national arbitration forum

 

DECISION

 

Petersen-Dean, Inc. v. Jason Brinkmann

Claim Number: FA1305001499810

PARTIES

Complainant is Petersen-Dean, Inc. (“Complainant”), represented by John C. Cain of Wong, Cabello, Lutsch, Rutherford & Brucculeri, L.L.P., Texas, USA.  Respondent is Jason Brinkmann (“Respondent”), represented by Adam S. Baldridge of Baker, Donelson, Bearman, Caldwell & Berkowitz, P.C., Tennessee, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <brinkmannqualityroofing.com> and <brinkmanqualityroofing.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge and has no known conflict in serving as Panelist in this proceeding.

 

Ho Hyun Nahm as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 14, 2013; the National Arbitration Forum received payment on May 14, 2013.

 

On May 16, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <brinkmannqualityroofing.com> and <brinkmanqualityroofing.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 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@brinkmannqualityroofing.com, postmaster@brinkmanqualityroofing.com.  Also on May 16, 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 June 5, 2013.

 

Complainant submitted an Additional Submission, which was received and found compliant on June 10, 2013.

 

Respondent submitted an Additional Submission, which was received and found compliant on June 14, 2013.

 

On June 13, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

 

A.  Complainant

 

(1) Policy ¶ 4(a)(i): Complainant’s Rights / Confusing Similarity of Domain Name

• Complainant has used the BRINKMANN mark in connection with its residential/commercial roofing products and services since 1971. Complainant’s subsidiary, Brinkmann Investments, Inc. (“BII”), was the original user of the mark and it was this entity that started to use the mark in 1971. Respondent’s father, Michael Brinkmann founded BII, and Complainant acquired the company along with all trademark rights for the BRINKMANN mark in 2007.
• Respondent’s <brinkmannqualityroofing.com> and <brinkmanqualityroofing.com> domain names are confusingly similar to the BRINKMANN mark. The domain names both feature the BRINKMANN mark, or a misspelling thereof, along with the generic terms “quality” and “roofing” (describing the services provided under the BRINKMANN mark).

 

(2) Policy ¶ 4(a)(ii): Respondent Lacks Rights & Legitimate Interests

• Respondent’s father assigned all rights of the BRINKMANN mark to Complainant. Respondent has no prior rights in these disputed domain names. Complainant signed an agreement whereby it acknowledged he could not use the BRINKMANN mark as his known business name. Even though Respondent’s surname is “Brinkmann,” this alone does not give Respondent the ability to here and now avoid his duly agreed upon contractual obligations and use his surname in direct competition with Complainant and its BRINKMANN mark.
• Respondent signed an employment agreement that specifically prohibited him from using the BRINKMANN mark in future construction business ventures, web domains, and any other media. Yet today Respondent uses both the <brinkmannqualityroofing.com> and <brinkmanqualityroofing.com> domain names to operate a new and directly competing business named “Brinkmann Quality Roofing Services, Inc.” There is nothing bona fide about Respondent’s disregard for his contractual obligations, and the subsequent use of the BRINKMANN mark in a competing business.

 

(3) Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use & Registration

• Respondent is using the BRINKMANN mark to operate a directly competing business. This business not only provides a bad faith competitor to Complainant, it directly disrupts Complainant’s official business under the BRINKMANN mark.
• Respondent certainly had the actual knowledge of Complainant’s rights in the BRINKMANN mark. Respondent’s role within Complainant’s organization, and as the son of the man who transferred rights to the BRINKMANN mark to Complainant, makes Respondent’s actual knowledge clear.

 

B.  Respondent

 

(1) Policy ¶ 4(a)(i): Complainant’s Rights are Suspect at Best

• Complainant does state that it uses the BRINKMANN mark in its own business. However, common law rights require enough evidence to show a secondary meaning. A surname such as BRINKMANN cannot become a distinct common law trademark without the adequate factual context. Complainant provides none. Respondent’s father may have assigned rights to the BRINKMANN mark, but Respondent is his own person and thus is free to establish his own rights in his surname. Furthermore, Complainant appears to have used the BRINKMANN mark less and less in recent years. This suggests that Complainant has insufficient rights in the BRINKMANN mark.

 

(2) Policy ¶ 4(a)(ii): Respondent’s Rights

• Respondent is commonly known by his surname, Brinkmann. The services he provides involve roofing. Thus the <brinkmannqualityroofing.com> and <brinkmanqualityroofing.com> domain names are merely Respondent’s surname combined with the services he provides.

 

(3) Policy ¶ 4(a)(iii): No Bad Faith Registration

• Respondent did not register either domain name in bad faith. Respondent’s intention was to operate a business using his own surname. Respondent never had the idea to register these names so as to frustrate or disrupt Complainant’s business.

 

C.  Additional Submissions

 

(1) Complainant’s Contentions

 

• Complainant maintains that it has made sufficient use of the mark since 1971.

Complainant has continued to make sufficient use of the BRINKMANN mark so as to achieve secondary meaning. The mark is featured extensively in brochures, advertisements, and photographs.

 

(2) Respondent’s Contentions

 

• Complainant did not attempt to rebut the key point that Respondent has a legitimate interest in the disputed domain names. Respondent has a legitimate interest in the disputed domain names as discussed in the Respondent’s Response.

 

• Although Complainant has submitted various exhibits, none of the exhibits submitted by Complainant demonstrates that Complainant is using the mark outside of the Houston area, let alone in interstate commerce, i.e., outside of Texas. Therefore, Complainant has made no showing that section 2(f) of the Lanham Act is applicable here. Furthermore, Complainant’s use of the mark on its secondary webpage-myroofer.com- is minimal and not even connected to the roofing services Complainant alleged in its trademark application. Complainant has failed to demonstrate that it is using the mark in interstate commerce in connection with roofing services.

 

FINDINGS

 

Complainant filed a federal trademark application for the mark BRINKMANN with the USPTO on April 29, 2013, which is pending.

 

In 1971, Respondent’s father started a roofing company named Brinkmann Investment, Inc. In March 2007, Complainant acquired Brinkmann Investments, Inc., which is now a wholly-owned operating subsidiary of Complainant.

 

There was an employment agreement between Complainant and Respondent made on May 1, 2007. Respondent resigned from the company of Complainant on March 29, 2013.

 

Respondent registered the <brinkmannqualityroofing.com> domain name on April 20, 2012 and the <brinkmanqualityroofing.com> domain name on April 18, 2013.  

 

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 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.

 

However, the Panel will first consider a preliminary issue, namely:

 

·        Whether the matter is a business dispute outside the scope of the UDRP.

 

Preliminary Issue: Business Dispute Outside the Scope of the UDRP

 

Respondent completely ignored any reference to a contract. Respondent believes his rights in the BRINKMANN mark arise from his use of his own last name, which is identical to the BRINKMANN mark.

 

Complainant notes that Respondent, Jason Brinkmann, is the son of the former owner of its subsidiary BII. Respondent signed an employment agreement that purportedly prohibited Respondent from using the BRINKMANN mark in domain names, future businesses, or any other media. Respondent purportedly registered these domain names as an officer of the company, and subsequently resigned from his post to pursue another venture. Complainant has provided the Panel with a copy of the executed agreement in Complainant’s Exhibit E.

 

Respondent argues that despite Complainant's reliance upon its agreement with Respondent's father, that agreement has no relevance in this instant situation. Respondent was not a party to the agreement between Complainant and Respondent's father and therefore did not assign any of Respondent's rights as to the use of his surname as part of a domain name. Respondent also questions the enforceability of the non-compete clause in the Employment Agreement referenced in the Complaint.

 

In this instance, the Panel finds that this is a business and contractual dispute between Complainant and its former employee, Respondent, that falls outside the scope of the UDRP. This is more likely given the discrepancy to the extent that this contract barred Respondent from registering domain names as an employee, and whether the contract is rightfully constructed as broadly as Complainant claims it ought to be. 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. . .  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 because 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 Indus. 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 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.

 

Based upon the reasoning outlined in the aforementioned cases and the record, the Panel concludes that this instant dispute contains a question of contractual interpretation, and thus falls outside the scope of the UDRP.

 

For the reasons stated above, the majority finds that it is not necessary for the Panel to consider the three elements of the Policy.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

 

For the reasons presented above, it is ordered that the <brinkmannqualityroofing.com> and <brinkmanqualityroofing.com> domain names remain with Respondent.

 

 

Ho Hyun Nahm, Panelist

Dated:  June 25, 2013