national arbitration forum

 

DECISION

 

Michael J. Fara v. Identity Protection Service / Identity Protect Limited

Claim Number: FA1207001454516

 

PARTIES

Complainant is Michael J. Fara (“Complainant”), New York, USA.  Respondent is Identity Protection Service / Identity Protect Limited (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <windowsforums.com>, registered with WEBFUSION LTD.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflicts in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically July 20, 2012; the National Arbitration Forum received payment July 20, 2012.

 

On August 1, 2012, WEBFUSION LTD. confirmed by e-mail to the National Arbitration Forum that the <windowsforums.com> domain name is registered with WEBFUSION LTD. and that Respondent is the current registrant of the name.  WEBFUSION LTD. verified that Respondent is bound by the WEBFUSION LTD. registration agreement and 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 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 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@windowsforums.com.  Also on August 6, 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.

 

On August 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

DISCUSSION

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 Complainant to 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 to 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.

 

Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

 

PARTIES' CONTENTIONS

 

  1. Complainant
    1. Complainant has a “bona-fide de-facto trademark over ‘WindowsForums.’”

                                          i.    Complainant need not own a trademark registration for the mark in the United States.

                                         ii.    Complainant has had a “bona fide intent to use Windows Forums for the sale and procurement of both goods and services since 2005.”

                                        iii.    Complainant owns the <windowsforum.com> domain name that it registered in 1999.

                                       iv.    Complainant owns and operates Windows forum communities, and has a good relationship with Microsoft, the owner of the WINDOWS mark.

                                        v.    Complainant owns the following related domain names: <forumswindows.com>; <microsoftwindowsforums.com>; and <windowsforum.com>.

    1. The <windowsforums.com> domain name is confusingly similar to Complainant’s WINDOWSFORUM.COM mark because the disputed domain name merely adds the letter “s.” 
    2. Complainant purchased the <windowsforums.com> domain name through a <buydomains.com> “Buy It Now” sale for $6,995.00, but the domain name was never transferred to Complainant.
    3. The disputed domain name was registered and is being held with “no use,” and Respondent is not commonly known by the disputed domain name.
    4. The real registrant of the domain name, John Fairbrother, obtained the domain name primarily for the purpose of disrupting Complainant’s competing business.
    5. Respondent is attempting to create confusion with Complainant’s mark to attract Internet users to Respondent’s competing business.

 

  1.  Respondent

 

 Respondent failed to submit a Response in this proceeding.

 

Preliminary Issue:  Business/Contractual Dispute Outside the Scope of the UDRP

 

The Panel notes that Complainant’s arguments in the present case stem from a failed business/contract action.  Complainant submits evidence to show that it had purportedly purchased the disputed domain name from a third-party, Sean Spurr, for $6,995.00.  However, Complainant argues that, after it forwarded the money to the account in question, the authorization codes to transfer the disputed domain name failed to work.  Complainant submits numerous e-mail communications that it had with the purported seller of the disputed domain name, the registrar, and the domain name broker at <buydomains.com>.  Complainant contends that, after it made the deal to buy the disputed domain name, Mr. Spurr received a better offer and decided to cut Complainant out of the deal.  The Panel notes that the bulk of Complainant’s arguments extends from this breach of contract that it claims occurred regarding the sale and transfer of the disputed domain name, as well as its rightful ownership of the domain name because of its prior purchaser status. 

 

In this instance, the Panel finds that this is a business and/or contractual dispute between two companies 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.  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 trademark disputes. …  The issues between the parties are not limited to the law of trademarks.  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).

 

C.  FINDINGS

 

The gravamen of this dispute is outside the scope of the UDRP and the Panel dismisses the proceeding.

 

 

Identical to and/or Confusingly Similar

 

Respondent makes no contentions relative to Policy ¶ 4(a)(i). 

 

The Panel having found that the gravamen of this dispute is outside the scope of the UDRP it is not necessary to reach this element.

 

Rights to or Legitimate Interests

 

Respondent makes no contentions relative to Policy4(a)(ii).

 

The Panel having found that the gravamen of this dispute is outside the scope of the UDRP it is not necessary to reach this element.

 

Registration and Use in Bad Faith:

 

Respondent makes no contentions relative to Policy4(a)(iii).

 

The Panel having found that the gravamen of this dispute is outside the scope of the UDRP it is not necessary to reach this element.

 

 

DECISION

The Panel having found that the gravamen of this dispute is outside the scope of the UDRP, this proceeding is DISMISSED.

 

Accordingly, it is Ordered that the <windowsforums.com> domain name shall REMAIN with Respondent.  

 

Hon. Carolyn Marks Johnson, Panelist

Dated:  September 11, 2012

 

 

 

 

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