Alaska Health Fair, Inc. v. Chris Jacobson
Claim Number: FA1305001500868
Complainant is Alaska Health Fair, Inc. (“Complainant”), represented by Deborah J. Corker of Alaska Health Fair, Inc., Alaska, USA. Respondent is Chris Jacobson (“Respondent”), Alaska, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alaskahealthfair.org>, registered with NetEarth One Inc. d/b/a NetEarth.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 20, 2013; the National Arbitration Forum received payment on May 20, 2013.
On May 21, 2013, NetEarth One Inc. d/b/a NetEarth confirmed by e-mail to the National Arbitration Forum that the <alaskahealthfair.org> domain name is registered with NetEarth One Inc. d/b/a NetEarth and that Respondent is the current registrant of the name. NetEarth One Inc. d/b/a NetEarth has verified that Respondent is bound by the NetEarth One Inc. d/b/a NetEarth 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 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 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@alaskahealthfair.org. Also on May 22, 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 May 29, 2013.
On June 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Charles A. Kuechenmeister 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 is an Alaska non-profit corporation that organizes and promotes health fairs in that state. It incorporated in 1983 and has used the ALASKA HEALTH FAIR, INC. mark, which is registered as a trade name with the State of Alaska, since then. The <alaskahealthfair.org> domain name (the “Domain Name”) was registered and has been used at least since 2006 by Complainant for advertising health fairs, providing applications for volunteer leaders and exhibitors, and sharing Complainant’s health education materials with Internet users. Complainant’s operations relied critically on its use of the Domain Name, which served as the face of its non-profit activities for a number of years prior to early 2013. Complainant provides Internal Revenue Services (“IRS”) correspondence in which the IRS confirms that Complainant is exempt from taxation as a non-profit under 26 U.S.C. § 501(c)(3). See Compl.’s Ex. A. Complainant has obtained service mark registrations for this mark in Alaska, the state where both Respondent and Complainant reside. See Alaska State Reg. No. 3,099 registered July 30, 2007.
In December 2012, Complainant engaged Respondent to update its website located at the Domain Name. Complainant gave Respondent access to the Domain Name so that he could perform those services, but he was not given authority to transfer the Domain Name to himself.
Nevertheless, Respondent did transfer the Domain Name to himself and subsequently denied Complainant’s demands for access to it. Respondent deleted Complainant’s existing, functional website, and replaced it with a partially complete website in January 2013. Complainant protested this to Respondent on January 7, 2013, stating that the old website should have stayed up until Respondent finished his work. Respondent replied that the new website would be completed within two weeks or so and continued to refuse Complainant’s request for return of the Domain Name. Complainant was not even given access to the website to post new information until early February.
At the end of February 2013, Respondent had not yet finished the new website but billed Complainant his entire fee. Complainant paid one-half the amount invoiced for the website update but refused to pay the balance because the work was not completed. Respondent also charged Complainant a monthly maintenance fee, which Complainant disputed because Complainant desired to maintain the website itself and not have Respondent perform those services. Complainant informed Respondent of its desires in this regard during their initial negotiations for the work to be performed by Respondent. The parties argued over the invoice until April 2013, when Respondent deleted all content from the website and replaced it with a notice that the Complainant had not paid him for the work done, and that the website would remain down until he was paid in full.
Respondent’s Contentions
Complainant cannot have rights in a domain name registered to a registrar that is located in Nevada, USA, and London, United Kingdom, by showing rights only in Alaska, USA. Complainant’s Alaska trademark registrations do not give Complainant distinct rights beyond the borders of Alaska itself.
Complainant engaged Respondent to build a completely new website, and thereafter to maintain and host its entire online presence. In this connection Complainant authorized him to transfer the Domain Name to himself. In e-mail messages and oral conversations between the parties in December 2012 he made clear that “consolidation of services” included registering the Domain Name in himself at NetEarth One, Inc., and performing monthly maintenance services. Additionally, in December 2012 Complainant actively assisted Respondent to re-register the Domain Name in his name when his initial efforts to transfer it failed.
Respondent has devoted 700 hours of work to this project. Until Respondent removed the active content from the website in April, on account of Complainant’s failure to pay for Respondent’s services, the website resolving from the Domain Name allowed Internet users to download relevant information that Complainant sought under the contract. During this time the website allowed 3,652 people/IP addresses to receive information about Complainant and permitted Internet users to make credit card donations to Complainant. Complainant was able to upload thirteen files to the website.
Respondent has fully performed the terms of his contract with Complainant and Complainant has failed to pay for the services rendered by Respondent. According to the notice posted on the website by Respondent, “the system will resume when a complete payment against Invoice #130424 is made.”
Respondent requests a finding of reverse domain name hijacking against Complainant.
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.
The Panel makes the findings and determinations set forth below with respect to the Domain Name.
Preliminary Issue: Contractual Dispute Outside the Scope of the UDRP
The Parties’ assertions clearly demonstrate that each had very little understanding of what the other expected from the business arrangement between them. Complainant says that it engaged Respondent to update its existing website with materials that it furnished to Respondent, and that it desired to be able to maintain the website itself once these changes had been made. It had no idea that Respondent would re-register the Domain Name in his name, and had no interest in hiring Respondent to maintain the website on a continuing basis after the update was complete. Respondent asserts that Complainant engaged it to build a new website, from scratch, and thereafter to operate, maintain and host it on an on-going basis, for a monthly fee. Registering the Domain Name in his name, at his server at NetEarth One, Inc., was an integral part of this arrangement, and Complainant not only authorized the transfer of the Domain Name to Respondent but actively assisted over the course of several days in December to effect that transfer.
Under circumstances similar to these, UDRP panels have sometimes held that the case involves business and/or contractual disputes between two parties that fall 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.
This resolution is most frequently used in cases where there are genuine issues of material fact which UDRP panels, because of the constraints of the Policy itself, are not equipped to resolve. In this case, however, while significant factual issues are indeed present, the Panel believes it can still resolve the matter of the Domain Name registration within the framework of the Policy and elects to do so, even though the parties will need to resolve their other issues elsewhere.
Complainant does not have a trademark registration with a national trademark authority, but the Policy does not mandate a formal registration in order to assert rights in a mark—a valid showing of common law rights through a secondary meaning in the mark may suffice. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Complainant has used the ALASKA HEALTH FAIR, INC. mark as the name of its non-profit operation since 1983, and since then has used the mark for advertising health fairs, providing applications for volunteer leaders and exhibitors, and sharing Complainant’s health education materials with Internet users. It has obtained service mark registrations for this mark in Alaska (Alaska State Reg. No. 3,099 registered July 30, 2007), the state where both Respondent and Complainant reside. See Complainant’s Exhibit 4. Complainant has satisfactorily shown that it has established its rights in and to the ALASKA HEALTH FAIR, INC. mark for purposes of Policy ¶ 4(a)(i) based on its continuous use of the mark since 1983. See Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark); Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999).
Respondent’s contention that Complainant’s Alaska trademark registration is invalid and not recognized at the location of either of the registrar’s principal business offices (Henderson, Nevada, and London, U.K.) misses the point. Complainant’s Alaska state registration and common law rights in the mark stand on their own, and the situs of the registrar is immaterial.
Complainant makes no contentions under Policy ¶ 4(a)(i) regarding whether the Domain Name is confusingly similar or identical to its ALASKA HEALTH FAIR mark. Nevertheless, the Panel notes that the Domain Name incorporates that mark in its entirety, only deleting the business designation “inc.” and some spacing. The addition of the generic top-level domain (“gTLD”) “.org” is present, but all of these differences are irrelevant to a Policy ¶ 4(a)(i) analysis. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the Panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
Based upon the foregoing, the Panel concludes that the <alaskahealthfair.org> Domain Name is identical or confusingly similar to Complainant’s ALASKA HEALTH FAIR mark under Policy ¶4(a)(i), and that Complainant has substantial and demonstrated rights in that mark.
If a complainant makes a prima facie case that the respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden shifts to respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interest in the Domain Name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent’s lack of rights or legitimate interests in the Domain Name is demonstrated primarily by the fact that the Domain Name was originally registered and used by Complainant since at least 2006 in the conduct of its business operations, until December 2012, when, purportedly as part of a business arrangement between the parties, Respondent converted and transferred it to his own name without any knowledge or authority of Complainant to do so. Complainant desires to have the Domain Name transferred back to it. Based upon this, it appears that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name, and it is incumbent upon Respondent to demonstrate that it does.
Respondent’s only claim as regarding rights and legitimate interests is that Complainant authorized him to transfer the Domain Name to himself and actively participated in the transfer. For the purposes of resolving this element of the case, the Panel accepts Respondent’s version of the facts. From copies of email correspondence between the parties dated December 20 and 21, 2012 incorporated into the Response, it appears that Complainant actively assisted Respondent in transferring the Domain Name to him. Complainant’s executive director may not have been aware that she was doing so, but the evidence is fairly clear that this is what she did.
At the same time, however, even accepting Respondent’s version of the facts, it is also clear that the sole purpose of transferring the Domain Name to Respondent was to facilitate or promote his performance of the services he was obligated to render to and on behalf of Complainant as regards the website work. There may be substantial disagreement as to the nature and scope of those services, but there is no dispute that Respondent was to perform them for Complainant. The transfer of the Domain Name was an integral part of that arrangement. This case thus is distinguished from the majority of UDRP cases, in which the respondent registers and uses a domain name for his own business purposes, as both the beneficial and registered owner of the domain name at issue. Here, in registering the Domain Name in his name, Respondent was acting only as agent for the Complainant, in order to perform services for the Complainant. Even under Respondent’s theory of the case, this agency relationship was not intended to be perpetual. Complainant could terminate it at any time, and upon such termination Respondent would be obligated to return the Domain Name to Complainant, all subject of course to the terms of their contract. In short, Respondent can claim no right or legitimate interest in the Domain Name for himself merely because, as part of his personal services contract with the Complainant, he registered the Domain Name in his name. The record may support the concept of Complainant’s consent to register the Domain Name in Respondent for certain limited purposes but there is no evidence of any intent to transfer ultimate control over, or beneficial interest in the Domain Name to Respondent. He was at all times acting solely as agent for Complainant, and not as a transferee of the name in his own right.
Respondent did not assert any right or legitimate interests in the Domain Name based upon any of the circumstances enumerated in Policy ¶ 4 (c), i.e., bona fide offering of goods or services, being commonly known by the domain name, legitimate or fair noncommercial use. Accordingly, the Panel does not address these beyond observing that there is no evidence in the record to support Respondent’s right or legitimate interests in the Domain Name based upon any of those circumstances.
Based upon the foregoing, the Panel finds and determines that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Complainant bases its claim of bad faith upon the fact that Respondent refuses to return the Domain Name to it, despite its demand that he do so. Complainant asserts that Respondent refuses to return the Domain Name in order to compel Complainant to pay Respondent for services which were either performed in a substandard and inadequate manner or not at all, or which were not desired or authorized by Complainant. Respondent asserts that the services he provided conformed to the contract and that Complainant refuses to compensate him for those services as the contract requires. These claims and defenses do not refer to or expressly implicate any of the indicia of bad faith listed in Policy ¶ 4(b), but these factors are not the only grounds for finding bad faith under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
The Panel is not in a position to resolve all of the factual disputes among the parties, but it is clear from the facts not in dispute that Respondent does not assert any right to use the Domain Name for his own business purposes, as is the case in most UDRP proceedings. Based upon the screenshot of the website resolving from the Domain Name, it is clear that Respondent holds the Domain Name as security for the payment of his invoice; that is his only basis for refusing to return it to Complainant now, and it was an important, if not the primary reason, for his registering the Domain Name in himself in the first place. He is claiming a lien or some kind of security interest in the Domain Name to secure the payment of his fees. Here again, while the parties have significant disagreement as to many of the terms of their contract or agreement, there is no evidence anywhere of discussion among them before the work began about Respondent taking a lien or security in the Domain Name. In the absence of any such evidence, and in the absence of any other basis, i.e., statutory or common law, for Respondent to claim an enforceable lien against the Domain Name, the Panel concludes that Respondent has no right or claim of right to withhold it from Complainant. His attempt to do so without any lawful basis constitutes a breach of fiduciary duty and manifest bad faith.
Based upon the foregoing, the Panel finds and determines that Respondent registered and is using the Domain Name in bad faith.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <alaskahealthfair.org> domain name be TRANSFERRED from Respondent to Complainant.
Having ruled in favor of the Complainant on the merits of the Complaint, the Panel finds and determines that Respondent’s claim of reverse domain name hijacking be DENIED.
Charles A. Kuechenmeister, Panelist
Dated: June 24, 2013
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