Biosara Corporation v. Tommie Jeans
Claim Number: FA1202001432203
Complainant is Biosara Corporation (“Complainant”), represented by Marc A. Zocher of Biosara Corporation, Texas, USA. Respondent is Tommie Jeans (“Respondent”), represented by Abraham Steinberg, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <biosaracorp.com> and <biosaracorporation.com>, registered with GoDaddy.com, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 29, 2012; the National Arbitration Forum received payment on February 29, 2012.
On February 29, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <biosaracorp.com> and <biosaracorporation.com> domain name 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 March 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2012 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@biosaracorp.com and postmaster@biosaracorporation.com. Also on March 9, 2012, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
In response to request for information from the arbitrator a letter was received from Complainant dated April 16, 2012.
Although no formal response was received from Respondent, J. Pappas did submit information on behalf of Respondent dated February 28, 2012, March 5, 2012, March 14, 2012, March 15, 2012, April 22, 2012, and April 23, 2012.
On April 12, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1) Complainant, Biosara Corporation, filed for a trademark registration for its BIOSARA mark with the United States Patent and Trademark Office (“USPTO”) (App. No. 77,814,125 filed August 27, 2009).
2) Complainant’s mark is used in connection with its business in adhesive and surgical bandages.
3) Respondent, Tommie Jeans, registered the <biosaracorp.com> and <biosaracorporation.com> domain names on December 24, 2011.
4) Respondent has no rights to the disputed domain names or the BIOSARA mark and signed an agreement after resigning as CEO of Complainant’s corporation that Respondent will transfer the disputed domain names to Complainant, and is now in violation of the agreement.
5) Respondent’s disputed domain names are confusingly similar to the BIOSARA mark.
6) Respondent’s disputed domain names were registered in bad faith.
B. Respondent did not submit a formal Response, but a party alleging to represent Respondent, Ted Pappas, did submit arguments in Respondent’s Other Correspondence with the National Arbitration Forum:
1) Respondent contracted with Complainant and Complainant is currently in breach of the contract.
2) Complainant initiated this proceeding in response to Respondent’s demand for compensation from the contract.
3) Complainant is attempting to take the disputed domain names to prevent Respondent from using them to inform Complainant’s shareholders about Complainant’s breach of the contract.
PRELIMINARY ISSUE: IDENTIFICATION OF RESPONDENT
In the supplemental submission from Complainant, Complainant stated that he believes Tommie Jeans does not exist and is a business name used by Mr. Pappas. Complainant refers to Mr. Pappas as the former CEO of Complainant and refers to agreements by Mr. Pappas. Complainant also says that either Tommie Jeans or its representative, Ted Pappas, registered the contested domain names in violation of an agreement between the parties.
The Panel finds that for purposes of this matter it is proper to consider Tommie Jeans and Ted Pappas collectively as Respondent.
PRELIMINARY ISSUE: BUSINESS/CONTRACTUAL DISPUTE OUTSIDE THE SCOPE OF THE UDRP
Complainant argues that Respondent is the former CEO of Complainant and that Respondent signed a separate agreement that Respondent would transfer ownership of the disputed domain names. Complainant claims that Respondent is in breach of the second agreement.
In Respondent’s Other Correspondence, Respondent alleges that Complainant and Respondent entered into a contract regarding the start-up of Complainant and the initial intellectual property. Respondent argues that Complainant breached that contract by failing to compensate Respondent. In Respondent’s e-mail communications, Respondent claims to still be the current CEO of Complainant and alleges that he is attempting to protect Complainant’s shareholders. Respondent also contends that Complainant brought this UDRP proceeding in response to Respondent’s attempt to enforce the contract. Respondent also alleges that Complainant filed this Complaint to prevent Respondent from communicating to Complainant’s shareholders.
A preliminary question for the Panel is whether this is a business and/or contractual dispute 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 finds that the instant dispute is a business or contractual dispute, and thus falls outside the scope of the UDRP. 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).
The Panel having found this dispute to be outside the scope of the ICANN Policy, it is ORDERED that the Complaint herein be DISMISSED.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 1, 2012
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