The Duck Group, LLC v. Rubba Ducks
Claim Number: FA1308001513692
Complainant is The Duck Group, LLC (“Complainant”), represented by James T. Nikolai of Nikolai & Mersereau, P.A., Minnesota, USA. Respondent is Rubba Ducks (“Respondent”), represented by Morgan Smith of Smith & Raver LLP, Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <rubbaduck.com> and <rubbaducks.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 7, 2013; the National Arbitration Forum received payment on August 7, 2013.
On August 9, 2013, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the <rubbaduck.com> and <rubbaducks.com> domain names are registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the names. 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 August 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 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@rubbaduck.com and postmaster@rubbaducks.com. Also on August 9, 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 August 29, 2013.
Complainant submitted an Additional Submission, which was received and determined to be compliant on September 3, 2013.
On September 13, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant uses the RUBBA DUCKS marks to promote a line of toys. Complainant has obtained United States Patent and Trademark Office ("USPTO") trademark registrations for the mark (Reg. No. 2,541,946 filed August 3, 2000; registered February 19, 2002; assigned to Complainant July 30, 2013).
Complainant has used the mark for “more than 14 years” and has used the mark in commerce sometime “in the late 1990’s” after the February 6, 1998 incorporation of Complainant’s predecessor in interest.
Complainant controls the <rubbaducks.net>, <rubbaduck.net>, <rubbaducks.info>, <rubbaduck.info>, <rubbaducks.org>, and <rubbaduck.org> domain names.
Respondent registered both the <rubbaduck.com> and <rubbaducks.com> domain names, which merely affix “.com” to the mark.
Respondent is not commonly known by the disputed domain names. Respondent has not made a bona fide offering of goods and services through the domain names. Respondent’s profit/loss statement from January 1, 2011 through March 20, 2012 illustrates that Respondent reported no income from sales. Complainant does not believe that there is any commercial activity occurring through the website. Respondent is merely a shell company that is holding the domain names.
Respondent plans to sell the domain names.
Respondent is preventing Complainant from embodying its RUBBA DUCKS mark in domain names.
Respondent is attempting to disrupt Complainant’s legitimate RUBBA DUCKS business through its holding of the domain names.
Respondent had actual knowledge of Complainant’s existing rights in the RUBBA DUCKS mark when registering the domain names.
B. Respondent
Respondent contends as follows:
Respondent operates a bona fide business through its use of the domain names.
Respondent allowed a principal of Complainant, Mr. Mark Boldt, to provide a message for the domain names’ websites that states “RUBBA DUCKS names and characters are trademarks of RUBBA DUCKS VENTURES, INC. Created by BOLDT.”
Respondent is currently involved in a lawsuit with Complainant regarding the ownership of various assets and intellectual property, including the RUBBA DUCKS mark, as well as the disputed domain names.
Respondent alleges that certain documents provided with its response are true and correct copies of (1) an Asset Purchase Agreement entered into by Ducksworld, LLC and Ducksworld Corporation, and (2) a Asset Purchase Agreement entered into by Ducksworld Corporation and Respondent.
C. Additional Submissions
Complainant, in its Additional Submission, contends as follows:
The subject of the Complaint is <rubbaduck.com>,<rubbaduck.com> and <rubbashop.com>.
The disclaimer that Respondent references in its Response was only placed on the domain names’ websites on August 29, 2013, after Respondent received notice of the dispute.
The purchase agreements presented by Respondent were not authenticated by Complainant at all, and are ineffective in holding Complainant to any of the terms stated in said agreements.
The domain names at-issue are <rubbaduck.com> and <rubbaducks.com>.
Resolution of the instant dispute turns on the interpretation and application of Minnesota contract law.
The parties are currently involved in business litigation in the state of Minnesota concerning two asset purchase agreements that, inter alia, affect the ownership of the RUBBA DUCKS trademark and at-issue domain names.
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.
Notwithstanding the foregoing, a threshold question in all UDRP proceeding is whether or not, pursuant to the Policy and Rules, the dispute under consideration is amenable to a substantive decision by the panel. Under the UDRP, a panel may only decide a case on the narrow grounds set out in Policy 4(a). There is no provision for party discovery and complainant and respondent are limited to a prescribed small number of written submissions and their exhibits. Additionally, pivotal legal issues specific to a particular jurisdiction or area of the law may, as a practical matter, be difficult for a panel to appropriately analyze. A UDRP panel’s ability to find on complex issues of fact and law is thus limited.
In all UDRP proceedings, Policy 4(a) analysis requires the panel to determine the parties’ respective trademark rights in the at-issue domain name(s). More often than not, such determination is made by way of a review of evidence such as trademark registrations or indicia of common law rights in a claimed trademark. However, paragraph 5 of the Policy considers the UDRP proceeding an inappropriate vehicle to settle rich legal and factual matters. The section declares that disputes outside the narrow framework of paragraph 4 “…shall be resolved through any court … available.” Policy ¶5. One panel pronounced:
While Section 5 primarily seems to be concerned with using a UDRP forum to settle matters unrelated, or indirectly related, to issues concerning domain name registration and use, a complainant or respondent should not be permitted to use a UDRP claim to boot strap decisions regarding more senior disputes between the parties. AmeriPlan Corporation v. Shane Gilbert d/b/a NewWave Solutions, Inc., FA0203000105737 (NAF April 22, 2002)
In the instant case, assessing the relative trademark rights of the parties necessitates that the Panel resolve the factual and legal implications of the two asset purchase agreements evidenced by Respondent and the subject of Minnesota litigation, an undertaking concerning non-trivial aspects of Minnesota contract law. Such a task is not well suited to the abridged nature of the UDRP forum and therefore the Panel finds the instant domain name dispute to be outside the Policy’s purview. See Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007) (finding the disputed domain name outside the scope of the Policy where the case hinged on a business dispute, inter alia, concerning breach of contract).
Furthermore, Policy 4(k) states that when there is evidence of a court proceeding ICANN “will not implement the Administrative Panel’s decision … “ In such cases the purpose of the UDRP –to reduce costs and effort to resolve domain name disputes- is foiled and “no purpose is served by [the panel] rendering a decision on the merits to transfer the domain name, or have it remain, when… a decision regarding the domain name will have no practical consequence.” AmeriPlan Corporation. Here, Respondent challenges Complainant’s claim of rights in the RUBBA DUCKS trademark by way of pending state court litigation. Given such litigation, it seems unlikely that any Panel decision on the merits will bring finality to the parties underlying domain name dispute and that the ultimate determination of who has rights in the at-issue domain names will be finally resolved by way of the underlying state court contract action. While like in Love (cited above) the determinative issue in the instant UDRP dispute sounds in contract law, unlike Love, here the parties are also before a state court on the same issue. Thus, the Panel is presented with multiple sufficient grounds indicating that the instant dispute is not amendable to a substantive decision under the UDRP. See The Grief Recovery Institute, LLC and The Grief Recovery Institute Educational Foundation, Inc. v. Grief Recovery Institute, FA 1462781 (Nat. Arbl Forum Jan. 8, 2013) (concluding that the dispute contained a question of contractual interpretation and is therefore outside the scope of the UDRP and that “a panel should not rule on a decision when there is a court proceeding pending because ‘no purpose is served by [the panel] rendering a decision on the merits to transfer the domain name, or have it remain, when as here, a decision regarding the domain name will have no practical consequence.’” (Quoting AmeriPlan Corp.) ). Therefore, given the dependency of the underlying dispute on the interpretation and application of contract law, and given the fact that there is a pending state court proceeding concerning the same contract issues which are crucial to the parties rights under UDRP, the Panel finds that the instant dispute is not appropriate for a determination under Policy ¶4(a) and should be dismissed.
Having found the dispute not suitable for resolution under the ICANN Policy, the Panel concludes that the Complaint should be DISMISSED.
Accordingly, it is Ordered that the <rubbaduck.com> and <rubbaducks.com> domain names REMAIN WITH Respondent.
Paul M. DeCicco, Panelist
Dated: September 18, 2013
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