Comtex News Network, Inc. v. Anthony Haney
Claim Number: FA1211001472158
Complainant is Comtex News Network, Inc. (“Complainant”), represented by Michael A. Adler of Davidoff Hutcher & Citron, LLP, New York, USA. Respondent is Anthony Haney (“Respondent”), represented by David D. Lin of Lewis & Lin, LLC, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <smartrend.com>, registered with 1&1 Internet, Inc.
The undersigned certifies that he 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 November 20, 2012; the National Arbitration Forum received payment on November 26, 2012.
On November 21, 2012, 1&1 Internet, Inc. confirmed by e-mail to the National Arbitration Forum that the <smartrend.com> domain name is registered with 1&1 Internet, Inc. and that Respondent is the current registrant of the name. 1&1 Internet, Inc. has verified that Respondent is bound by the 1&1 Internet, 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 November 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 17, 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@smartrend.com. Also on November 26, 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 December 17, 2012.
A timely Additional Submission from Complainant was received and determined to be complete on December 21, 2012.
A timely Additional Submission from Respondent was received and determined to be complete on December 26, 2012.
Both Additional submissions were carefully studied and considered by the Panel.
On December 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed 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.
1. Complainant has rights in the SMARTREND mark. Complainant is the owner of the registration with the United States Patent and Trademark Office (“USPTO”) for the SMARTREND mark (Reg. No. 3,529,645 registered November 11, 2008). See Complainant’s Annex 1.
2. The <smartrend.com> domain name is identical to the SMARTREND mark.
3. Respondent has no rights or legitimate interests in the disputed domain name. Respondent has never been known by or conducted any business under the name <smartrend.com>.
Respondent initially obtained the <smartrend.com> domain name as an agent of Complainant, as evidenced by a letter from Respondent.
1. Respondent was hired by Complainant on December 10, 2012, responsible for, among other things, Complainant’s Internet presence.
2. Complainant requested that Respondent acquire the <smartrend.com> domain name, but wanted Respondent to make the purchase under the guise of Respondent’s company, Twenty One LLC. Complainant told Respondent that the purpose for this was that Complainant believed the cost of buying the <smartrend.com> domain name would be significantly higher if the seller found out that the ultimate purchasers also owned the website <mysmartrend.com> which uses the SMARTREND logo. The parties thus agreed that Respondent would purchase the disputed domain name in Respondent’s company’s name and that Complainant would then purchase the domain name from Respondent after the initial transaction had taken place.
3. Respondent purchased the <smartrend.com> domain name on January 13, 2011 and issued an invoice to Complainant for the purchase and transfer of the domain name on February 12, 2011.
4. Respondent promptly directed all traffic coming to the <smartrend.com> domain name to Complainant’s other website, believing that Complainant would, as contractually designated, buy the domain name. Respondent continues this use of the disputed domain name in an act of good faith to promote adherence to the agreement between Respondent and Complainant.
5. In November 2011, Respondent’s position with Complainant was terminated.
6. The amount due from Complainant for the invoice for the <smartrend.com> domain name is still outstanding.
Respondent did not register the disputed domain name in bad faith. Complainant voluntarily sought to have Respondent purchase the disputed name.
1. Complainant and Respondent had a well-established business relationship which Complainant references numerous times throughout its Complaint and Additional Submission.
2. The UDRP was not meant to address contractual disputes or those rife with employment issues.
3. Respondent’s registration of the <smartrend.com> domain name was expressly authorized by Complainant, as admitted by Complainant in Complainant’s Additional Submission.
4. Respondent’s request of compensation for the domain name stems from the fact that Complainant owes Respondent thousands of dollars for the acquisition of the domain name and related work, and does not represent bad faith. Complainant has been unwilling to pay Respondent what Respondent is owed despite Complainant’s claim that it is willing to.
5. Respondent does not advertise its own business on the <smartrend.com> domain name. The <smartrend.com> domain name was used only to redirect Internet traffic to Complainant’s website. The disputed domain name currently resolves to a blank page.
Respondent asserts that the instant dispute is not appropriate for consideration under the UDRP. Respondent argues that Complainant has taken what is essentially a business dispute and submitted it for decision within the confines of the UDRP. Respondent argues in its Additional Submission that Complainant and Respondent had a well-established business relationship which Complainant references numerous times throughout its Complaint and Additional Submission. Respondent notes that Complainant references its hiring and firing of Respondent as well as its request to have Respondent purchase the disputed domain name. Respondent argues in its Additional Submission that the UDRP was not meant to address contractual disputes or those rife with employment issues. Respondent argues that Complainant requested that Respondent acquire the <smartrend.com> domain name, but wanted Respondent to make the purchase under the guise of Respondent’s company, Twenty One LLC. Respondent asserts that Complainant told Respondent that the purpose for this was that Complainant believed the cost of buying the <smartrend.com> domain name would be significantly higher if the seller found out that the ultimate purchasers also owned the website <mysmartrend.com> which uses the SMARTREND logo. According to Respondent, the parties thus agreed that Respondent would purchase the disputed domain name in Respondent’s company’s name and that Complainant would then purchase the domain name from Respondent after the initial transaction had taken place. Respondent states that in November 2011, Respondent’s position with Complainant was terminated and that the amount due from Complainant for the invoice for the <smartrend.com> domain name, among others, is still outstanding. Respondent asserts that this purely business deal is not appropriate for the Panel to consider.
Complainant contends that Respondent is a cybersquatter and that the present dispute is properly brought under the UDRP. Complainant addresses this matter in its Additional Submission. Complainant asserts that Respondent admits that ownership of the <smartrend.com> domain name should be held by Complainant, and Respondent is refusing to allow this to occur without monetary compensation. Complainant alleges that Respondent was never a business partner of Complainant’s. Rather, Complainant argues that Respondent was an employee and agent of Complainant’s, acting under the authority given by Complainant in order to register the <smartrend.com> domain name, and was required to transfer the domain name to Complainant following the purchase of the domain name. Complainant notes that it attempted to come to a settlement over the compensation to be paid to Respondent but that Respondent thwarted the settlement efforts every time the parties were close to a resolution. Complainant argues that Respondent’s demand varied between $500 and $15,000 for the disputed domain name and that this clearly indicates that Respondent had no real intentions to come to an agreement and transfer the domain name, thus that Respondent is a cybersquatter.
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.
Based upon the reasoning outlined in the aforementioned case 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 decides to dismiss 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).
DECISION
The Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <smartrend.com> domain name REMAIN WITH Respondent.
ROBERT T. PFEUFFER, Panelist
Dated: January 8, 2013
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