Estate of Malcolm McLaren v. Paul Nordstrom August
Claim Number: FA1304001492383
Complainant is Estate of Malcolm McLaren (“Complainant”), represented by Young Kim, New York. USA. Respondent is Paul Nordstrom August (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <malcolmmclaren.com>, registered with Network Solutions, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 1, 2013; the National Arbitration Forum received payment on April 1, 2013.
On April 1, 2013, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <malcolmmclaren.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 2013 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@malcolmmclaren.com. Also on April 3, 2013, 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 April 22, 2013.
Complainant submitted a timely Additional Submission that was received and determined to be complete on April 29, 2013.
On April 30, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 claims rights in the MALCOLM MCLAREN mark by way of inheriting these rights from the late Mr. Malcolm McLaren via a United Kingdom court order granting Complainant all of Mr. Malcolm McLaren’s Estate. Complainant’s MALCOLM MCLAREN mark has gained uniqueness and fame because the late Mr. Malcolm McLaren was a pop culture icon who was renowned for his involvement with the early stages of the Punk movement in music and culture. The MALCOLM MCLAREN mark will be used in showcasing Mr. McLaren’s work at the New York Metropolitan Museum of Art.
· Respondent’s domain name is identical to the MALCOLM MCLAREN mark.
· Respondent is “Paul Nordstrom August,” a cousin of one of Mr. McLaren’s former girlfriends. The only other listed name in the WHOIS information is that of “Mr. Joseph Corre.” Respondent is in no way known by, associated with, or referred to as the disputed domain name.
· The disputed domain name has for 15 years been used to promote the MALCOLM MCLAREN mark. Mr. Malcolm McLaren had Respondent help him with the process of setting up this domain name, website, and e-mail. Complainant used the disputed domain name to manage e-mails for a number of years, both as beneficiary of the Estate and as Mr. McLaren’s girlfriend. The domain name was also the official website used in connection with the MALCOLM MCLAREN mark during the life of Mr. McLaren and up through February 2013. Complainant’s use of the domain name was interrupted by Respondent’s decision to shut down the web server. Complainant argues that as the beneficiary of the Estate, she naturally has rights to utilize and fully control this domain name, whereas Respondent has no such rights.
· Complainant had difficulties contacting Respondent, and was able to contact him via correspondence with Respondent’s father. Respondent did not agree to transfer the domain name for his out-of-pocket costs, and instead suggested that Complainant make an offer on the domain name unless she wanted to see the domain name put up for auction.
· Respondent claims that he is a business partner with the late Mr. McLaren. Complainant knows of no such business, nor does the late Mr. McLaren’s personal assistant, Ms. Bolton. Regardless of Respondent’s claims, it is clear that only Complainant and Mr. McLaren ever actually used this domain name for hosting websites and e-mail accounts.
· Respondent is disrupting Complainant’s business. Respondent is using its ability as the domain name registrant to power down the Complainant’s website, and hinder her usage of the MALCOLM MCLAREN mark.
· Complainant believes that Respondent and Mr. Corre (Mr. McLaren’s son) conspired together in maintaining this domain name as administrators, while keeping Complainant and the late Mr. McLaren in the dark as to the fact that it was Respondent who was actually in control of the domain name.
B. Respondent
· Respondent worked with his friend, Charlotte Skene Catling, to get the late Mr. McLaren to agree to register the “Malcolm McLaren Multimedia Ltd.” corporation in the state of Delaware. Mr. McLaren received 50% of the shares, and Respondent and Ms. Catling each received 25%. Respondent therefore was doing business at one point in time using the mark.
· Respondent spent time introducing Mr. Malcolm to computer technology. Respondent was responsible for hiring Ms. Sarah Bolton, and noted that she was “doing a wonderful job” working for Mr. McLaren. Respondent clarifies that Ms. Bolton would not be aware of the corporation specifically, as it had fizzled out for the most part by the time she started working for Mr. McLaren. Respondent first registered a website for Mr. McLaren through the <gdb.org> domain name. Respondent registered the disputed <malcolmmclaren.com> domain name for the “Malcolm McLaren Multimedia Ltd.” corporation, but Respondent no longer can recall specifically why he placed his own name as registrant, as it has been nearly 20 years since that day. The “Malcolm McLaren Multimedia Ltd.” corporation ultimately went nowhere, as Mr. McLaren grew bored with the concept. Respondent remained happy to allow Mr. McLaren to otherwise use this domain name for his other endeavors and so Respondent placed a basic website for him.
· Respondent is not conspiring in any way against Complainant in using this domain name. Respondent had no conversations with Mr. McLaren in which he made any statement that he wanted the domain name’s log-in information. Respondent has been paying the fees for Complainant and Mr. McLaren’s use of this domain name for years. Respondent and Ms. Catling were never compensated for their work for Mr. McLaren. After Mr. McLaren’s death, Respondent and Ms. Catling discussed the possibility of selling this domain name to recoup some profits from the now-failed “Malcolm McLaren Multimedia Ltd.” corporation. Respondent discussed the possibility for a sale with Mr. McLaren’s son, Joe Corre. Mr. Corre’s offer was not sufficient, and Respondent elected to stop negotiating with Mr. Corre in January 2013. Respondent did not pay much attention to this domain name’s status through most of late January 2013, as he needed to focus his attentions on caring for his girlfriend and her dying father. Respondent made another attempt to sell the domain name to Mr. Corre, and sold it to Mr. Corre, changing all possible settings, but without being capable of finishing the actual transfer. Respondent’s communications with Complainant were unpleasant, and Complainant’s e-mail messages were hostile and venomous. Respondent attests that Mr. Corre is now the owner of the domain name.
· Respondent is not working with Mr. McLaren’s son, Joe Corre, and has spoken to him only twice: Once at a birthday party in 2000, and once on April 12, 2013 to discuss the present domain name dispute. Mr. Joe Corre’s name appears in the domain name information now because he has bought this domain name.
C. Additional Submission
· Respondent fails to provide any evidence that the purported “Malcolm McLaren Multimedia Ltd.” corporation ever existed. Respondent provides no insight as to how the voting rights of this corporation function. Respondent admits that he “cannot be certain why” he registered the disputed domain name, let alone in his own name. Respondent’s own assertions show that he and Ms. Catling own no more than 50% of the company, an insufficient amount to give them the power to sell this disputed domain name, assuming this purported corporation even existed.
· Complainant provides an e-mail showing that Mr. McLaren did in fact request Respondent to change the domain name’s settings to reflect the fact that Mr. McLaren was the owner of the domain name, as Mr. McLaren was having e-mail issues. Mr. McLaren received a vague response from Respondent, but his e-mail began working again so he just assumed Respondent truthfully did as requested. Complainant had no other reason to expect that Respondent would deliberately choose not to assign the domain name to Mr. McLaren.
· Respondent’s decision to sell this domain name to Mr. Corre for approximately $750.00 illustrates that Respondent was willing to sell the domain to Mr. Corre for a bargain price (less than Respondent’s actual costs), although Complainant could not obtain the domain name for out-of-pocket costs.
The dispute between the parties raises issues outside the scope of the Uniform Domain Name Dispute Resolution Policy.
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
Respondent contends that he, Ms. Catling, and the late Mr. McLaren, were involved in a business venture. Respondent argues that the domain name in dispute was acquired to facilitate this business venture. Respondent asserts that this domain name is now the property of Mr. McLaren’s son, Joe Corre, who purchased it from Respondent and Ms. Catling.
Complainant argues that there is insufficient evidence to support a finding that such a business venture ever occurred. Complainant points out there is no information as to how voting rights and other rules of corporate governances were planned. Complainant assumes for argument that even if the corporation did exist, she would have come to own 50% of this corporation by way of being the beneficiary of Mr. McLaren’s Estate and thus would have the ability to prevent Ms. Catling and Respondent from acting on their own in selling this domain name to Mr. Joe Corre.
Based upon the allegations of the parties, the Panel finds that this is a business and/or contractual dispute between the Complainant and Respondent that falls outside the scope of the UDRP. In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel dismissed the case concluding that the dispute
“appears to hinge mostly on a business or civil dispute between the parties.” Moreover, this case, is like the situation in Love in that:
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.
For the foregoing reasons, the Panel concludes that the instant dispute falls outside the scope of the UDRP. Under the circumstances, the Panel finds it appropriate 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 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).
Finding that the Complaint and Response raise issues beyond the scope of the Uniform Domain Name Dispute Resolution Policy,
Accordingly, it is Ordered that the Complaint be dismissed.
Bruce E. Meyerson Panelist
Dated: May 13, 2013
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