Bousada Interiors v. Thrillworks Inc.
Claim Number: FA1211001473540
Complainant is Bousada Interiors (“Complainant”), represented by Reed Bousada, Canada. Respondent is Thrillworks Inc. (“Respondent”), represented by Jay Bousada of President & CEO of Thrillworks Inc., Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bousada.com>, registered with TLDS, LLC D/B/A SRSPLUS.
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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 29, 2012; the National Arbitration Forum received payment on November 29, 2012.
On December 4, 2012, TLDS, LLC D/B/A SRSPLUS confirmed by e-mail to the National Arbitration Forum that the <bousada.com> domain name is registered with TLDS, LLC D/B/A SRSPLUS and that Respondent is the current registrant of the name. TLDS, LLC D/B/A SRSPLUS has verified that Respondent is bound by the TLDS, LLC D/B/A SRSPLUS 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 December 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 31, 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@bousada.com. Also on December 11, 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 31, 2012.
Both parties have submitted additional submissions, the Complainant on January 7, 2013 and the Respondent on January 14, 2013. Both additional submissions were received in a timely manner according to Supplemental Rule 7.
On January 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka 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.
A. Complainant
Complainant contends that:
B. Respondent
In his Response, the Respondent has responded that:
C. Additional Submissions
By its additional submission, the Complainant further stated:
By its additional submission submitted on January 14, 2013, the Respondent replied that:
The Panel finds that this dispute is outside the scope of UDRP.
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 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.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
The submissions of both parties relate to a complex trade dispute with possible causes of action for breach of contract or trust duty.
In this sense, the Panel notes that according to the Respondent, he was the one who registered, paid for, renewed, and managed the <bousada.com> domain name with no contribution or guidance from Complainant. Moreover, the Panel further notes that, according to the Respondent, the Complainant’s business was only temporarily permitted to use the domain name until Respondent decided to use the domain name for his own purposes, and on July 3, 2012, Respondent notified Complainant that his right to use the <bousada.com> domain name was ending due to failure to pay for any of Respondent’s services.
On the side of the Complainant, Panel also notes that the submission of the Complainant refers to breach of trust or contract by his brother who is the Respondent, who Complainant hired “many years ago” to set up the website, which Respondent registered for on Complainant’s behalf. Complainant trusted his brother to establish the resolving website. Complainant eventually decided that the website needed a makeover, and opted to hire a local company to do the job in order to complete the work more quickly; however, the domain’s access was blocked because Respondent held the code to the <bousada.com> domain name. Complainant contacted Respondent attempting to gain the access code, to which Respondent replied that Complainant owed him money. Complainant claims that Respondent has not replied to any further correspondence and that the website was shut down following the twenty-four time frame after trying to obtain the access code from Respondent.
The aspects of this case as presented by both parties are complex and require further submission of evidences to clear the factual situation, which, in the opinion of this Panel is object of a business and/or contractual dispute between two companies that falls outside the scope of the UDRP.
In this sense, the Panel considers the well known practice of UDRP panels that, in some circumstances the dispute falls outside the UDRP and has to be dismissed.
Therefore, the Panel finds thisdispute is similar with the Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), in which 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.
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.
Also in a similar case, Luvilon Indust. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) the panel 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, and 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.
Based on this finding, the Panel 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).
Having established that this dispute is outside the scope of the UDRP Policy, the Panel dismisses the Complaint
Beatrice Onica Jarka Panelist
Dated: January 22, 2013
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