complainant”), Canada. Respondent is Winston Tong / Lost Ones Limited (“Respondent”), represented by Winston Tong, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <theblackmarkers.com>, 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.
Timothy D. O’Leary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2011; the National Arbitration Forum received payment on August 30, 2011.
On August 31, 2011, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <theblackmarkers.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 September 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 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@theblackmarkers.com. Also on September 7, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 27, 2011.
On September 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Timothy D. O’Leary as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Respondent asserts that it has superior rights in the disputed domain name because it has been building THE BLACKMARKERS brand since before it and Complainant became business partners. Respondent contends that it and Complainant began a business partnership, informally, in July of 2008, based upon Respondent’s online retail clothing ideas that it came up with in 2006. Respondent argues that the two parties were in business together, and that it was in charge of procuring products, and creating/running the disputed domain name. Respondent contends that through their business Respondent was in charge of 95% of the business contacts, and that without it there would be no online store at all. Respondent further argues that it was never terminated from the company, but simply did not want to work with Complainant anymore, and that it wants to continue the business it created under the THE BLACKMARKERS mark. Respondent asserts that after it stopped working directly with Complainant, that Complainant changed shared business account passwords and tried to get the domain names they owned together transferred away from Respondent. Respondent argues that Complainant had no involvement with the development of the trademark that Respondent created before their business adventure.
In the Complaint, Complainant contends that in July 2008 Respondent “was given access to the domain when he was contracted by the COMPLAINANT and Lost Ones Limited to manage its website.” Further, Complainant argues that by February 2011, it had terminated all services provided by Respondent. Complainant contends that Respondent has significantly damaged Complainant and its company since departing in early 2011.
The present case appears to hinge on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. There was no written agreement and the parties’ state markedly different positions on what the facts were under the oral agreement.
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. Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007). Complex cases such as the one presented are better decided by the courts than by a UDRP panel.
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 a question of contractual or business interpretation, and thus falls outside the scope of the UDRP. 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).
Preliminary Issue: Trademark Dispute Outside the Scope of the UDRP
Complainant contends that it has used the THE BLACKMARKERS mark since early 2008 in relation to an online clothing store. Complainant provides evidence indicating its registration of a business in Canada, but does not include any exhibits showing its ownership or use of the mark in question.
Respondent argues that it created the THE BLACKMARKERS mark on its own in 2006. Respondent contends that it and Complainant went into business together in 2008 for the purpose of using the mark to operate an online clothing store. Respondent alleges that Complainant has not participated in the actual development of the mark, and did not come up with the concept.
In sum, Complainant and Respondent both assert rights to the THE BLACKMARKERS mark. The Panel determines that this dispute falls outside the scope of the Policy, and therefore choose to dismiss the Complaint. In Commercial Publ’g 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.
The Panel concludes that this matter involves a contractual business dispute arising out of an informal business relationship and thus falls outside the scope of the UDRP. The Panel further finds that there is a legitimate trademark dispute and such disputes are beyond the scope of this proceeding.
Accordingly, it is Ordered that the Complaint is dismissed.
Timothy D. O’Leary, Panelist
Dated: October 18, 2011
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