Sottera, Inc. d/b/a NJOY v. Anthony Gatliff
Claim Number: FA1108001405566
Complainant is Sottera, Inc. d/b/a NJOY (“Complainant”), represented by Kenneth M. Motolenich-Salas of Weiss & Moy, P.C., Arizona, USA. Respondent is Anthony Gatliff (“Respondent”), represented by Andrew P. Lahser, Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <refillmynjoy.com>, <ilovenjoy.com>, <njoycartridge.com>, <refillyournjoy.com>, <refillsfornjoy.com>, <purchasenjoy.com>, <njoyretail.com>, <njoyrefill.com>, and <njoyitnow.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.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 31, 2011; the National Arbitration Forum received payment on August 31, 2011.
On August 31, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <refillmynjoy.com>, <ilovenjoy.com>, <njoycartridge.com>, <refillyournjoy.com>, <refillsfornjoy.com>, <purchasenjoy.com>, <njoyretail.com>, <njoyrefill.com>, and <njoyitnow.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 August 31, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 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@refillmynjoy.com, postmaster@ilovenjoy.com, postmaster@njoycartridge.com, postmaster@refillyournjoy.com, postmaster@refillsfornjoy.com, postmaster@purchasenjoy.com, postmaster@njoyretail.com, postmaster@njoyrefill.com, and postmaster@njoyitnow.com. Also on August 31, 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 21, 2011.
Complainant submitted a timely Additional Submission on September 22, 2011.
On September 27, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The domain names, which were registered during the parties contractual relationship, contain the entirety of the NJOY trademark. After said contractual relationship ended, Respondent had no longer the right to use the domain names since they contain the NJOY trademark.
Complainant believes that Respondent has no right or legitimate interest justifying the use of the domain names. In particular, Complainant argues that Respondent was not licensed or authorized to use the disputed domain names after the expiration of the contractual relationship.
In addition, Respondent has registered the domain names for the purpose of selling them to Complainant for 390 000USD. The domain names direct to active websites where NJOY products are offered for sale, which causes economic injury to Complainant.
B. Respondent
The present dispute falls outside the scope of the UDRP since it is not an issue of cybersquatting.
In particular, Complainant is using the present procedure to usurp the domain names and thereby Respondent’s customers.
In addition, Respondent has legitimate interest in the domain names since, for instance, Respondent purchases and resells NJOY products.
Furthermore, the domain names were not registered in bad faith. Indeed, Respondent was authorized to register the domain names by Complainant thanks to a written or oral agreement. In addition, Respondent’s offer to sale its business for 390,000USD did not include only the disputed domain names but its entire business.
Finally, Complainant has waited more than three years before making any claim in respect of the domain names. According to the doctrine of laches, the absence of any complaint over a long period of time suggests that the domain names don’t give rise to a serious problem.
C. Additional Submissions
The parties went to great length to expose supplement arguments. These arguments are summarized below:
Respondent argues that Complainant waived its rights to the domain names by continuing to sell and supply its products to Respondent after the termination of the written contract. Therefore, Complainant agreed to an ongoing business relationship with Respondent.
Complainant filed additional submissions following Respondent’s additional submissions. In particular, Complainant argues that the present case is inside the scope of the UDRP. It is a domain name dispute and not a contractual one since both written agreements between the parties are terminated. The alleged ongoing contractual relationship between the parties is a scheme to divest the Panel of the ability to transfer the domain names. Finally, Complainant believes that the doctrine of laches should not apply in the present case since it took a short time to file the present complaint after the termination of the written agreement.
Complainant is a Nevada corporation selling electronic cigarettes and accessories under the trademark NJOY. It holds the NJOY trademark Reg. No. 3427769 dated May 12, 2008 issued by the United States Patent and Trademark Office (“USPTO”).
In October 2008, during the term of a distributor agreement between the parties, Respondent registered the disputed domain names and has used them or at least some of them to sell NJOY products.
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 believes that the present matter really revolves around a contractual dispute which falls outside the scope of the UDRP. Therefore, it will not decide the points (1), (2) and (3).
The parties entered into two written contractual agreements, which are now deemed terminated by both of them. The Panel believes that, according to §16 “Final agreement” of the Special Market sales Program Agreement, this agreement terminated the previous one.
Respondent contends that this domain dispute is outside the scope of the UDRP and that after this second agreement expired, Complainant continued to supply Respondent with products to sell and information on how to conform to regulatory standards. Respondent notes that shortly after Complainant gave notice that the relationship would end, Respondent entered a significantly large wholesale order of product which was filled by Complainant. Respondent believes that this case involves Complainant’s fiduciary duty and ongoing contractual obligations to supply product to Respondent, as well as tortious liability for its failure to do so. Respondent argues that there is still a relationship between the parties and that Complainant has to supply NJOY products to Respondent.
In its Additional Submission, Complainant refutes Respondent’s claims that this domain dispute is outside the scope of the UDRP. Complainant argues that this case is the very type of case that the UDRP was designed for. Complainant states that it owns all rights to the NJOY mark; all agreements that it had that would have authorized Respondent to use the mark have been terminated per the terms of the agreements; Complainant has terminated Respondent as a distributor and no longer sells products to Respondent per the agreement terms; and Respondent maintains the infringing domain names in spite of the express terms of the agreement it signed. Complainant notes that Respondent concedes that all written distribution agreements to which Respondent was a party have terminated. Therefore, Complainant contends that Respondent cannot argue that this case is a matter of contractual interpretation where no contract exists.
However, it is obvious that the present case hinges mostly on a business or civil dispute between the parties, which goes far beyond the disputed domain names themselves. The latter are part of the dispute but they are not the only elements of the dispute. For instance, Respondent did not offer 390,000USD for the domain names only. This sum included Respondent’s entire business with its customers list. It is not the role of the Panel to decide whether this offer is abusive.
In addition, the agreements don’t explicitly mention the disputed domain names.
In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), it was decided that 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 and to determine if the parties are still in a contractual relationship.
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.
For the reasons given above, the Panel will not consider this element of the Policy.
For the reasons given above, the Panel will not consider this element of the Policy.
For the reasons given above, the Panel will not consider this element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <refillmynjoy.com>, <ilovenjoy.com>, <njoycartridge.com>, <refillyournjoy.com>, <refillsfornjoy.com>, <purchasenjoy.com>, <njoyretail.com>, <njoyrefill.com>, and <njoyitnow.com> domain names REMAIN WITH Respondent.
Nathalie Dreyfus, Panelist
Dated: October 11, 2011
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