Elfriede Fober v. Russell Ferry / Astec Florida Group, Inc.
Claim Number: FA1802001771991
Complainant is Elfriede Fober (“Complainant”), represented by Elfriede Fober of Elfriede Fober, Austria. Respondent is Russell Ferry / Astec Florida Group, Inc. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <rastrausa.com> and <rastrainc.com>, registered with Name.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 15, 2018; the Forum received payment on February 15, 2018.
On February 16, 2018, Name.com, Inc. confirmed by e-mail to the Forum that the <rastrausa.com> and <rastrainc.com> domain names are registered with Name.com, Inc. and that Respondent is the current registrant of the names. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 February 21, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 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@rastrausa.com, postmaster@rastrainc.com. Also on February 21, 2018, 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 March 13, 2018.
An arbitration decision extension order has been filed on April 4, 2018, to extend the time period within which the Panel shall be required to render its Decision to April 9, 2018.
On March 21, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nathalie Dreyfus 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant engages in the developing, design, manufacturing, and operating production of building materials made from concrete composition, namely blocks, bricks, slabs, panels, forms, or wall assemblies. Complainant argues that it first used the mark in commerce as early as 1982, and conducts business in countries all around the world. Complainant states of its rights in the RASTRA mark through its registration of the mark with the WIPO (e.g. Reg. No. 481,516, registered Aug. 12, 1983). It alleges that Respondent’s <rastrausa.com> and <rastrainc.com> domain names are identical or confusingly similar to Complainant’s mark as they incorporate the mark in its entirety and merely add the term “inc” or the country code “usa.”
Complainant further argues that Respondent has no rights or legitimate interests in the <rastrausa.com> and <rastrainc.com> domain names and that Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Further, Complainant and Respondent had a former business relationship which Respondent violated, as Respondent co-signed an agreement with Complainant’s business. It further alleges that Respondent also does not use the infringing domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the resolving domain to offer a competing platform.
Complainant further states that Respondent has registered and is currently using the <rastrausa.com> and <rastrainc.com> domain names in bad faith and that Respondent registered the domain names to disrupt Complainant’s business by offering competing services. Further, Complainant argues that Respondent has intentionally attempted to attract Internet users to its new website, which is creating confusion and uncertainty in the market and among potential customers and long year proponents. Additionally, Complainant alleges that Respondent violated the business agreement between itself and Complainant regarding Complainant’s RASTRA mark.
B. Respondent
Respondent argues that Complainant previously transferred the rights to the RASTRA trademark to a third-party on or about June 1, 2015, as acknowledged by Complainant itself in an email to an attorney. It alleges that this transfer verification was acknowledged by a publication in ICF Builders Magazine, a premier source for this industry. It states that Complainant itself has engaged in fraud, as numerous individuals have filed complaints against Complainant for receiving funds but never delivering any goods. Respondent further alleges that it had to register the <rastrausa.com> domain name to use as part of an email address, as Complainant was reading Respondent’s emails linked to Respondent’s russ@rastra.com email.
Respondent alleges to be now, and to have been for almost three years, the rightful owner of RASTRAINC and RASTRAUSA. Respondent states to use those marks in the at-issue domain names to operate a legitimate business for the sale of CICF blocks used in construction throughout the United States and Canada.
Respondent first registered the <rastrausa.com> and <rastrainc.com> domain names on December 27, 2016 and July 15, 2015, respectively.
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.
Procedural Issue: Concurrent Court Proceedings
Respondent claims that there are currently court cases against Complainant filed in two jurisdictions in the United States, including Arizona (CV 17-01032-PHX-SPL), Virginia (1:17-CV 00891-LO-1DD). Respondent claims it will file a complaint in Florida state court, and the complaint is pending submittal. Finally, Respondent also alleges that an FBI Cyber Complaint has been filed against Complainant.
Other panels have chosen not to proceed with the UDRP because of the pending litigation. See AmeriPlan Corp. v. Gilbert FA105737 (Forum Apr. 22, 2002) (Regarding simultaneous court proceedings and UDRP disputes, Policy ¶ 4(k) requires that ICANN not implement an administrative panel’s decision regarding a UDRP dispute “until the court proceeding is resolved.” Therefore, a panel should not rule on a decision when there is a court proceeding pending because “no purpose is served by [the panel] rendering a decision on the merits to transfer the domain name, or have it remain, when as here, a decision regarding the domain name will have no practical consequence.”). The Panel considers the contentions of Complainant and Respondent as outlined below and the Panel chooses to dismiss the Complaint.
Preliminary Issue: Trademark Dispute Outside the Scope of the UDRP
Complainant claims rights to the RASTRA mark through its registration with the World Intellectual Property Organization (“WIPO”) (e.g. Reg. No. 481,516, registered Aug. 12, 1983).
Respondent claims that it acquired rights in the RASTRA mark in 2015 when Complainant transferred the mark. Respondent provides an email from an individual, Karl Holik, whom it claims used to own the company “Rastra Holding, LLC,” stating that the trademark rights were transferred. Respondent also provides a copy of a court document titled “ASSURANCE OF DISCONTINUANCE” written by the Attorney General for the State of Arizona.
Complainant and Respondent both assert rights to the RASTRA mark. The Panel determines that this dispute falls outside the scope of the Policy, and therefore chooses to dismiss the Complaint. In Commercial Publishing Co. v. EarthComm, Inc., FA 95013 (Forum July 20, 2000), the panel indicated that legitimate disputes should be decided by the courts:
The adopted policy establishes a streamlined, inexpensive administrative-dispute resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.” Thus, the fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute is a feature of the policy, not a flaw. The policy relegates all “legitimate disputes” to the courts. Only cases of abusive registrations are intended to be subject to the streamline [sic] administrative dispute-resolution procedure.
Previous panels have chosen to dismiss UDRP complaints which centered upon legitimate trademark disputes. See, e.g., Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else); see also Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”). Therefore, the Panel chooses to dismiss the instant Complaint.
As explained, the Panel decided to dismiss the Complaint and is not therefore bound to state on the three elements of the Complaint.
For all the foregoing reasons, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <rastrausa.com> and <rastrainc.com> domain names REMAIN WITH Respondent.
Nathalie Dreyfus, Panelist
Dated: April 9, 2018
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