Rene Gelston v. Goldie McGoldrick / Absolute Vinyl ltd
Claim Number: FA1308001516860
Complainant is Rene Gelston (“Complainant”), United Kingdom. Respondent is Goldie McGoldrick / Absolute Vinyl ltd (“Respondent”), represented by Susan Davey of Beck Greener, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bm-soho.com>, registered with GODADDY.COM, 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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2013; the National Arbitration Forum received payment on August 28, 2013.
On August 29, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <bm-soho.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. 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 September 5, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 25, 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@bm-soho.com. Also on September 5, 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 September 25, 2013.
On September 30, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.
On October 1, 2013, an Additional Submission of Complainant was received by the Forum. Complainant’s Additional Submission complied with Supplemental Rule 7.
On October 7, 2013, an Additional Submission of Respondent was received by the Forum. Respondent’s Additional Submission complied with Supplemental Rule 7.
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 contends as follows:
1. Complainant possesses rights in the BLACK MARKET mark, as well as in the abbreviated term “BM.” Complainant has used the BLACK MARKET mark since 1984, and now uses the mark in connection with music retail, events, a record label, a clothing line, and audio headphones. Complainant first began using the shortened “BM” around 1990.
2. Complainant owns the <bmsoho.com> domain name, which it registered on October 30, 2005. Complainant’s registration predates Respondent’s registration of the <bm-soho.com> domain name on November 22, 2005. Respondent’s <bm-soho.com> domain name is confusingly similar to Complainant’s BLACK MARKET mark. Respondent’s use of the <bm-soho.com> domain name causes significant confusion with Complainant in the marketplace. Respondent registered this domain name in an attempt to pass itself off as Complainant, which has had a detrimental effect on Complainant’s ability to have complete control of its brand image and to thrive as a business. The website hosted at the disputed domain name contains metadata that patently references and identifies itself as the brand “Black Market,” perpetuating confusion and redirecting search engine traffic away from Complainant’s own website. Respondent’s registration of the <bm-soho.com> domain name disrupts Complainant’s business and causes intended confusion. By utilizing this domain name, Respondent has intentionally set out an attempt to attract, for commercial gain, Internet users to its site by creating a likelihood of confusion. Respondent is attempting to pass itself off as Complainant following failed negotiations to license the use of the BLACK MARKET mark from Complainant.
3. Respondent’s business operates out of the same physical premises as Complainant’s BLACK MARKET business once operated. In 1990, following Complainant’s departure from those premises, Complainant granted Shango Ltd (a company that Respondent worked for as manager prior to taking over as the new owner of Absolute Vinyl Ltd) a license to use the BLACK MARKET mark as part of Shango Ltd’s trading name for a term of 10 years. After the license period expired a new license to use the mark was not granted. Shango Ltd continued to use the BLACK MARKET mark and <blackmarket.co.uk> domain name after the licensing period terminated. Complainant then filed a complaint with the Nominet UK Resolution Service, and successfully regained the <blackmarket.co.uk> domain name from Shango Ltd. See DRS Number 3312.
4. The <bm-soho.com> domain name was registered on November 22, 2005, after which Shango Ltd. began calling its new business “BMSoho” and using a similar design on its logo in order to lead the general public to think that the business was still trading under the BLACK MARKET name. In 2008 Complainant learned that David Piccione, who owned Shango Ltd along with Nicolas Anders Gildan, had sold his interest in Shango Ltd to Respondent. Sometime later Respondent contacted Complainant seeking a new licensing deal for the use of the BLACK MARKET name. Complainant refused this request, as Respondent was continuing to confuse customers and Internet users alike by using “BMSoho” as its trading name, displaying BLACK MARKET logos and signage on the inside of Respondent’s physical premises, and referencing “Black Market Records” on Respondent’s website. The words “Black Market” and “Black Market Records” have now been removed from the front of Respondent’s website, but these references still remain in the backend metadata of the website.
B. Respondent
Respondent contends the following:
C. Additional Submissions
To reach its decision, the Panel has considered the additional submissions of the Parties, providing contentions and evidence mostly supplementary to the Complaint and the Response respectively.
Black Market Group Ltd, controlled by Complainant, owns the BLACK MARKET trademark registered on June 11, 1993 in the UK under Reg. No. UK00001432845, filed on June 11, 1990, covering sound recordings; apparatus for recording, transmission or reproduction of sound or images of international Class 9, and clothing and leisurewear of Class 25. This company also owns the BLACK MARKET trademark registered in the UK on April 9, 2010 under Reg. No. UK00002535231, filed on December 29, 2009, covering bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; deodorants for personal use, of international Class 3.
In 1994 Complainant, through a license agreement, granted Shango Limited a license on the BLACK MARKET trademark for 10 years. Respondent was manager of Shango Limited. Later, he bought Shango Limited`s interest in the record business and became its owner. By that time the license agreement had already expired.
On October 30, 2005, Black Market Records, owned by Complainant, registered the <bmsoho.com> domain name.
On November 22, 2005, Respondent registered the disputed domain name.
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 canceled 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: Dispute Outside the Scope of the UDRP
According to Complainant, Respondent’s business operates out of the same physical premises as Complainant’s BLACK MARKET business once operated. Complainant claims that in 1990, following Complainant’s departure from those premises, Complainant granted Shango Ltd (a company that Respondent worked for as manager prior to taking over as the new owner) a license to use the BLACK MARKET mark as part of Shango Ltd’s trade name for a term of 10 years. Complainant claims that Shango Ltd continued to use the BLACK MARKET mark and the <blackmarket.co.uk> domain name after the licensing period had terminated, despite the fact that a new license to use the mark was not granted. Complainant says it then filed a complaint with the Nominet UK Resolution Service, and successfully regained the <blackmarket.co.uk> domain name from Shango Ltd. See DRS Number 3312. Complainant claims that around the time Respondent registered the <bm-soho.com> domain name on November 22, 2005, Shango Ltd. began calling its new business “BMSoho” and using a similar design on its logo in order to lead the general public to think that the business was still trading under the BLACK MARKET name. Complainant recounts learning sometime in 2008 that David Piccione, who owned Shango Ltd along with Nicolas Anders Gildan, had sold his interest in Shango Ltd to Respondent. Complainant says that Respondent contacted Complainant seeking a new licensing deal for the use of the BLACK MARKET name sometime later. Complainant provides that it refused this request, as Respondent was continuing to confuse customers and Internet users alike by using “BMSoho” as its trading name, displaying BLACK MARKET logos and signage on the inside of Respondent’s physical premises, and referencing “Black Market Records” on Respondent’s website. Complainant concedes that the words “Black Market” and “Black Market Records” have now been removed from the front of Respondent’s website, but maintains that these references still remain in the backend metadata of the website.
Respondent urges that proceedings under the UDRP are not intended to determine issues of trademark infringement, unfair competition, or passing off, but rather are intended only to provide summary relief for rights holders where there is clear evidence of bad faith on the part of a respondent. In any event, Respondent argues that it never agreed to not use the term “BM” following the expiration of the licensing agreement between the Parties, and that no consideration was given by Complainant in exchange for this alleged promise anyway.
The Panel has considered the Parties` allegations and evidence, including the uncontested fact that Complainant, through a license agreement, granted Shango Limited (former owner of the record store now operating as BM-Soho, and not a party in this proceeding) a license to use the BLACK MARKET trademark. Also, the Panel notes that there is a controversy between the Parties involving, inter alia, the extent of their respective rights in the “BM” sign and other issues deriving from their respective relationships with Shango Limited, not a party to this proceeding. Specifically, there appears to exist a dispute whether Respondent’s predecessors in title to the record business agreed or not to Complainant´s claim that “BM” infringes Complainant’s BLACK MARKET trademark. The fact that Respondent has been operating its “BM-Soho” store for several years now appears not to be contested (whether or not it constitutes a trademark infringement or passing off). Further, from the evidence it is not clear who used first the “BM” sign in connection with the record business and/or store. In the opinion of the Panel, clarifying these facts and other circumstances relevant to this case would most likely require witnesses declaring under oath before a court.
Clearly differing from an wide-scope action brought before a court of competent jurisdiction, proceedings under the Policy are a simplified and expedited means to obtain an administrative decision after – typically - just one round of writings and without hearings, which makes them apt to determine whether a clear case of cybersquatting exists or not. In this regard, paragraph 135 of the Final Report of the WIPO Internet Domain Name Process of April 30, 1999, states: “(i) First, the scope of the procedure is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or “cybersquatting” and is not applicable to disputes between parties with competing rights acting in good faith.” See the majority opinion in Courtney Love v. Brooke Barnett, (Nat. Arb. Forum May 14, 2007): (“ Thus, according to the majority, 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 panel in Luvilon Industries NV v. Top Serve Tennis Pty Ltd. Case No. 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.”); see also 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).
For these reasons, according to paragraph 15(e) of the Rules, the Panel finds this is a business and legal dispute which is outside the scope of paragraph 4(a) of the UDRP, and more properly to be decided before a court of the competent jurisdiction.
Since the present dispute is outside the scope of the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <bm-soho.com> domain name REMAIN WITH Respondent.
Roberto A. Bianchi, Esq.
Panelist
Dated: October 14, 2013
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