Salba Corp. N.A., William A. Ralston and Richard L. Ralston v. X Factor Holdings, LLC
Claim Number: FA1205001443427
Complainant is Salba Corp. N.A., William A. Ralston and Richard L. Ralston (“Complainant”), represented by Erin A. Kelly of Bryan Cave HRO, Colorado, USA. Respondent is X Factor Holdings, LLC (“Respondent”), represented by Amber N. Davis, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <salba.com>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
M. Kelly Tillery, Panelist and Chair
John Upchurch, Panelist
Rodney C. Kyle, Panelist
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 10, 2012; the National Arbitration Forum received payment on May 10, 2012.
On May 11, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <salba.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 May 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 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@salba.com. Also on May 15, 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 June 4, 2012.
Additional timely submissions were thereafter received from both Complainant and Respondent.
On June 14, 2012, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed M. Kelly Tillery, John Upchurch and Rodney C. Kyle as Panelists and M. Kelly Tillery as Chair.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainants
Complainants contend:
· Complainant, Salba Corp. N.A., is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SALBA mark (e.g., Reg. No. 3,071,655 filed June 25, 2002; registered March 21, 2006).
· Complainant, William A. Ralston, and Complainant, Richard L. Ralston, are members of Salba Smart Natural Products, LLC.
· Complainant, Salba Corp. N.A., granted Salba Smart Natural Products, LLC the sole license to use the SALBA mark in connection with the sale of SALBA grain products in the United States.
· Complainants’ trademark registrations for the SALBA mark establish their rights in the mark under Policy ¶ 4(a)(i).
· Respondent’s <salba.com> domain name is confusingly similar to Complainants’ SALBA mark.
· While Complainants previously granted a license to Respondent’s predecessor company, Core Naturals, LLC, to use Complainants’ SALBA mark, this license is expired, terminated, or fraudulently conveyed.
o Salba Research and Development, Inc. is a related corporation of Complainants and originally granted Respondent’s predecessor company an Exclusive Distribution and Marketing Agreement that became effective on December 21, 2005 and expired after 60 months.
o Complainants granted Respondent’s predecessor an Exclusive Supply Agreement on May 20, 2008 that granted Respondent’s predecessor the right to use the SALBA mark. Respondent terminated this agreement on June 25, 2009.
o Complainants and Respondent’s predecessor discussed a merger and Complainants provided confidential and proprietary business information to Respondent’s predecessor. Ultimately, Complainants and Respondent decided against the merger.
o Any license agreement did not permit the registration and use of a disputed domain name containing Complainants’ SALBA mark.
· Respondent itself never received a license to use the SALBA mark.
· Respondent uses the disputed domain name to resolve to Respondent’s website that sells seeds and food products in direct competition with Complainants’ products.
· Respondent is not commonly known by the disputed domain name.
· Respondent’s registration and use of the <salba.com> domain name disrupts Complainants’ business.
· Respondent is attempting to attract and misleadingly divert Internet users to Respondent’s website for commercial gain.
B. Respondent
Respondent contends:
· Respondent does not contest the likelihood of confusion analysis.
· Core Naturals, LLC and Nutricell, LLC are Respondent’s predecessors and both were granted exclusive rights to use the SALBA mark in connection with selling SALBA product.
· Respondent terminated its agreements with Complainant because Respondent does not believe the original agreements are valid based on disputes over the ownership of Complainant, Salba Corp. N.A.
· Respondent began using the disputed domain name on February 7, 2005 in connection with the authorized sale of white hispanica L-seed products which is a bona fide offering of goods or services.
· Respondent has been commonly known by the disputed domain name since 2005.
· Respondent owns six foreign trademark registrations for the SALBA mark.
· Respondent has been mentioned in numerous articles in association with the SALBA mark and the disputed domain name.
· Respondent never attempted to sell the disputed domain name to Complainants and does not intend to do so.
· Respondent did not register the disputed domain name in order to prevent Complainants from registering a domain name containing the SALBA mark.
· Respondent is not attempting to disrupt Complainants’ business. Instead, Complainants are attempting to disrupt Respondent’s business.
· There is no confusion created as to Complainants’ affiliation with the disputed domain name.
· Complainants sued Respondent for Trademark Counterfeiting and Infringement under 15 U.S.C. §§ 11141(a), 1116, & 117; Federal Unfair Competition and False Advertising under 15 U.S.C. §§ 1125(a)(i)(A)-(B); Deceptive Trade Practices under the Colorado Consumer Protection Act, C.R.S. § 6-1-101; Cybersquatting under 15 U.S.C. § 1125(d); and Common Law Trademark Infringement and Unfair Competition.
· This case is filed with the United States District Court in Colorado and these UDRP proceedings should be terminated or suspended until there is a final decision.
C. Additional Submissions
Complainant contends:
Respondent contends:
The Complaint should be and will be dismissed without prejudice due to concurrent Court proceedings involving the same parties, issues and relief requested in the United States District Court for the District of Colorado.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.
Concurrent Court Proceedings
Complainant sued Respondent for Trademark Counterfeiting and Infringement under 15 U.S.C. §§ 1114(a), 1116, & 1117; Federal Unfair Competition and False Advertising under 15 U.S.C. §§ 1125(a)(1)(A)-(B); Deceptive Trade Practices under the Colorado Consumer Protection Act, C.R.S. § 6-1-101; Cybersquatting under 15 U.S.C. § 1125(d); and Common Law Trademark Infringement and Unfair Competition in the U.S. District Court for the District of Colorado on May 18, 2012, just 10 days after Complainant filed this UDRP Complaint. Complainants’ “IX Prayer for Relief”, in its Federal Complaint, Paragraph e, requests the exact relief of the Federal Court as it requests of this Panel - transfer and assignment of the domain name <salba.com> to Plaintiffs, who are the same persons and entities as Complainants herein. Respondent argues that this UDRP proceeding should be terminated or suspended until there is a final decision made by the Federal Court in Colorado.
A UDRP arbitration should not proceed where there is pending litigation involving the same issues and requesting similar relief. UDRP Rule 18; see AmeriPlan Corp. v. Gilbert, FA105737 (Nat. Arb. Forum Apr. 22, 2002) (regarding simultaneous court proceedings and UDRP disputes, Policy ¶ 4(k) requires that the registrar 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.”).
Thus, this Panel finds that the Complaint should be dismissed without prejudice.
The Panel need not and does not reach the merits on this issue due to its above findings.
The Panel need not and does not reach the merits on this issue due to its above findings.
The Panel need not and does not reach the merits on this issue due to its above findings.
The Panel concludes that the Complaint shall be DISMISSED WITHOUT PREJUDICE.
M. Kelly Tillery, Panelist and Chair
John Upchurch, Panelist
Rodney C. Kyle, Panelist
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