Thump Records, Inc. v. WebPros
Claim
Number: FA0503000446911
Complainant is Thump Records (“Complainant”), represented
by Allen Grodsky, of Grodsky and Olecki LLP,
2001 Wilshire Blvd., Suite 210, Santa Monica, CA 90403. Respondent is WebPros (“Respondent”), 302 Diamond St., Arcadia, CA 91006.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <thumprecords.com>, registered with Alldomains.com
Inc.
The
undersigned certifies that r she has acted independently and impartially and to
the best of her knowledge has no known conflict in serving as Panelist in this
proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
25, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 30, 2005.
On
March 30, 2005, Alldomains.com Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <thumprecords.com> is
registered with Alldomains.com Inc. and that Respondent is the current
registrant of the name. Alldomains.com Inc. has verified that Respondent is
bound by the Alldomains.com Inc. 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
April 1, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 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@thumprecords.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
April 27, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Sandra
Franklin as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <thumprecords.com>
domain name is identical to Complainant’s THUMP RECORDS mark.
2. Respondent does not have any rights or
legitimate interests in the <thumprecords.com> domain name.
3. Respondent registered and used the <thumprecords.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
On March 19,
1997, Complainant filed an application for the THUMP RECORDS trademark with the
U.S. Patent and Trademark Office (Ser. No.75260325). Complainant was granted registration of the mark on November 24,
1998 (Reg. No. 2,206,183).
On or about
September 29, 1997, acting on behalf of Thump Records, Brandon Lee, the
accountant for Thump Records, registered the <thumprecords.com> domain
name through the registrar, AllDomains.com.
Complainant registered the domain name for purposes of selling music
records online.
On or about
September 14, 1998, Thump Records retained the services of Respondent, WebPros,
to provide website design and hosting of Thump Record’s website located at
the <thumprecords.com> domain
name. Respondent operated Complainant’s
website for several years. As part of
the hosting agreement, Respondent was allegedly obligated to remit to
Complainant monies generated from the online music sales of Thump records. In the fall of 2004, Respondent allegedly
refused to remit those monies to Complainant.
Complainant
recently discovered through a WHOIS search of the disputed domain name that the
domain name registration had been transferred from Complainant to Respondent
without authorization from Complainant.
Complainant terminated its relationship with Respondent on March 15,
2005. Despite the termination of
services, Respondent allegedly continues to operate the disputed domain name and
attached website, and continues to sell Complainant’s merchandise online.
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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
The Policy “establishes a streamlined, inexpensive
administrative dispute-resolution procedure intended only for the relatively
narrow class of cases of ‘abusive registrations.’” ICANN Second Staff Report on
Implementation Documents for the Uniform Dispute Resolution Policy, October 24, 1999,
www.icann.org/udrp/udrp-second-staff-report-24oct99.htm, at paragraph
4.1(c). The class of cases “does not extend to cases where a
registered domain name is subject to a legitimate dispute (and may ultimately
be found to violate the challenger's trademark).” Id. This
exclusionary function of the Policy “is a feature of the policy, not a
flaw.” Id.
The narrow scope of the
Policy reflects its origins as a novel form of Internet dispute resolution
designed to balance a wide range of perspectives regarding the regulation of
Internet conduct. See Quarterview v. Quarterview Co. Ltd.,
AF-0209(a-b) (July 6, 2000); see also Tribeca Film Center Inc. v. Lorenzo
Brusasco-Mackenzie, D2000-1772 (Apr. 10, 2001); see also Nintendo of Am.
Inc. v. Jones, D2000-0998 (Nov. 17, 2000); see also Wal-Mart Stores Inc.
v. wallmartcanadasucks.com, D2000-1104 (Nov. 23, 2000).
Panels
have determined, consistent with the aforementioned, that certain issues exceed
the scope of the Policy and therefore are to be more properly resolved in
courts of law. For example, Panels have
held that contractual disputes, trademark infringement, breaches of fiduciary
duties, employer/employee disputes, and other business disputes are issues that
exceed the scope of the Policy. See Discover New England v. Avanti Group, Inc. FA 123886
(Nat. Arb. Forum Nov. 6, 2002) (finding the dispute outside the scope of the
UDRP because the dispute centered on the interpretation of contractual language
and whether or not a breach occurred); see
also Stevenson Indus., Inc. v.
CPAP-PRO Online, FA 105778 (Nat. Arb. Forum Apr. 24, 2002)
(determining that Complainant bears the
burden of proof under the UDRP in stating “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”); see also AutoNation Holding Corp. v. Rabea 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 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 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”).
In the
instant case, Complainant is asserting that Respondent is violating contractual
obligations that it agreed to when it began hosting Complainant’s website
located at the disputed domain name.
Complainant concludes that this breach of contract is the sort of issue
this Panel should properly resolve.
This Panel disagrees.
Whatever
the Panel’s thoughts on Respondent’s alleged violations of its agreement with
Complainant, this Panel is moved to act not by sentiment, but by authority. The limited scope of the Policy simply does
not grant such authority to panels to resolve disputes that hinge on
contractual provisions, breaches of fiduciary relationships, fraud, and the
like. Even were the Panel empowered to
resolve this dispute, the contract for which this dispute would turn has not
been advanced, although some documents relating to Complainant’s agreement with
Respondent are in the record. Perhaps
the Panel may simply adopt the words of the Honorable Panelist Richard Hill in
finding 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.” Drayton Nay v. Ice Inc., FA 400432 (Nat.
Arb. Forum Mar. 16, 2005).
Because this
case exceeds the scope of the ICANN Policy, the Panel concludes that relief
shall be DENIED.
Sandra Franklin, Panelist
Dated:
May 11, 2005
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