Green Conversion systems, LLC v. W
Schmidt-Pathmann
Claim Number: FA1005001327151
PARTIES
Complainant is Green Conversion systems, LLC represented by Kurt Rieke, of Elias Group LLP, (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <greenconversionsystems.com>,
registered with Network Solutions, LLC.
PANEL
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.
Héctor A. Manoff as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 28, 2010.
On May 28, 2010, Network Solutions, LLC confirmed by e-mail to the
National Arbitration Forum that the <greenconversionsystems.com>
domain name is registered with Network Solutions, LLC and that the Respondent
is the current registrant of the name. Network
Solutions, LLC has verified that Respondent is bound by the Network Solutions,
LLC registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On June 1, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of June 21,
2010 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@greenconversionsystems.com by e-mail. Also on June 1, 2010, the Written Notice of
the Complaint, notifying Respondent of the email 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
21, 2010.
On June 24, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Héctor A. Manoff as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Complainant acknowledges that they have no registered trademark or
service mark to base the complaint, although the disputed domain name is
identical to Complainant’s company name.
2. Complainant asserts that Respondent is the father of Mr. Philipp
Schmidt-Pathmann, a former employee.
3. Complainant alleges that Mr. Philipp Schmidt-Pathmann registered
the disputed domain name in its own name, but on behalf of the Complainant.
4. Complainant asserts that Mr. Philipp Schmidt-Pathmann terminated its
employment relationship with Complainant in May 2010.
5. Shortly after Mr. Philipp Schmidt-Pathmann left the company,
Complainant requested Network Solutions to change the registrant,
administrative contact and technical contact of the disputed domain name.
6. Network Solutions informed Complainant that they received a request
to modify the registrant, administrative contact and technical contact of the
disputed domain name by a person possessing the User ID and password to
directly access the domain registration records. After that conversation,
Complainant learnt that Respondent had been designated as registrant,
administrative contact and technical contact of the disputed domain name.
7. Since Network Solutions received conflicting requests to modify the
records of the disputed domain name, they locked the record pending the
resolution of an arbitration proceeding or presentation of a bilateral
agreement between Complainant and Respondent.
8. Complainant attempted to communicate with Mr. Philipp
Schmidt-Pathmann but did not receive any response.
9. Respondent is not and has never been affiliated with Complainant.
10. Complainant believes that Mr. Philipp Schmidt-Pathmann changed the
domain name record purposefully to conceal the true ownership of the domain.
B. Respondent
1. Mr.
Schmidt-Pathmann’s father is not the Respondent.
2. Mr. Schmidt-Pathmann was one of the originators and co-founders of
the Green Conversion Systems concept/company, and the name Green Conversion
Systems was invented by Mr. Schmidt-Pathmann.
3. Mr. Schmidt-Pathmann did not enter/access the Network Solutions
website/account and change any information.
4. Mr. Schmidt-Pathmann is willing to turn over disputed Domain Name to
Complainant at the earliest possible date
FINDINGS
Complainant argues that while Respondent was employed at Complainant Company, he was tasked with registering the disputed domain name for the company. Complainant also argues that Respondent in this proceeding is actually the father of a former employee at Complainant’s company and that Respondent does not know that it is the registrant of the disputed domain name, because the former employee still holds the registration and login information for the disputed domain name. Further, Complainant argues that the former employee who is in control of the disputed domain name has violated the Nondisclosure agreement that was executed as part of his Employment Agreements with Complainant.
Respondent has alleged that it used to be the Executive Vice President and co-founder of Complainant Company, and as such had registered the disputed domain name for the business. Respondent contends that Complainant Company breached an employment contract and has refused to pay Respondent for a month of work since then. Further Respondent denies any involvement in the changing or modifying of the disputed domain name registration information and maintains that Complainant breached the employment contract that the parties had in place.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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:
Business/Contractual Dispute Outside the Scope
of the UDRP
The Panel finds that this is a business and/or contractual dispute between a company and its former employee that falls outside the scope of the UDRP. See Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (dispute concerning employee’s registration of domain name in his own name and subsequent refusal to transfer it to employer raises issues of breach of contract and breach of fiduciary duty that are more appropriately decided in court, not before a UDRP Panel).
Moreover, as decided in Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005), it should be noted that: [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.
The Panel thus dismisses the Complaint.
DECISION
The Panel concludes
that this matter involves a contractual business dispute arising out of a
business relationship and thus falls outside the scope of the UDRP.
Accordingly, it is Ordered
that the Complaint is Dismissed.
Héctor A. Manoff, Panelist
Dated: July 8, 2010
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