Cary Pinkowski, Darren Little, and Joe Whitney v. Perlake Corp. SA
Claim Number: FA1507001631539
Complainant is Cary Pinkowski, Darren Little, and Joe Whitney (“Complainant”), represented by Eric Misterovich of Revision Legal, Michigan, USA. Respondent is Perlake Corp. SA (“Respondent”), represented by Duncan Hedar of DLA Piper UK LLP, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <blackjack.com>, registered with BB Online Ltd.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin, Dawn Osborne and The Honourable Neil Anthony Brown QC (Presiding Panelist) as Panelists.
Complainant submitted a Complaint to the Forum electronically on July 31, 2015; the Forum received payment on July 31, 2015.
On August 3, 2015, BB Online Ltd confirmed by e-mail to the Forum that the <blackjack.com> domain name is registered with BB Online Ltd and that Respondent is the current registrant of the name. BB Online Ltd has verified that Respondent is bound by the BB Online Ltd 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 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 2015 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 email@example.com. Also on August 10, 2015, 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 4, 2015.
Complainant’s Additional Submission was received and determined to be compliant on September 9, 2015.
On September 15, 2015 pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Sandra J. Franklin, Dawn Osborne and The Honourable Neil Anthony Brown QC (Presiding Panelist) as Panelists
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
1. Policy ¶ 4(a)(i)
Complainant has common law rights in the BLACKJACK.COM mark dating back to its first use in commerce in October 2000. Respondent’s <blackjack.com> domain name is identical to the BLACKJACK.COM mark.
2. Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <blackjack.com> domain name based on available WHOIS information. In addition, Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because it uses the domain name to provide pay-per-click links in violation of the Agreement between Complainant and Respondent.
3. Policy ¶ 4(a)(iii)
Respondent registered and uses the disputed domain name in bad faith because it uses the resolving website to provide links to affiliate services in exchange for referral fees, in violation of the Agreement between Complainant and Respondent.
1. The dispute at the heart of the proceeding is a commercial contractual dispute that is outside the scope of the Policy.
2. Complainant’s case is based on alleged breaches by Respondent of the Agreement set out in the Complaint. However, Respondent acquired the disputed domain name from Hangar Holdings Limited under that Agreement and it has complied with all of its contractual obligations under the Agreement. The allegation that Respondent is in breach of the Agreement is strenuously denied.
3. Moreover, Hangar Holdings Limited has been dissolved and the dissolution does not give Complainant rights to any of the assets of the company.
4. Accordingly, all rights to the disputed domain name remain with Respondent.
5. The issues raised by Complainant must be resolved by procedures that are available only by litigation in the appropriate courts.
6. The dispute is therefore entirely outside the narrow category of disputes under the Policy, namely claims of abusive cybersquatting and the Complaint should therefore be dismissed.
7. Under cover of Respondent’s objection that the proceeding is outside the scope of the Policy, it makes the following further submissions:
8. Policy ¶ 4(a)(i)
Complainant has failed to provide sufficient evidence in order to demonstrate common law rights in the BLACKJACK.COM mark. Further, any rights that Complainant would have in the mark are currently the property of Respondent, pursuant to the Agreement referred to above. In addition, BLACKJACK.COM is composed of generic terms that cannot create a common law mark.
9. Policy ¶ 4(a)(ii)
Respondent is commonly known by the <blackjack.com> domain name as it currently does business under the name. Further, Respondent uses the domain name to provide a bona fide offering of goods or services in its use as a gambling website, as stipulated by the Agreement. In addition, the BLACKJACK.COM mark is composed of generic terms such that Complainant cannot hold a monopoly on the use of those terms on the Internet.
10. Policy ¶ 4(a)(iii)
Respondent acquired the <blackjack.com> domain name in good faith through the Agreement with Hangar Holdings Limited, and currently uses it in good faith to provide gambling services as stipulated in the Agreement. Further, even if bad faith use is found, this cannot retroactively cause Respondent’s acquisition of the domain name to be in bad faith.
11. Complainant knew or should have known that this dispute falls outside the scope of the UDRP and that it could not prevail, and as such, the Complaint was brought in bad faith constituting Reverse Domain Name Hijacking.
C. Additional Submissions
1. This dispute is not as complex as Respondent contends. Per Annex B (Agreement at § 9.2), when Complainants terminated the Agreement and provided notice, Complainant, then, owned the domain. Annexes C-E demonstrate that Complainant did, in fact, provide proper notice to Respondent of the termination of the Agreement. The Agreement should be given the same weight and treatment as a licensing agreement.
2. Respondent has no rights or legitimate interest in the <blackjack.com> domain name.
3. Respondent’s contentions that it is commonly known by the domain name are belied by the fact that there is zero reference to Perlake Corp S.A. See Compl., at Attached Annex G.
4. Respondent, in operating an affiliate site, is promoting Complainant’s competitors in bad faith.
By an email dated September 15, 2015 sent by Respondent to the National Arbitration Forum, Respondent stated as follows: “The additional submission filed by the Complainant on 9 September 2015 contains no arguments beyond those contained in the initial Complaint. All those arguments were fully addressed in the Response and as a result it is not necessary for the Respondent to file any additional submission in these proceedings.”
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are three Complainants. The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The three Complainants in this matter are Cary Pinkowski, Darren Little, and Joe Whitney. Complainants contend that they should be treated as a single entity for the purposes of this proceeding as they were the joint owners of the now dissolved Cayman Islands company, Hanger Holdings Limited, which previously owned the <blackjack.com> domain name. Complainant’s Annex C provides written confirmation from each Complainant regarding their agreement to split ownership of Hanger Holdings Limited’s assets as well as consensus in regards to the party to be awarded the <blackjack.com> domain name, should Complainant prevail.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel has given consideration to these issues. However, in view of the decision of the Panel as to the outcome of this proceeding, the Panel is of the opinion that it is neither necessary nor appropriate to express an opinion on the issue raised.
1. The dispute that is the subject of the Complaint is outside the scope of the Policy and the Complaint should, therefore, be dismissed.
2. In view of the decision of the Panel on that issue and on the outcome of this proceeding, the Panel is of the opinion that it is neither necessary nor appropriate to express an opinion on the issues arising under the Policy.
3. Complainant has attempted to reverse hijack the disputed domain name.
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 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;
(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.
However, the Panel will first consider a preliminary issue, namely:
· Whether the matter is a business dispute outside the scope of the UDRP.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
Respondent submits that this dispute concerning the <blackjack.com> domain name is inherently a fact-sensitive contractual dispute, and that it is therefore entirely beyond the scope of the UDRP. Respondent asserts that it acquired rights to the domain name pursuant to an Agreement between Hanger Holdings Limited and Respondent in 2003. Respondent urges that Complainant’s Complaint is premised on Respondent’s having materially breached this Agreement. While Respondent concedes that material breach would result in the domain’s ownership being reverted to Hanger Holdings Limited, Respondent denies engaging in any activity that would constitute a material breach. In addition, Respondent contends that the Agreement is governed by English law, and therefore requires notice to Respondent in regard to any potential breaches through personal service in Uruguay, as stipulated by the Agreement. Furthermore, Respondent challenges Complainant’s standing to bring a claim against Respondent, as Hanger Holdings Limited has been dissolved. It is submitted that as a Cayman Islands corporation, it is necessary to evaluate the laws of the Cayman Islands in order to determine if Complainants have the ability to prepare such a document as Annex C, purporting to divide the assets of Hanger Holdings Limited between Complainants, or if such assets, having not been previously divided, became property of the Cayman Islands Government’s Financial Secretary.
Complainants readily admit that they transferred ownership of the <blackjack.com> domain name to Respondent in 2003, per the Agreement provided in Annex K. However, Complainants argue that because the Agreement contains provisions by which ownership of the domain name can revert to Complainants, the agreement is most accurately characterized as a License Agreement for the <blackjack.com> domain name and the BLACKJACK.COM mark, and as such, the dispute is fully within the scope of the UDRP.
The Panel finds that the dispute that is the basis of the Complaint is a business and/or contractual dispute between parties that clearly falls outside the scope of the UDRP. In that regard the Panel is of the opinion that the observations of the panel in Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007) are applicable to the present proceeding. In that decision, 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, similarly, Respondent submits that these causes of action are complex and fact-specific, as they clearly are, and as such, must be resolved by the appropriate courts. As the panel in Love observed, complex cases such as the one presented here, even on Complainant’s own case must be decided by the courts, rather than by a UDRP panel. The panel in Love
“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.”
Moreover, the panel in Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning by observing:
“[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 the reasoning outlined in the aforementioned and numerous other cases and having regard to the record, the Panel concludes that the instant dispute contains numerous questions that clearly take the dispute outside the scope of the UDRP. It involves at least the following issues and conceivably more. First, it involves serious questions of the standing of Complainant to bring the Complaint. Then, it involves issues relating to the terms and effect of the Agreement referred to above. Next, it involves issues of whether Respondent was in breach of the Agreement and, if so, the consequences of any such breach. Moreover, it involves questions of the proper law to be applied; notice given or not given of alleged breaches of the Agreement; and questions of company law and the rights of parties in view of the dissolution of Hangar Holdings Limited and how its assets should be distributed and by whom, including the rights of parties who are not parties to this proceeding such as creditors. Finally, on the many and varied questions of fact and law that arise, Respondent has made it plain that it will strenuously contest Complainants’ allegations, inevitably giving rise to a contested trial.
The consequences of there being so many issues in the dispute are at least two fold. First, the whole dispute is not the type of dispute contemplated by the Policy but, rather, it is the type of dispute that has on many occasions been said to be outside its ambit. Secondly, no matter in what forum the dispute is heard, the known issues of fact and law are clearly capable of resolution only after a hearing that in all probability will involve examination and cross examination of witnesses, discovery, evidence of the applicable law and other processes that UDRP panels are not equipped to administer and which in any event are not provided for under the Policy or the Rules made under it.
As the Panel makes the foregoing findings, the Panel dismisses 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).
As the Panel dismisses the Complaint for the reasons given above, it is neither necessary nor appropriate for it to express opinions on the specific issues arising for consideration under the UDRP.
REVERSE DOMAIN NAME HIJACKING
Respondent has alleged that Complainant has acted in bad faith in filing the Complaint and has engaged in Reverse Domain Name Hijacking by initiating this proceeding. Reverse Domain Name Hijacking is defined in the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name” and Rule 15 provides that where “the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Clearly, whether a finding of Reverse Domain Name Hijacking should be made or not will depend on the circumstances of any individual case. But a test regularly applied has been whether a complainant knew that it could not prove an essential element of the claim; see , for example the recent three-person panel decisions in Beautiful People Magazine, Inc. v. Domain Manager / PeopleNetwork ApS / Kofod Nicolai / People Network Aps / Nicolai Kofod / People Network, Case No. FA1502001606976 (Nat. Arb. Forum, May 4, 2015) and E-Renter USA Ltd. v. Domain Hostmaster, Customer ID: 55391430909834, WhoIs Privacy Services Pty. Ltd. / Domain Administrator, Vertical Axis Inc WIPO Case No. D2015-0784 (“The panel in Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091 noted that whether a complainant should have appreciated at the outset that its complaint could not succeed will often be an important consideration.”).
In the present case, the Panel finds that Complainant must have known and in all probability did know, that it was bringing its claim in the wrong forum because the dispute was inherently a complicated contractual dispute beyond the scope of the UDRP and it must also have known that both the terms of the Policy and the accepted practice prevented such a claim from being entertained in this forum. Accordingly, Complainant must have known that it could not prove Respondent lacked rights or legitimate interests or that Respondent had engaged in bad faith registration and use of the domain name. Moreover, the case presented by Complainant was such that it required Complainant to rely on a series of contentious allegations that could only be proved, if they could be proved at all, by evidence and argument completely beyond the limited processes available in proceedings under the Policy. Accordingly, in all the circumstances, the Panel finds that the Complaint was brought in bad faith in an attempt to deprive a registered domain-name holder of its domain name and primarily to harass Respondent as the domain-name holder; see Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) (finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”).
For the reasons presented above, the Panel concludes that relief shall be DENIED.
Accordingly, the Complaint is DISMISSED and the Panel declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
The Honourable Neil Anthony Brown QC, Presiding Panelist
Sandra J. Franklin
Dated: September 22, 2015
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