Pure Postcards, Inc. v. Pure Postcards / Chris Vickery / Dru Jeanis
Claim Number: FA1201001423970
Complainant is Pure Postcards, Inc. (“Complainant”), represented by Steven L. Rinehart, Utah, USA. Respondents are Pure Postcards / Chris Vickery and Dru Jeanis (“Respondents”), represented by Jason Gabay, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <purepostcards.com> (“the first domain name”) and <purepostcard.com> (“the second domain name”) (collectively “the disputed domain names”), registered with ENOM, INC.
The undersigned certifies that he 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 11, 2012; the National Arbitration Forum received payment on January 11, 2012.
On January 13, 2012, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the disputed domain names are registered with ENOM, INC. and that the respective Respondents are the current registrants of the disputed domain names, i.e. that Pure Postcards / Chris Vickery is the registrant of the first domain name and Dru Jeanis is the registrant of the second domain name (collectively referred to as “Respondents”). ENOM, INC. has verified that Respondents are bound by the ENOM, INC. registration agreement and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2012 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registration as technical, administrative, and billing contacts, and to postmaster@purepostcards.com, postmaster@purepostcard.com. Also on January 17, 2012, the Written Notice of the Complaint, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents’ registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on February 6, 2012.
Complainant submitted an Additional Submission on February 8, 2012, which was deemed to be in compliance with Supplemental Rule 7 and which the Panel has considered in reaching its decision.
On February 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Complainant requests that the domain names be transferred from Respondents to Complainant.
FACTUAL BACKGROUND
The following statement of the factual background is taken from the Complaint and from a document entitled Notice of Lawsuit and Request for Time to File Third Party Complaint (“Notice of Lawsuit ”) filed by an entity described as Postcard Mailer LLC (Jason Gabay), who are not parties to the proceeding. The Notice states that that entity has been involved in the events giving rise to the proceeding. Where factual matters are in dispute or where, at best, factual matters are inferred, that will be stated.
The Complainant, Pure Postcards, Inc. (“Complainant”), is a company that was incorporated under the laws of the state of Florida in the United States of America on April 19, 2002 by Dru and Irma Jeanis. Dru and Irma Jeanis are still officers and directors of the company.
The Complainant registered the first domain name on April 16, 2002 and the second domain name on June 4, 2002.
The disputed domain names were registered by Complainant for the purpose of using them in its business, namely the retailing of commercial print services and consulting services related to direct mail campaigns.
The disputed domain names resolved to a website where Complainant offered its services and Complainant expended money to develop that site.
Complainant remained the registrant of the disputed domain names until July 2011 when their registration was transferred to Respondents in circumstances that are in dispute.
Complainant has three registered service marks covering variations of PURE POSTCARDS.
The first is a service mark that was registered with the US Patent
and Trademark Office (“USPTO”) for the word mark PURE POSTCARDS on July 13, 2004. The second is a stylized service mark registered with USPTO for PURE POSTCARDS 100% on March 5, 2005. The third is a service mark registered with USPTO for a stylized embodiment of the PURE POSTCARDS mark on December 21, 2010. Each of those service marks are currently registered in the name of Complainant.
Complainant’s business was an active going concern and it appears to have been successful. However, with the global economic slowdown, the business fell upon difficult days, its revenues began to fall and it was forced to lay off some of its employees. It was in those circumstances that Complainant developed a close business relationship with Jason Gabay (“Mr. Gabay”), although the precise nature and terms of that relationship are a matter of dispute.
Complainant contends that, prior to this time, it was already acquainted with Mr. Gabay through various local business operations and that it began working harmoniously with him through its outsourcing of large printing jobs to one of his businesses. Subsequently, Mr. Gabay, as Complainant put it, “offered to assist the Complainant in printing all of the Complainant’s jobs and to help the Complainant optimize the website at the Disputed Domains to generate more revenue.”
It is fairly clear those closer business relations then ensued between Complainant and Mr. Gabay and that they resulted in the Complainant agreeing to use Mr. Gabay to provide graphic design and printing services, but, according to the Complainant, “never to transfer any personal, real or intellectual property to Respondent Company owned by Jason Gabay.” Complainant further asserts that, because of this relationship, Complainant’s then IT manager, Chris Vickery (the second named Respondent), transferred the username and password for the disputed domain names… to Gabay.” Complainant asserts that Respondent “was able to take control of, and effectively fraudulently transfer, the Disputed Domains from the Complainant’s account to the Respondent’s registration account in July of 2011 without the permission from the Complainant’s principals.”
The filing and service of the Complaint in this matter was followed by the delivery to the Forum of the Notice of Lawsuit referred to above. The Notice of Lawsuit is dated 3 February, 2012 and is on its face said to be filed on behalf of “Postcard Mailer LLC (Jason Gabay)”.
The Notice of Lawsuit states that the issues in the present proceeding are currently before the County Court for Pinellas County in Florida, that the disputed domain names are owned by Postcard Mailer, LLC and that Complainant, Pure Postcards, Inc is no longer in business but that it was acquired by Postcard Mailer,LLC. It ends with the claim that Postcard Mailer, LLC is an indispensable party to the UDRP proceeding and should be given additional time to hire legal counsel.
Attached to the Third Party Notice is what appears to be a Complaint originating proceedings (“the civil suit”) in the Circuit Court of the Sixth Judicial Circuit in and for Pinellas County, Florida, Civil Division. The Complaint is not dated but is stamped as having been received at the St. Petersburg branch of the Court on January 13, 2012, shortly after the Complaint which is dated January 9, 2012. It was drawn by and was filed in the name of a firm of attorneys in St. Petersburg.
The Plaintiff in the civil suit is Postcard Mailer, LLC and the Defendants are the Complainant in the present UDRP proceeding, namely Pure Postcards, Inc , Dru and Irma Jeanis, Direct Mail Marketers, LLC d/b/a Postcard Pros, Image Media Incorporated and five individuals.
The Complaint in the civil suit concedes that an enhanced business relationship did in fact exist between Mr. Gabay and Postcard Mailer, LLC on the one hand and, on the other hand, Dru and Irma Jeanis and Pure Postcards, Inc. ( “the enhanced business relationship”). That much is common ground. However, Postcard Mailer, LLC and Mr. Gabay say in essence that the arrangement that was consummated between them was not simply that an enhanced degree of work would be contracted to Mr. Gabay, but that Postcard Mailer would acquire the assets of Pure Postcard Inc needed to run that company’s business, including the asset described as the “web domain.” It is also alleged that Postcard Mailer agreed to acquire, did acquire and “affected the move of … (inter alia) …intellectual property.” It seems, therefore, that the essential factual allegation being made by Postcard Mailer, LLC and Mr. Gabay in the civil suit is that they acquired the entire business of Pure Postcards by agreement and transferred the disputed domain names legitimately as part of the contract to acquire Pure Postcard’s business and assets. Further support for that interpretation is found in the allegation by Postcard Mailer that Mr. and Mrs. Jeanis subsequently disavowed the transfer of the “domain name” (sic), implying that the registration of the disputed domain names had been previously transferred, but legitimately.
It should also be said that the agreement relied on by Postcard Mailer and Mr. Gabay is said to have been oral and based on “a handshake and trust.”
As the Panel understands it, the UDRP Complainant’s position is also that the agreement between it and Mr. Gabay was oral.
The enhanced business relationship eventually soured and led to the filing of the UDRP, which seeks the transfer of the disputed domain names to the Complainant. It also clearly led to the civil suit in the Pinellas County Court which seeks damages on the basis of several alleged causes of action. The civil suit does not ask for the transfer of the domain names to Postcard Mailer LLC or a declaration or equivalent order that they are currently in their correct registration.
A. Complainant
Complainant Pure Postcards, Inc makes the following submissions.
1. The Disputed Domain Names are confusingly similar to Complainant’s registered trademark PURE POSTCARDS as they wholly encompass the trademark and the gTLD “.com” is irrelevant to this consideration.
2. (a) Respondent has no rights or legitimate interest in the Disputed Domain Names as it has fraudulently registered the Disputed Domains and is using them for its own commercial gain.
(b) Moreover, the Respondent has not been commonly known by the Disputed Domain Names.
(c) Respondent has acquired no trademark or service mark rights in Complainant’s marks prior to notice of this dispute.
(d) Respondent has not carried on any legitimate business using the Disputed Domain Names prior to notice of this dispute.
(e) Respondent registered the Disputed Domain Names, with knowledge that Complainant had trademark rights in them, for the purpose of confusing Complainant’s customers, diverting traffic intended for Complainant, bankrupting Complainant, stealing the identities and banking information of Complainant’s customers, and depriving Complainant of use of the Disputed Domains and its Mark online.
3. Respondent registered and has used the disputed domain names in bad faith.
(a) The Respondent’s registration of the Disputed Domains is an attempt, among other objectives, to prevent Complainant from reflecting its mark in the Disputed Domain Names and to steal the identity and banking information of Complainant’s users.
(b) Respondent has redirected the Disputed Domain Names to its own website which competes with the Complainant. Accordingly, Respondent’s use of the Disputed Domain names intentionally to divert Internet users seeking Complainant’s products and services to a direct competitor for its own commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
(c) In a comparison of the WHOIS records for the Disputed Domain Names, the fact that some of Complainant’s old contact information remains in the record is evidence of the Respondent’s knowledge of the Disputed Domain Names’ true ownership.
(d) Respondent’s unlawful conduct has, will, and continues, to damage Complainant through the loss of customers, profits, business, and good will – as well as by damage to Complainant’s reputation and the Mark.
B. Respondent
The Response filed by Postcard Mailer, LLC (Jason Gabay) makes the following submissions.
1. The core matters of this case are currently being tried in a Pinellas County Court. Exhibit l. Domain name is currently owned by Postcard Mailer, LLC, who has not been named as a respondent in the above captioned case.
2 .Further, the prior owner of Pure Postcards, Inc. no longer operates and has
informed all customers that they were acquired by Postcard Mailer LLC. See
Exhibit 2. Various Emails.
3. Postcard Mailer LLC (the rightful owner of these domains) is therefore believed
to be an indispensable party and therefore would need additional time to hire legal counsel.
B. Additional Submissions
Complainant makes the following submissions in its supplementary submission.
1. The Response submitted by Jason Gabay in this proceeding does nothing to refute the allegations of Complainant. The Response does not explain: (1) why the Disputed Domain Names are registered in the names of the Complainant if they properly belong to the party filing the Response, (2) why the registered trademarks underlying this dispute are the name of the Complainant, (3) what authority Mr.Gabay, who is not even the registrant of the Disputed Domain Names, had to take them, or (4) why there are no contracts of any kind from the Complainant evidences permission to take the Disputed Domain Names. Even the evidence annexed to the Response consists of only more unsubstantiated allegations from Mr. Gabay. In short, there is no evidence submitted at all in response to the Complaint – or even any legal argument.
Procedural Ability to Respond to this Dispute (Standing)
2. Jason Gabay is not the Respondent to this case or a registrant of the Disputed Domain Names and has no standing to submit a response in this matter or have that Response considered. Mr. Gabay has simply hijacked the contact information in the administrative accounts hosting the Disputed Domain Names. He uses his response to claim another entity (other than himself) is the owner of the Disputed Domain Names, which entity is also not a named Respondent. Mr. Gabay does not describe his association, agency, or relationship to either that entity or the named Respondents.
Burden of Proof
3. The burden of proof in this case has shifted away from the Complainant, and that burden of proof has not been met by the Response.
4. There are only two annexes to the response which contain no evidence of any kind. These annexes include (1) a lawsuit, filed in state court only after the Complaint hereto was served by the Forum, which lawsuit contains no exhibits, cybersquatting or trademark claims and which is filled with typographical errors; and (2) an email originating with the company itself in which the company represents to another party that it has a right to the Complainant’s IP. In short, all of three of these documents submitted in the Response are nothing but repetitious, unsupported assertions of the filer of the Response chalked up as “evidence.” (i.e. the Response itself, the complaint, and the email). This constitutes the entirety of the Response. The Response does not carry its burden of proof.
Legal Argument
5. The purpose of the Policy is to obligate parties interest in a disputed domain name to participate in quicker, cost-effective alternative to litigation, in which evidence of rights is evaluated. The decisions of the Panel can be reviewed de novo by U.S. district courts in trademark or ACPA matters filed within ten day of the decision, but the parties cannot avoid their obligation to participate in the UDRP proceedings. To allow a party to simply avoid its obligation to participate by making unsupported claims that is has rights in another litigation case it commences only to circumvent the UDRP would make the UDRP very shallow indeed.
Conclusion
6. Complainant submits to the Panel that it has satisfied the Policy, and prays for an order granting transfer of the Disputed Domain Names.
1. Complainant is the registered owner of several service marks for PURE POSTACRDS, including the service mark for PURE POSTCARD, No. 2,862,845, registered on July 13, 2004 with the United States Patent and Trademark Office ("USPTO").
2. The Complainant registered the first domain name on April 16, 2002 and the second domain name on June 4, 2002.
3. In or about July 2011 the first domain name was registered in the name Pure Postcards/Chris Vickery and the second domain name was registered in the name Dru Jeanis.
4. The first domain name is identical to Complainant’s PURE POSTCARDS mark.
5. The second domain name is confusingly similar to Complainant’s PURE POSTCARDS mark.
6. Respondents have no rights or legitimate interests in respect of either of the disputed domain names.
7. Each of the disputed domain names has been registered and is being used in bad faith.
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.
Preliminary Issues
Several preliminary issues arise in this matter.
Some of the preliminary issues relate to the identity and description of the Respondents. They are as follows:
1. Complainant has brought the Complaint against three parties specified in the Complaint. This is so because there are two domain names in dispute and the respective Respondents identified are the registrants of the two domain names. The evidence shows that the registrant of the first domain name is PurePostcards /Chris Vickery. The Panel takes the view that the reference to Pure Postcards is meant to be a reference to Pure Postcards Inc and not to a separate non incorporated entity and the reference to Chris Vickery is a reference to the Complainant’s IT manager. The evidence also shows that the registrant of the second domain name is Dru Jeanis. When those facts are borne in mind it is clear that the respective named respondents are correctly described. Rule 3(b)(v) requires the Complainant to include in the Complaint, “… the name of the Respondent (domain-name holder) and all information (including any postal and e-mail addresses and telephone and telefax numbers) known to Complainant…” and “Respondent” is defined in the Rules to mean “… the holder of a domain-name registration against which a complaint is initiated.” It is not Complainant’s case that the three named Respondents have been guilty of any wrongdoing themselves and transferred the disputed domain names to themselves for their own purposes. Rather, Complainant’s case is that the wrongdoing was committed by Postcard Mailer, LLC and Mr.Gabay and that the named Respondents are specified as respondents because of the requirements of the Rules. As specified above, the named Respondents will be referred to as “Respondents” and “the named Respondents” where appropriate for ease of reference.
2. It should also be noted that Rule 3(c) provides that “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain–name holder”. In the present case the two domain names are not registered by the same domain-name holder but by different domain-name holders as explained above. Thus the question arises whether the one Complaint may deal with more than one domain name when they have different registrants. The Panel takes the view that it should agree to what is in effect a request from the Complainant to consolidate the disputes concerning the two domain names and that there is power in the Panel to do this by virtue of Rule 10(e). The issues are clearly the same with respect to both domain names and the interests of both sides in the substantive dispute are adequately represented by dealing with the disputes in the one proceeding. Complainant submits that the Respondent should be regarded as the same entity, pursuant to the Forum’s Supplementary Rule 4(e). That Rule deals with alleged aliases and may not be the appropriate rule to deal with this issue. However, when the provisions of Rule 10(e) are taken together with the discretionary power of the Panel, there is adequate power to enable the disputes about the two domain names to be dealt with in the one proceeding. The Panel proposes to follow this course.
3. The third preliminary issue arises in the light of the Notice of Lawsuit and the supplementary submission made by Complainant in reply to that Notice. The Complainant submitted, in effect, as follows:
Mr. Gabay is not the Respondent to this case or a registrant of the Disputed Domains, and accordingly he has no standing to submit a response in this matter or have that Response considered. The Respondents to this case are Pure Postcards, Dru Jeanis and Chris Vickery. These parties are the listed registrants of the Disputed Domains – not Jason Gabay or the other company he references, Postcard Mailer. Mr. Gabay has simply hijacked the contact information in the administrative accounts hosting the Disputed Domains. The legal argument portion of Mr. Gabay’s response is five sentences long. He uses his response to claim another entity (other than himself) is the owner of the Disputed Domains, which entity is also not a named Respondent. Mr. Gabay does not describe his association, agency, or relationship to either that entity or the named Respondents.
Accordingly, it is really being submitted on behalf of the Complainant that there is no Response filed in this matter as none of the named Respondents has filed a Response and neither Mr. Gabay nor the company Postcard Mailer, LLC is permitted to do so.
The submission just outlined may be literally correct, but the view of the Panel is that the Notice of Lawsuit that Postcard Mailer, LLC (Jason Gabay) has filed should be regarded as a Response of the named Respondents. The argument against Mr. Gabay was that he changed the contact information for the disputed domain names without authority so that the Complainant would be denied the use and benefit of the domain names which would then be available solely for Mr. Gabay himself. The subsidiary argument against him, as the Panel understands it, was that as part of that alleged subterfuge he nominated parties for the registrant information that gave the impression that the information was legitimate and that the disputed domain names were still registered in the names of interests associated with Complainant although in reality he, Mr. Gabay, controlled them. Mr. Gabay’s reply to those allegations is in effect that his company was entitled to transfer the domain names to the named Respondents pursuant to the contract it had with the Complainant and its owners Dru and Irma Jeanis and that he did so.
Although it would be open to the Panel to rule that the named Respondents have not filed a Response at all and to treat the proceeding as an undefended one, the reality is that the Panel has before it the Response of the person and/or company whom Complainant claims is the source of the alleged wrongdoing that resulted in the named registrants becoming Respondents in this proceeding. This enables the Panel to rule on the substance of the dispute, which it will. Accordingly, the Panel will proceed on the basis that the Notice of Lawsuit is the Response of the named Respondents and that it applies to both domain names.
4. The fourth preliminary issue is whether the dispute is a business or contractual one that falls outside the UDRP and cannot therefore be dealt with in this proceeding. The Response states that the “core matters” of this UDRP proceeding are currently being tried in a court in Pinellas County, Florida, USA. Further, the Response states that the domain names are currently owned by Postcard Mailer, LLC, which is of course not a Respondent in this UDRP proceeding. The Response also asserts that the “prior owner of Pure Postcards, Inc. no longer operates and has informed all customers that they were acquired by Postcard Mailer LLC,” while submitting e-mail evidence that it claims proves its assertions. Postcard Mailer LLC (Jason Gabay) or Postcard Mailer LLC asserts that it believes itself to be an indispensable party and therefore requests additional time to secure legal counsel for this proceeding. It seems therefore that it is not submitting that the UDRP proceeding should not proceed at all, but rather that it should be adjourned and should not proceed until Postcard Mailer, LLC (Jason Gabay) has had time to secure legal counsel.
The short answer to this submission is that the Panel will not defer or adjourn the proceeding . The Respondents - whether they are seen as the named Respondents or Postcard Mailer LLC (Jason Gabay) - an entity that apparently claims to speak on their behalf - have had sufficient time to engage counsel to initiate the civil suit and it has thus been able to present its case in the Notice of Lawsuit. They have also had sufficient time to put their case before the Panel and have not made out a case as to why they require more time to prepare their Response. In reality, Respondents’ case is already before the Panel in an understandable form and nothing would be gained by deferring the proceedings so that it could be put into a different or more regular from. Nor has any other reason been given why the proceeding should be deferred or adjourned. Accordingly, the Panel will proceed with the case and deal initially with the next issue.
That issue is a wider matter concerning the issues set out in the Notice of Lawsuit and it is in any event an issue that the Panel would have had to raise on its own initiative in view of the terms of the Notice of Lawsuit. Complainant had already touched on the same issue in the Complaint by submitting as follows:
“7. This dispute is properly within the scope of the UDRP. The recent case of ITX sarl and Ziad M.Mugraby v. Tom Steiner, FA0809001222737 (Nat. Arb. Forum October 24, 2008) articulates the applicable rule (emphasis added):
As to the allegations of fraud and conversion, this Panel is of the view that the Policy is designed to determine issues of bad faith albeit on a civil standard and stopping short of findings of fraud. If allegations and conversion were always to put a complaint outside of the scope of the Policy, the Policy would be ineffective. A panel appointed under the Policy cannot determine whether a fraud has been committed but in every case it must determine whether a domain name has been registered and used in bad faith. For that reason this Panel is of the view that the allegations and counter allegations of fraud and the allegation of conversion do not put the dispute outside the scope of the Policy no more than the claim that
the domain name was registered in bad faith and the counter-claim of domain name hi-jacking in this case are inappropriate for determination on a civil standard by an administrative panel.”
Complainant pursued this issue in its Additional Submission and alleged that the filing of the state court action was just a means of getting around the UDRP process and that U.S. contract law through the statute of frauds and the lack of a written contract in this matter between the parties strengthened Complainant’s case. However, Complainant asserts that this case falls squarely within the UDRP as its domain names were stolen, something which the UDRP is able to redress.
In some cases, UDRP panels find that the real dispute is a business and/or contractual dispute between two companies and that it falls outside the scope of the UDRP. For example, 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 the present case, however, Respondent points out that these causes of action are currently active cases that are pending with the courts and it might be thought that this strengthens the case for finding that the dispute is not appropriate to be dealt with under the UDRP. According to the panel in Love, complex cases such as the one presented here may be better decided by the courts than by a UDRP panel for, as the panel put it:
“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 better equipped to take evidence and to evaluate its credibility.”
In that regard it is also said on occasions that the UDRP has none of the forensic tools such as discovery and viva voce testimony subject to cross-examination that are available to a court.
The panel in Luvilon Industries 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.”
It might therefore be concluded that the instant dispute contains a question of contractual interpretation, and thus falls outside the scope of the UDRP. 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).
On the other hand, the Panel has a discretion to determine whether or not it has jurisdiction over this dispute and it would be an abrogation of the Panel’s duty if it terminated the proceeding merely because a party instituted civil proceedings after the UDRP Complaint was filed or gave details of a commercial dispute with another party. Even if there is a civil suit or a commercial dispute, a panel might still find that there is sufficient evidence for it to decide the dispute under the UDRP and the panel should then proceed with the case and consider the contentions of Complainant and Respondent. Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) and Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 14, 2000).
The issue is a difficult one to resolve but, on balance, the Panel has decided to proceed with the UDRP proceedings. Its reasons for doing so are as follows.
(a) The Panel has an understanding of the issues and essentially what each side says about them and the Panel believes it is able to make a an appropriate decision in the proceeding on the material presently before it;
(b) the material presented to the Panel enables the issues under the Policy to be assessed and decisions to be made on those issues;
(c) those decisions will not prevent civil proceedings from being pursued later or currently if either party wishes to do so and the Policy expressly provides for litigation to set aside any decision that might be made in these proceedings;
(d) the Panel is not persuaded that the case presented by Postcard Mailer LLC (Jason Gabay) or Postcard Mailer LLC is cogent enough to conclude that there really is a civil dispute of substance that should be tried first, before the UDRP Complaint proceeds. In that regards, the Respondents’ case is that Postcard Mailer LLC took over the Complainant and yet there is none of the documentation that one would expect to see to support such a substantial transaction; nor is there any documentation to support the transfer of the disputed domain names that the Respondents claim were transferred legitimately; in the normal course of events, documentation on those matters would be substantial and its absence, together with the submission on behalf of the Respondents’ that the contract was oral and not in writing, raises some doubts in the mind of the Panel as to whether the Respondents have a prima facie case sufficiently strong as to justify dismissing or deferring the UDRP proceedings;
(e) the civil suit in the Pinellas County, County Court does not seek any order about the domain names and whether they should be transferred to the Complainant or remain with the Respondents or perhaps be transferred to Postcard Mailer LLC (Jason Gabay) or Postcard Mailer LLC; the civil suit is based on several causes of action in all of which unliquidated damages are sought and in none of which is sought the transfer of the domain names or a declaration that they are already in their correct registration. In one sense, therefore, the UDRP proceedings and the Pinellas County Court proceedings are separate and can be dealt with in their own time;
(f) the Panel’s opinion is that the UDRP procedures provide enough scope for the parties to put before the Panel anything they need to submit or prove and that it does not need the forensic tools available in court proceedings to decide the UDRP questions properly and fully; and
(g) the discretion of the Panel on the totality of the evidence and arguments presented to it.
Accordingly, in the opinion of the Panel, this matter should now proceed to an evaluation of the matters for decision in the UDRP proceeding. This involves giving attention to the three specific elements that Complainant must prove.
Complainant presents the Panel with several service mark registrations that it owns with the United States Patent and Trademark Office ("USPTO"), including for the PURE POSTCARDS mark (e.g., Reg. No. 2,862,845 registered July 13, 2004). The Panel finds that such trademark registrations are sufficient for Complainant to establish rights in its mark under Policy ¶ 4(a)(i). Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a) (i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant alleges that the disputed domain names are confusingly similar to its PURE POSTCARDS mark under Policy ¶ 4(a)(i). However, the Panel finds that the <purepostcards.com> domain name is identical to the mark under Policy ¶ 4(a)(i) because the only changes are the removal of the spaces between the terms and the addition of the generic top-level domain (“gTLD”) “.com.” See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark).
Further, the Panel finds that the <purepostcard.com> domain name is confusingly similar to Complainant’s PURE POSTCARDS mark under Policy ¶ 4(a)(i) because the domain name removes the spaces between the terms, omits the letter “s” in the mark, adds the gTLD “.com”, but is otherwise identical to the PURE POSTCARDS mark. 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.”); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it).
Complainant has therefore made out the first of the three elements that it must establish with respect to each of the two disputed domain names.
It is now generally accepted that a complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii) and that the burden of proof then shifts to Respondent to show that it does have such 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 interests in the disputed 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.”).
It should be remembered that the Complainant must show a prima facie case against the named Respondents, as it is they who appear on the record as registrants of the disputed domain names.
In its Additional Submission, Complainant argues that its burden of proof has been met in this proceeding, and that the Respondents have not adduced any evidence to discharge the burden of proof then on the Respondents. The Panel accepts that submission.
The Panel finds that Complainant has made out its prima facie case by reason of the following factors:
(a) Complainant has service marks over the expressions PURE POSTCARDS and variations thereof;
(b) Complainant was originally the registrant of the disputed domain names and has presented a sufficiently cogent case as to how that registration was lost and how the named Respondents became the registrants without the permission or agreement of Complainant;
(c) the named Respondents are not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
(d) The named Respondents are not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. That is so because Complainant has presented a sufficiently cogent case as to how that registration was lost and the named Respondents became the registrants without the permission or agreement of Complainant and accordingly the use presently being made of the domain names is not bona fide or legitimate.
That being so, the next question is whether the Respondents have produced evidence to rebut that prima facie case. The Respondents have not filed a Response making out a case why, under any of the criteria set out in paragraph 4(c) of the Policy or by reason of any other circumstances, they have a right or legitimate interest in the disputed domain names.
It is true that Postcard Mailer, LLC and Mr. Gabay have filed the Notice of Lawsuit that the Panel has accepted it as a Response on behalf of Respondents, but they claim in that notice not that Respondents own the domain names, but that Postcard Mailer LLC owns them. That assertion does not tell the Panel anything about any right or legitimate interest the Respondents might have in the domain names. Nor is there anything contained in the Notice or in the Complaint in the Pinellas County court that the Respondents have any right or legitimate interest in the domain names.
In the absence of any evidence to that effect, the Panel concludes that the named Respondents have not rebutted the prima facie case against them.
It might be said against that analysis, however, that Respondents have in fact presented a case to the effect that they have a right or legitimate interest in the two domain names because a case has been presented that Postcard Mailer, LLC and/or Mr. Gabay is entitled to them and that the Respondents should be subrogated to that entitlement. A strong or even a plausible case to that effect might have persuaded the Panel that it should regard Postcard Mailer, LLC and/or Mr. Gabay’s case as the named Respondents’ case and find that it showed a right or legitimate interest that should be regarded as that of the Respondents. However, the Panel does not find that case a strong or plausible one and, as noted above, its weakness is that it is hard to accept that such a transaction as claimed could have been entered into orally and without the documentation necessary to make it effective. The case for Postcard Mailer, LLC and/or Mr. Gabay is that Postcard Mailer, LLC agreed to acquire the assets of the Complainant including its “web domain” and the liability to its employees; indeed, Postcard Mailer, LLC and/or Mr. Gabay have submitted that the transaction was that the Complainant was “acquired by Postcard Mailer, LLC”, i.e. that the company itself was transferred to Postcard Mailer, LLC; Irma Jeanis herself says , in effect, in emails in evidence that the Complainant had merged with Postcard Mailer, LLC. The Panel finds it unlikely that transactions of that substance could or would have taken place not in writing but on “a hand shake and trust.”
The Panel therefore cannot conclude on the evidence that there is a case of substance that shows that Postcard Mailer, LLC and/or Mr. Gabay and hence the named Respondents have a right or legitimate interest in the disputed domain names.
As Respondents have not rebutted the prima facie case against them, Complainant has thus made out the second of the three elements that it must establish.
Complainant must establish both that the domain names were registered in bad faith and have been used in bad faith.
In support, Complainant has presented a sufficiently cogent case to the effect that it previously owned the domain names but that due to the unauthorized and inappropriate actions of Mr. Gabay the registration of the domain names passed to Respondents.
As has already been intimated in the section of this decision entitled Factual Background and elsewhere, the Panel accepts the Complainant’s case on the balance of probabilities and does not accept that the case submitted by Postcard Mailer, LLC and/or Mr. Gabay whether on their or the Respondents’ behalf, is sufficient to reject Complainant’s case. The question then is whether the Complainant’s case shows that the domain names were registered and used in bad faith.
The Panel finds that the events described by Complainant come within the general notion of bad faith, both in the registration of the domain names in their new registration and the use that has been made of them since then.
Moreover, in the opinion of the Panel, the facts bring the case within several of the specific criteria set out in paragraph 4 of the Policy as constituting bad faith.
First, Complainant contends that Respondents, at the behest of Mr. Gabay, took control of the disputed domain names in order to prevent Complainant from reflecting its service marks on the Internet. Complainant alleges that this is proof that Respondents gained registration of the domain names in bad faith under Policy ¶ 4(b)(ii). The Panel accepts that submission and finds that Respondents registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(ii), where Respondents gained registration of the domain names reflecting Complainant’s service marks. See Kabushiki Kaisha Toshiba v. Tel. Island, D2004-0711 (WIPO Nov. 15, 2004) and Albertson’s, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002)”).
Further, Complainant argues that Respondent is using the domain names at issue to disrupt Complainant’s business and that that also is bad faith. Complainant alleges that Respondents gained control of the disputed domain names in July of 2011 and have since redirected the domain names to Respondents’ competing websites that closely resemble Complainant’s past websites. The Panel agrees and finds that Respondent acquired and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii).
The Panel also infers that Respondents’ competing use of the disputed domain names results in financial gain for Respondent. Such competing use has been deemed to be evidence of bad faith registration and use by past UDRP panels. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000), and Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000). The Panel therefore finds that Respondent registered and uses the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Lastly, Complainant alleges that it originally registered the <purepostcards.com> and <purepostcard.com> domain names on April 16, 2002 and June 4, 2002, respectively. Complainant argues that Respondents acquired the domain names in July of 2011 by means of the unauthorized activities of Mr. Gabay as described above. The Panel accepts the Complainant’s case to that effect. Prior panels have determined that where a complainant held previous ownership of the disputed domain names a panel may infer that subsequent use of such domain names by others is evidence of bad faith under Policy ¶ 4(a) (iii). See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (“Where the domain name has been previously used by the Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary.”); see also Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”). The Panel finds accordingly.
As has already been intimated, the Panel does not believe that the case submitted by Mr. Gabay, whether on behalf of himself, Postcard Mailer LLC or the Respondents, is sufficient to reject Complainant’s case or to raise any serious doubt about the veracity of Complainant’s case.
Complainant has thus made out the third of the three elements it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <purepostcards.com> and <purepostcard.com> domain names be TRANSFERRED from Respondents to Complainant.
The Honourable Neil Anthony Brown QC, Panelist
Dated: 22 February 2012
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