Drayton Nay v. ICE Inc. c/o Joseph Elkind
Claim Number: FA0501000400432
PARTIES
Complainant
is Drayton Nay (“Complainant”), 20533
Biscayne Boulevard, Suite 287, Hollywood, FL 33180. Respondent is ICE Inc. c/o Joseph Elkind (“Respondent”), represented by Edward T. Dinna, 719
Intracoastal Drive, Fort Lauderdale, FL 33301.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <sumpoosie.com>,
<getsumpoosie.com>, <hollywoodbeachbeverages.com>,
<drinkthinkpink.com>, and <bottlemodels.com>, registered
with Intercosmos Media Group, Inc. d/b/a Directnic.com.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Richard
Hill as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
11, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 24, 2005.
On
January 12, 2005, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed
by e-mail to the National Arbitration Forum that the domain names <sumpoosie.com>,
<getsumpoosie.com>, <hollywoodbeachbeverages.com>,
<drinkthinkpink.com>, and <bottlemodels.com> are
registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that the
Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified
that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a
Directnic.com registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
February 1, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 21, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts, and to postmaster@sumpoosie.com,
postmaster@getsumpoosie.com, postmaster@hollywoodbeachbeverages.com,
postmaster@drinkthinkpink.com, postmaster@bottlemodels.com by e-mail.
A
timely Response was received and determined to be complete on February 22, 2005.
On March 2, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Richard Hill as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
[a.] We
produce two energy drinks by the name Sumpoosie, and Think Pink. We also hold the incorporation of Hollywood
Beach Beverages, Inc, and Think Pink Beverage, Inc. The list of domains we are seeking to have
transferred to us are confusingly similar, or identical to the products we
make, and also two of our company names.
Historical
Information: We initially owned the
domain names that we are now seeking to have transferred back to us. The events that lead up to our losing the
domains were ones not expected from a professional hosting company. Our company wanted to enter the Internet
market with our energy drinks, and we were approached by a company that claimed
they could assist us in branching out over the Internet. So we allowed our websites to be hosted by
ICE Inc.
In
order to take credit card transactions, we were told by ICE Inc., our
registration information needed to change.
They said it had to be consistent with what was on the merchant account,
so we gave access to one of ICE’s employee, who instead of changing our
information, transferred our domains to ICE Inc. Unknown to us, business continued as usual, until we left ICE
Inc. and wanted someone else to host our websites, then we were hit with the
reality that our domains no longer belonged to us, that they belonged to ICE
Inc.
We
contacted Joseph Elkind to get our domains back, and he said we had to pay him
$196,000 then he would be willing to release them. We decided to buy other domains names to do business out of, and
continue with business. Unfortunately,
our emails that were going to those domain names, were being read by Mr. Joseph
Elkind, and he was replying to them telling people lies about our company, and
telling people not to ship our products.
ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i).
[b.] Respondent
(ICE Inc. c/o Joseph Elkind) does not have any right to the domain names
because he has shown that his intentions are in bad faith. He is misleading the public into believing
the site is owned and ran by us, only to take credit card, emails, and address
information. Moreover, Respondent has
kept the domain names primarily for the purpose of disrupting our
business. ICANN Rule 3(b)(ix)(2);
ICANN Policy ¶ 4(a)(ii).
[c.] Respondent’s
(ICE Inc. c/o Joseph Elkind) use of these domains, and his subsequent
commercial operation of these domains, was clearly designed as a blatant
infringement of the intellectual property rights of Think Pink Beverages, Inc
or Hollywood Beach Beverages, Inc. and its client companies. Specifically, Respondent’s (ICE Inc. c/o
Joseph Elkind) conduct constitutes flagrant violation of the Lanham Act, as
well as infringement of common law trademark and unfair competition under the
laws of the State of Florida and other applicable jurisdictions. Not only has he continued offering our
products for sale (note: he is not a distributor, or a vendor for our company),
he has intercepted emails via these domains and tried to ruin our company’s
name. ICANN Rule 3(b)(ix)(3); ICANN
Policy ¶ 4(a)(iii).
B.
Respondent
Respondent
stated the following:
In responding to this complaint, ICE, Inc. c/o and Joseph
Elkind will demonstrate their right to a legitimate interest in domain names in
dispute. When faced by an accuser who
makes material misstatements and statements of half-truths the best way to show
the accuser as untrue is to show prior inconsistent statement with the
allegations being made in the complaint.
For example, if the accuser alleges that he does know of the transfer of
the domain name, there should not be prior inconsistent statements or acts showing
that he does or did know about the transfer the disputed domain names. In this
case, Drayton Nay and his employees are documented in E-mails in attempting to
help the transfer. Please refer to the attachments that clearly reflect that
Drayton Nay and his employees on a number of occasions with full knowledge and
consent made attempts and met with ICE, Inc. employees to make the transfer of
the disputed domain names to ICE, Inc.
The attached E-mails where Drayton Nay clearly helps in the transfer and
clearly understands the transfer of the disputed domain names clearly documents
that his actions and statements are inconsistent with the allegations in the
complaint and therefore suspect of lacking credibility.
It is undisputed that Drayton Nay formed with his company’s
Hollywood Beach Beverages Inc. and Think Pink Beverage Inc. a joint venture
agreement with ICE, Inc. Drayton Nay
was in the distribution business of certain beverage products that were
experiencing very little growth. ICE,
Inc. was in the Internet marketing business with vast experience a marketing
products over the Internet. Out of the
situation spawned a joint venture. In
its simplest terms the parties agreed to come together and unite to market the
beverages on the Internet. ICE, Inc.
agreed to pay substantial amounts of money and Drayton Nay through his
company’s distributed the beverages.
Under the agreement, ICE, Inc. was to purchase from Frank Oliver for
$7,500.00 the domain names (attached is E-mail discussions of the purchase) in
dispute. Under the agreement ICE, Inc. c/o Joe Elkind paid over $60,000.00 to have Drayton Nay shares in his company
transfer the domain names to ICE, Inc. in exchange for ICE, Inc.’s expertise. Please refer to the wire payment funds
transfer request documenting ICE, Inc.’s payment of its consideration and an
email from Hedi Laub dated June 14, 2004 documenting the preliminary
discussions between the parties belying the accusation that ICE, Inc. was
merely retained as a hosting company is that out as partner with a
revenue-sharing agreement. Clearly, the
complainant’s allegations that ICE, Inc. are contrary to the complainant’s
employees clear statement asking ICE, Inc. to come on board for their money
contribution as well as expertise in the field of Internet marketing.
Difficulties developed between the parties, Levi Stanley
left ICE, Inc. to work for Drayton Nay using the same Internet marketing
techniques that he employed at ICE, Inc. Drayton Nay and Levi Stanley decided
to reach their own agreement cutting out ICE, Inc. ICE, Inc. is not a hosting company and Drayton Nay knows full
well.
After the breakup, ICE, Inc. took down the joint page on the
web sites and gathered the E-mails in hopes of working out the dispute. The domain names were transferred legally
and for consideration pursuant to the joint venture agreements and not for
purposes of disrupting business. ICE,
Inc. has substantial time and money invested in a joint ventures agreement and
Drayton Nay simply decided that ICE Inc. and its share of the revenue generated
under the joint venture agreements was simply no longer needed now that they
had Levi Stanley working for them.
Additionally, they decided to use this forum to cast allegations of
bad-faith on ICE, Inc. activities to regain registration of the disputed domain
names despite the fact that there are obligations under the joint venture
agreements making ICE, Inc. Partners in Drayton Nay’s businesses for a valuable
consideration in marketing and money to spent.
Lastly, then the complainant let us that ICE, Inc. Continue
commercial operations after the dispute.
This does not make sense, ICE, Inc. does not possess the ability to ship
the beverages and after the dispute the joint page was taken down so that new
credit card information cannot be obtained the e-mails have been collected and
are available for use after the dispute is resolved. ICE, Inc. made an agreement with Drayton Nay and now Drayton Nay
is attempting to use this form to circumvent his responsibilities under the
agreement. Despite this arbitration
proceeding and its outcome litigation over a breach of the agreement and
payment and return for the substantial consideration by ICE, Inc. seems
certain.
FINDINGS
Complainant and Respondent entered into a
contract, which included registration of the contested domain names. A dispute has arisen with respect to many
issues, which are beyond the scope of the Policy.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain
name has been registered and is being used in bad faith.
The Panel finds that this dispute exceeds the scope
of the Policy.
Complainant charges that Respondent engaged in
misconduct that would possibly implicate such legal claims as
misrepresentation, fraud, breach of contract, or even breach of a fiduciary
duty. Thus, this dispute is not covered by the
Policy. See Clinomics
Biosciences, Inc. v. Simplicity Software, Inc., D2001-0823 (WIPO Aug. 28,
2001) (declining to rule on the merits after finding that the dispute centered
on whether Respondent could retain control of a domain name as security for
payment for web design work, a subject matter within the law of liens, and
outside the scope of the UDRP Policy); see also Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001)
(refusing to transfer the domain name and stating that the ICANN Policy does
not apply because attempting “to shoehorn what is essentially a business
dispute between former partners into a proceeding to adjudicate cybersquatting
is, at its core, misguided, if not a misuse of the Policy”); see also Latent Tech. Group, Inc. v. Fritchie, FA
95285 (Nat. Arb. Forum Sept. 1, 2000) (dispute concerning employee’s
registration of domain name in his own name and subsequent refusal to transfer
it to employer raises issues of breach of contract and breach of fiduciary duty
that are more appropriately decided in court, not before a UDRP Panel); see also AutoNation
Holding Corp. v. Alawneh, D2002-0581 (WIPO
May 2, 2002) (holding that assertions of trademark infringement "are
entirely misplaced and totally inappropriate for resolution through an ICANN
proceeding. The scope of an ICANN proceeding is extremely narrow: it only
targets abusive cybersquatting, nothing else"); see also Commercial
Publ’g Co. v. EarthComm., Inc. FA 95013 (Nat. Arb. Forum July 20, 2000) (stating that the Policy is “intended
only for the relatively narrow class of cases of ‘abusive registrations.’”
Cases where registered domain names are subject to legitimate disputes are
relegated to the courts).
As a consequence, the Panel will not consider the
detailed arguments concerning the Policy.
For the reasons stated above, the Panel declines to enter
into the matter.
For the reasons stated above, the Panel declines to enter
into the matter.
For the reasons stated above, the Panel declines to enter
into the matter.
DECISION
For
the reasons stated above, the Panel dismisses the case and concludes that
relief shall be DENIED.
Richard Hill, Panelist
Dated: March 16, 2005
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