The Governor and Company of the Bank of Ireland v. Michael O'Herlihy
Claim Number: FA1305001497730
Complainant is The Governor and Company of the Bank of Ireland (“Complainant”), represented by Simon Williams, England. Respondent is Michael O'Herlihy (“Respondent”), Ireland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <boigroup.net>, registered with eNom, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 2, 2013; the National Arbitration Forum received payment on May 2, 2013.
On May 2, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <boigroup.net> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 May 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 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@boigroup.net. Also on May 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 5, 2103, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <boigroup.net> domain name is confusingly similar to Complainant’s BOI mark.
2. Respondent does not have any rights or legitimate interests in the <boigroup.net> domain name.
3. Respondent registered and used the <boigroup.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the owner of a trademark registration for its BOI mark with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 2,491,293 filed June 27, 2008, registered November 21, 2008). Complainant has used the <boigroup.net> domain name since 2004 in the banking industry.
Respondent registered the <boigroup.net> domain name on February 13, 2007, and renewed it in February of 2013, and is currently not making an active use of the domain name. Respondent was a former employee of Complainant, and is or was a consultant for Complainant’s outside IT provider,
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.
In view of 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 draw such inferences it 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.”).
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
The Panel notes that Respondent was originally a direct employee of Complainant but was transferred to Hewlett-Packard on April 1, 2004 as part of Complainant’s decision to outsource its IT infrastructure. Complainant states that at the time of the registration of the disputed domain name, Respondent was an employee for Hewlett-Packard, working as a consultant for Complainant, and registered the domain in connection with implementation of a new “internal Active Directory domain” for Complainant. Complainant argues that Respondent registered the <boigroup.net> domain name in his own name, breaching his express duties and obligations to his employer and his implied duties and obligations to Complainant, as Hewlett-Packard’s client. Complainant argues that Respondent did this for the purpose of selling the disputed domain name to Complainant.
The Panel notes that Complainant does not provide a copy or the details of any contract between Complainant and Respondent or Hewlett-Packard. Complainant also does not provide any evidence of Respondent’s alleged intention to sell the disputed domain name.
Previous panels have acknowledged that jurisdiction of a UDRP case involving a contract issue would be proper where the complainant alleged and proved prove bad faith. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000); see also Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 14, 2000). In this case, however, Complainant has not proven bad faith and it is likely that an examination of the underlying contractual relationships will be necessary to do so.
Therefore, the Panel finds that this is a contractual dispute that falls outside the scope of the UDRP. The panel in Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) similarly ruled, stating:
[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, 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.
The Panel dismisses the Complaint due to the underlying contractual issues, beyond the scope of the UDRP. 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).
The Complaint is dismissed and relief is DENIED.
Accordingly, it is Ordered that the <boigroup.net> domain name REMAIN WITH Respondent.
Sandra J. Franklin, Panelist
Dated: June 13, 2013
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