Robert Heward, Director, Londoni Gold Corp. v. St Clair Mines / Terry Blake
Claim Number: FA1310001522314
Complainant is Robert Heward, Director, Londoni Gold Corp. (“Complainant”), represented by Robert Heward, Canada. Respondent is St Clair Mines / Terry Blake (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <londonigoldcorp.com> (“the Domain Name”), registered with FASTDOMAIN, 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.
Clive Lincoln Elliott, QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2013; the National Arbitration Forum received payment on October 1, 2013.
On October 2, 2013, FASTDOMAIN, Inc. confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with FASTDOMAIN, Inc. and that Respondent is the current registrant of the name. FASTDOMAIN, Inc. has verified that Respondent is bound by the FASTDOMAIN, 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 October 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@londonigoldcorp.com. Also on October 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.
A timely Response was received and determined to be complete on October 21, 2013.
On October 29, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Clive Lincoln Elliott QC 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 states that he is the director of a Canadian company called Londoni Gold Corp and owns the domain name <londonigold.com>.
Complainant asserts that the Domain Name <londonigoldcorp.com>, registered by Respondent on 27th, February 2012, is confusingly similar to its own domain name. Complainant also asserts that Respondent is using the Domain Name in bad faith and as a result has caused Complainant’s company irreparable harm and loss of investment.
Complainant contends that Respondent is using Domain Name to misuse names and for publication of false information against Complainant's company, its officials, and its representatives.
Complainant also claims that Respondent is posting confidential shareholder information on its website and has contravened a signed Consulting Agreement dated November 1, 2010, which agreement includes confidentiality, intellectual (sic), and non-disclosure clauses. Complainant asserts that Respondent is no longer a consultant for it and therefore has no rights or legitimate interests in respect of the Domain Name.
Complainant suggests that Respondent has registered the Domain Name primarily for the purpose of disrupting and tarnishing the business of Complainant, and advises that Respondent has been warned by Complainant to cease and desist from misusing and publicizing false information through this website.
B. Respondent
Respondent denies that the Domain Name has been created in bad faith to intentionally tarnish the image of Complainant. Respondent advises that the purpose of creating the Domain Name was to defend its reputation and that of the company, St. Clair Mines Ltd. Respondent asserts that Complainant has entered into an Internet smear campaign against Respondent by using the domain name <www.saintclairmines.net>, which Respondent contends has caused irreplaceable damage both to it and to St. Clair Mines Limited.
Respondent asserts that the Domain Name is used to alert the public that Complainant, and his associates via Londoni Gold Corp AG, have acted fraudulently and used assets belonging to St. Clair Mines Ltd to raise finance from investors.
Respondent states that the company Londoni Gold Corp UK is owned by it and therefore reserves it’s right to use the name Londoni Gold Corp as a website platform to reach the right audience. Respondent claims that it exposed the actions of Complainant and that as a result Complainant retaliated by going on a smear campaign to discredit Respondent and sabotage the company St. Clair Mines, including the creation of the website “www.saintclairmines.net”.
Respondent alleges that Respondent's lawyers have written to Complainant demanding it cease and desist from its conduct, failing which court action would be taken.
Respondent denies that the website <londonigoldcorp.com> is a slanderous website and argues that it has been created to back up other statements and that it was transparently registered. It asserts it is a legitimate site used for genuine purposes.
Respondent alleges it has filed a counterclaim against Complainant requesting the return of the domain name <www.saintclairmines.net>, which Respondent asserts was acquired in bad faith for the purpose of tarnishing Respondent's name and in order to destroy his company St. Clair Mines Limited.
Respondent states that Londoni Gold Corp Limited is a privately owned limited company owned by Respondent, Terry Thomas Blake, and is registered in the United Kingdom. Respondent asserts that the right to "Londoni Gold" as a name is reserved to Respondent personally as the pioneer of the gold exploration project through which Londoni Gold Corp was created.
Respondent denies Complainant's allegation that the Domain Name was created in bad faith to divert users to this website to create confusion for purpose of defamation.
Respondent asserts that registration of its Domain Name is a defense strategy to limit the collateral damage it alleges was caused by Complainant after it registered the website <www.saintclairmines.com>. Respondent claims that Complainant is using this website as a platform for a smear campaign against Respondent. Respondent believes it has a right to publically issue statements to defend his reputation and that of St. Clair Mines Ltd and to be able to take preventive measures.
Respondent replies to the allegation that it publicised non-disclosure material Mr Terry Blake having been the former president of Londoni Gold Corp. Respondent asserts that Mr Blake was also the Principal of St. Clair Mines, which is the counterparty to the agreement.
For the reasons set out below the Panel is of the view that the dispute is outside the scope of the UDRP. Accordingly, the Complaint is denied.
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.
Business/Contractual Dispute Outside Scope of the UDRP
Before determining the Complaint in accordance with the Policy the Panel needs to be satisfied that it has the necessary jurisdiction and it can and should determine the Complaint in accordance with the Policy.
Respondent contends that Complainant and its associate were former agents of Respondent’s company, St. Clair Mines Ltd., and Complainant created a website to initiate an “Internet smear campaign” against Respondent, causing irreparable damage to Respondent and its business. Respondent claims that upon advice from its legal counsel, it established the Domain Name in order to defend its name, so as to prevent liability and limit the damages to its company, and the Domain Name was the only appropriate medium to reach the proper audience.
Respondent alleges it chose the Domain Name based on the fact that it owns a business by the name of Londoni Gold Corp Limited, which is registered in the United Kingdom. See Respondent’s Exhibit 8(a)(i). Respondent states that Complainant has asked Respondent to remove the website, to which Respondent offered Complainant non-litigation dispute resolution to “legitimize ownership of the assets” Complainant advertises at its own website.
Complainant argues that it is the director of a Canadian company by the name of Londoni Gold Corp., which was incorporated in Canada on November 9, 2009, and Complainant owns the substantially similar <londonigold.com> domain name. Complainant states that Respondent was once, but is no longer, a consultant for Complainant, and has violated the consulting agreement between the parties by disclosing confidential shareholder information.
The Panel notes that both parties claim to own or have an interest in businesses using the LONDONI GOLD mark. It is also readily apparent that both parties have registered domain names incorporating each other's business names and deployed those domain names to make allegations against each other. To this end, both parties have made a range of serious allegations and counter allegations against each other.
An important preliminary question that arises is whether this is essentially a business and/or personal dispute between individuals and business entities that properly falls within 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.
In Love, the Panel was concerned with possible causes of action for breach of contract. In this case, however, Respondent points out that these causes of action are currently active cases that are pending with the courts. As the Panel in Love observed, complex cases may be better decided by the courts than by a UDRP panel:
When the parties differ markedly with respect to the basic facts, and 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 far 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 this reasoning and the record, it is clear that resolution of the instant dispute requires resolution of a number of highly contested and contentious factual matters. Further, it involves complex questions of contractual interpretation. For these reasons the Panel is of the view that the dispute falls outside the scope of the UDRP and for this reason should dismiss the Complaint. 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).
Having determined that the dispute is outside the scope of the UDRP, but without in any way addressing the merits, the Panel denies the complaint.
Accordingly, it is Ordered that the Domain Name REMAIN WITH Respondent.
Clive Lincoln Elliott, QC, Panelist
Dated: November 13, 2013
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