Your Baby Can, LLC v. Raoul Edmonds
Claim Number: FA1204001439429
Complainant is Your Baby Can, LLC (“Complainant”), represented by Jayson M. Lorenzo, California, USA. Respondent is Raoul Edmonds (“Respondent”), represented by Matthew A. Becker of The Law Office of Matthew A. Becker PC, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yourbabycandiscover.com>, registered with GoDaddy.com, LLC.
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.
ROBERT T. PFEUFFER ,Senior District Judge, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 13, 2012; the National Arbitration Forum received payment on April 13, 2012.
On April 17, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <yourbabycandiscover.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 April 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 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@yourbabycandiscover.com. Also on April 23, 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.
A timely Response was received and determined to be complete on May 15, 2012.
An additional submission was filed by the Complainant and timely received by the Forum. It has 48 pages of exhibits and was fully reviewed by the Panel.
Respondent also filed an additional response which was timely received by the Forum and reviewed by the Panel
On May 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed JUDGE ROBERT T. PFEUFFER. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
B. Respondent
a. Complainant is a prior licensee of Infant Learning, d/b/a The Infant Learning Company, which is the true owner of the domain name and intellectual property associated therewith.
b. ILC actually holds all rights to the YOUR BABY CAN mark in the international territory based upon the license agreement;
c. Complainant’s license to use the YOUR BABY CAN mark was terminated when it failed to pay royalties required in the agreement to ILC;
d. Complainant was merely a licensee of a third-party and does not have rights to the YOUR BABY CAN marks anymore;
e. Complainant has brought a lawsuit against Infant Learning, Inc, d/b/a The Infant Learning Company (“ILC”) in the San Diego Superior Court, Case No.: 37-2012-00053345-CU-FR-NC;
f. Respondent’s company, Café.com, contracted with Complainant and ILC to be an international distributor of Complainant’s and ILC’s products;
g. The rights granted to Café.com were at all times subject to Complainant’s duties under its license agreement with ILC.
h. Respondent registered the disputed domain name on March 8, 2012;
i. Respondent’s registration of the disputed domain name in its individual capacity was in good faith to facilitate the sale of products on behalf of the true owner, ILC;
j. Respondent had the legal right to register the disputed domain name because the company it owns, Café.com, was an authorized distributor of Complainant at the time.
k. Because ILC terminated the License Agreement with Complainant for failure to pay royalties, all rights in the trademarks have reverted solely to ILC and, as a result, Complainant cannot claim any rights in the YOUR BABY CAN DISCOVER trademark and cannot assert any rights over the <yourbabycandiscover.com> domain name.
C. Additional Submissions
Complainant has submitted a 48 page document supporting the original complaint. The panel has fully reviewed the attachments and argument.
Respondent later filed an additional response urging the Panel to dismiss this action because of ongoing litigation between the parties contesting the same issues raised here. Both additional submissions were helpful to the Panel.
This is a Business/Contractual Dispute 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. In this case, however, Respondent points out that these causes of action are currently active cases that are pending with the courts. 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. The Panel therefore dismisses 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 (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: Concurrent Court Proceedings
Respondent states that Complainant recently filed a lawsuit in San Diego County Superior Court. Respondent claims that the lawsuit directly addresses the licensing agreement entered into between Complainant and ILC concerning the YOUR BABY CAN mark. Respondent submits the complaint filed by Complainant, which the Panel notes appears to directly address the relationship between Complainant and ILC with regard to the licensing agreement submitted by both Complainant and Respondent.
Prior panels have chosen not to proceed with the administrative hearing because of the pending litigation. See AmeriPlan Corp. v. Gilbert, FA 105737 (Nat. Arb. Forum Apr. 22, 2002) (Regarding simultaneous court proceedings and UDRP disputes, Policy ¶ 4(k) requires that ICANN not implement an administrative panel’s decision regarding a UDRP dispute “until the court proceeding is resolved.” Therefore, a panel should not rule on a decision when there is a court proceeding pending because “no purpose is served by [the panel] rendering a decision on the merits to transfer the domain name, or have it remain, when as here, a decision regarding the domain name will have no practical consequence.”).
Accordingly, the Panel chooses to dismiss the Complaint.
DECISION
Having determined that this is not the appropriate forum to dispose of this dispute, the Panel accordingly holds that the complaint is dismissed.
ROBERT T. PFEUFFER, Panelist
May 29, 2012
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