AirMax Construçoes Aeronáuticas LTDA v. Richard Rofe / seamaxamerica.com
Claim Number: FA1712001763605
Complainant is AirMax Construçoes Aeronáuticas LTDA (“Complainant”), represented by Brian P. Sullivan of Thomas E. Lees, LLC, Ohio, USA. Respondent is Richard Rofe / seamaxamerica.com (“Respondent”), represented by Jeffrey P. Shapiro of Shapiro Ramos, P.A., Florida.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <seamaxamerica.com>, registered with Tucows Domains Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 19, 2017; the Forum received payment on December 19, 2017.
On Dec 19, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <seamaxamerica.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 December 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2018 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@seamaxamerica.com. Also on December 22, 2017, 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 January 26, 2018.
On February 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
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.
A. Complainant
Complainant made the following contentions.
1. Complainant, AirMax Construçoes Aeronáuticas LTDA, has been using the SEAMAX mark in relation to the sale of amphibious airplanes since 2000 and in the United States since 2006. Complainant has rights in the SEAMAX mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,227,922, filed November 17, 2016 registered Nov. 17, 2017). See Compl. Annex G.
2. Respondent’s <seamaxamerica.com> domain name is confusingly similar to Complainant’s SEAMAX mark, as the domain name contains the mark in its entirety plus the geographic term “america” and the “.com” generic top-level domain (“gTLD”).
3. Respondent has no rights or legitimate interests in the <seamaxamerica.com> domain name. Respondent is not commonly known by the disputed domain name and is not authorized to represent itself as seamaxamerica in connection with selling amphibious airplanes, as specifically indicated in an agreement between the parties. See Compl. Annex A, at 3, Art. III, § 3.1.
4. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the website resolving from the domain name is being used to advertise and sell amphibious airplanes which Respondent no longer has the right to sell on behalf of Complainant.
5. Respondent registered and is using the <seamaxamerica.com> domain name in bad faith. Respondent does not have rights to use the SEAMAX mark to sell amphibious airplanes and is in breach of the agreement between the parties. Further, Respondent intentionally attempts to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with consumers looking for Complainant’s goods.
B. Respondent
Respondent made the following contentions.
1. Complainant lacks standing to bring the Complaint since all rights belonging to Complainant, including rights to the SEAMAX mark, were transferred to Golden Flyer Construcoes Aeronauticas LTDA (“Golden Flyer”) pursuant to an agreement between Golden Flyer and SeaMax America LLC. in the present proceeding. See Resp. Annex 4.
2. Golden Flyer is not a party to the present proceeding.
3. SeaMax America LLC is not a party to the present proceeding and yet it has rights under an agreement between it and Complainant (“the Distribution Agreement”) to use, inter alia, the disputed domain name.
4. The <seamaxamerica.com> domain name is not confusingly similar to the SEAMAX mark.
5. Respondent has rights and legitimate interests in the <seamaxamerica.com> domain name. Complainant has not named Respondent’s company, SMA, as a party, and SMA has rights to use the SEAMAX, SEAMAX AMERICA, SEAMAX AMERICA, INC, the <seamaxamerica.com> domain name, and the website to which it resolves. See Resp. Annex 1. Respondent and SMA have been granted the exclusive right to use and permit others to use the SEAMAX trade name.
6. The <seamaxamerica.com> domain name is not being used in bad faith. SMA has not breached the Distribution Agreement. Moreover, the agreement itself has not been terminated.
1. Complainant is a company based in Brazil.
2. Respondent is an individual who is a resident of the State of New York and the President of SeaMax America LLC,a New York limited liability company.
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 Issue: Is the Dispute Between the Parties a Business/Contractual Dispute Outside the Scope of the UDRP
Complainant submits that in 2012, it entered into a distributorship agreement with Seamax America, LLC. (“SMA”), whose signatory was Respondent, Richard Rofe, as president. See Compl. Annex A. The agreement allowed for SMA to use and register the tradename SEAMAX AMERICA or SEAMAX AMERICA, INC. in North America, but if the agreement were ever terminated, SMA had thirty (30) calendar days to modify its trade name from all government bodies. See id., at 3, Art. III, § 3.1. In 2016, Respondent joined an aircraft manufacturer, Luminati Aerospace LLC (“Luminati”), in a role of business development. See Compl. Annex B, at 2. Subsequently, and without permission from Complainant, Luminati applied for a registration of the SEAMAX mark with the United States Patent and Trademark Office (“USPTO”). See Compl. Annex C. As such, Complainant expressly terminated the distribution agreement for cause.
Respondent, Richard Rofe, submits that SMA entered into a written agreement with Complainant to become the exclusive importer, agent, distributor, and representative for the importation, sale, mechanical service and maintenance of Complainant’s SEAMAX aircraft in the United States, Canada, Mexico, and China. See Resp. Annex 1. On May 24, 2012, the parties entered into an amendment to the agreement. See Resp. Annex 2. Shortly thereafter, Complainant was sold to an investor group and SMA entered into another amendment with the new entity, Golden Flyer Construcoes Aeronauticas LTDA (“Golden Flyer”). See Resp. Annex 3. SMA subsequently entered into an agreement in September of 2013 to acquire Golden Flyer. See Resp. Annexes 5 and 6. During the period of due diligence, SMA made monthly payments until Golden Flyer breached the purchase agreement by being sold to a third party. SMA has not received return of its payments, or the Termination Payment owed to it provided by the Distributor Agreement. See Resp. Annex 2, at 2.
Respondent also submits that while the Distributor Agreement calls for SMA to modify or assign the trade name within 30 days after decision to terminate the agreement, the parties did not agree to terminate the agreement. Instead the agreement was breached unilaterally by Complainant. Respondent has not agreed and does not agree to the termination. It follows that SMA’s rights to use the trade name and the domain name have not been terminated and Respondent retains the exclusive right to use and permit others to use the SEAMAX trade name and the <seamaxamerica.com> domain name.
Respondent also submits that while Respondent was, for a limited time, a consultant for Luminati Aerospace, it had nothing to do with Luminati’s attempt to register the SEAMAX mark, and in fact counseled Luminati not to do so. Contrary to Complainant’s assertion, the Distribution agreement was not breached, and Golden Flyer’s attempt to terminate the Agreement was just a ruse to clear the way for Golden Flyer to be sold out from under SMA to a third-party in bad faith and in violation of the purchase agreement and its exclusivity provision. SMA and Respondent were in full compliance with the Distribution Agreement, and it has not been properly terminated because no Termination Payment has been made to SMA. SMA, and Respondent by extension, still have the right to use, and continue to maintain legitimate interests in the SEAMAX mark, as well as the <seamaxamerica.com> domain name.
The Panel emphasizes that the above submissions are made by the parties and that the Panel makes no judgment whatsoever about their validity. They are set out to show the complicated commercial dealings that have taken place and the equally complicated legal and factual issues to which they give rise.
In this instance, the Panel has had to consider if the real dispute between the parties is a business and/or contractual dispute between two companies that falls outside the scope of the UDRP.
It is well established that the Uniform Domain Name Dispute Resolution Policy (“ the UDRP”) is a means of resolving disputes where the real and substantive issue between the parties is an allegation of abusive registration of a domain name.
If the dispute is solely about a domain name, the Policy confers jurisdiction.
If the dispute has nothing to do with a domain name, the Policy does not provide a mechanism for resolving that dispute.
If, however, the dispute is in substance a commercial dispute and only peripherally concerns a domain name, as where the domain name is one of the assets of a business about which there is a wider dispute, the Panel has to decide whether it is possible in any real sense to separate the purely domain name issues from the wider commercial dispute. Frequently, this cannot be done for the reason that if it attempts to do so, the Panel will be trespassing on wider issues over which it has no jurisdiction and which it would be trying to resolve without the powers of a court, which it clearly does not have.
The Panel has concluded that the present case is clearly one which is in substance a wider commercial dispute where the issues concerning the domain name can be resolved only by examining and resolving issues that go far beyond the domain name issues. Those issues are aspects of a wider and complicated commercial dispute over which the Panel has no jurisdiction. Moreover, they can be resolved only by the use of forensic powers which a Panel under the UDRP does not have, such as deposition evidence by cross examination, discovery, the taking of accounts and, inevitably the question of remedies.
Nor is this a borderline case; it is clear that the Panel has no jurisdiction over the essential and substantive dispute between the parties, which can only be resolved by litigation or by mediation or arbitration under an agreed process.
The Panel will now set out its reasons for the conclusion that has been reached. In that regard, it is instructive to consider the attitude taken by previous UDRP panels on this question.
In Love v. Barnett, FA 944826 (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. “
According to the panel in Love, complex cases such as the one presented
here are better decided by the courts than by a UDRP panel. Thus:
“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.”
The panel in Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning. Thus:
“[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.”
Further, In Bracemart, LLC v. Drew Lima, FA 1494699 (Mar. 28, 2013) the Panel declined to make any findings under the UDRP when there was evidence that both the complainant and the respondent at some point acted in an official capacity in the management of the company, and that “[b]ased upon this reasoning, the Panel concludes that the instant dispute relates to contractual interpretation and/or whether the relationship between Complainant and Respondent was one of employer-employee or one of partnership, which determination falls outside the scope of the Policy.” Because the question of whether the complainant or the respondent in that case had rights in the domain name relied heavily on the corporate structure of the companies involved, the Panel could not resolve the dispute under the UDRP.
Based upon the reasoning outlined in the aforementioned cases, numerous other decisions and the record, the Panel concludes that the instant dispute contains, first, many questions of contractual interpretation. That in itself is a ground for dismissing the Complaint for want of jurisdiction See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (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 (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 (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). To a similar effect was the decision in Bracemart, LLC v. Drew Lima, FA 1494699 (Mar. 28, 2013), where the panel held that a dispute concerned “…contractual interpretation and/or whether the relationship between Complainant and Respondent was one of employer-employee or one of partnership, which determination falls outside the scope of the Policy.”.
There are numerous such decisions, some of which are discussed with commentary to the same effect in Levine, Domain Name Arbitration, Legal Corner Press, New York, 2015, p.77, et. seq.
The history of the relationship between the parties and the circumstances leading to the present dispute are adequately explained in their submissions, summarized above. From those submissions it is apparent that there are serious issues of fact and law to be determined involving the proper interpretation of the contractual relations between them, the obligations of the parties, the terms on which any contract between them might be terminated, whether the contract was in fact terminated, whether one or more parties are in breach of the contract and, if any of those eventualities has occurred, the consequences of their having occurred. These are factual issues that a UDRP panel is not equipped to resolve and although it is always possible that the disputed domain name may be affected by the outcome, that is only one part of a many faceted dispute.
The Panel is also concerned by the fact that, although Seamax America, LLC. clearly has an interest in the commercial dispute, including the right to use the disputed domain name, it is not a party to the present proceeding.
Golden Flyer Construcoes Aeronauticas LTDA may also be involved in questions of liability, but it also is not a party to the present proceeding.
For all of these reasons the Panel is of the opinion that the dispute is outside the jurisdiction of the UDRP and the Complaint cannot proceed.
The Panel adds that although it has been necessary to make reference to certain factual matters to explain adequately the Panel’s opinion on the jurisdictional issue, nothing said here should be taken as the expression of any opinion on any aspect of those matters. Nor should anything said here be taken as the opinion of the Panel on how any issue concerning the dispute might, would or should be resolved. Such matters are entirely the responsibility of any future tribunal that might acquire jurisdiction over this or any related dispute.
There is therefore no need for the customary UDRP examination of the three elements that must be proved for a claim to succeed under the Policy. The proper course to follow is that followed in Bracemart, LLC v. Drew Lima, FA 1494699 (Forum Mar. 28, 2013) and dismiss the Complaint for want of jurisdiction and to order that the remedy of transfer of the domain name be denied.
For the reasons stated above, the remedy of transfer is DENIED and the Complaint is DISMISSED.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 9, 2018
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