Psichometrics, LLC v. Wolfwurks. LLC and
James Russell
Claim Number: FA0504000451924
PARTIES
Complainant
is Psichometrics, LLC (“Complainant”)
represented by Eric T. Johnson, of Eric T. Johnson, P.C., 4390 Earney Road, Suite 230, Woodstock, GA
30188. Respondents are Wolfwurks, LLC & James Russell (collectively,
“Respondent”) represented by A. Diane
Baker, of Baker Law Group, LLC, 555 Sun Valley
Drive, Suite N-4, Roswell, GA 30076.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <psichometrics.com>,
registered with Network Solutions, Inc.
PANEL
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.
Bruce
Meyerson as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
6, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 6, 2005.
On
April 6, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <psichometrics.com>
is registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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 13, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 3, 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@psichometrics.com by e-mail.
A
timely Response was received and determined to be complete on May 3, 2005.
On May 12, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Bruce Meyerson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
Psichometrics, LLC, formerly CheckStart Development Company, LLC (the
“Complainant” or the “Company”), was formed as a Georgia limited liability
company on July 27, 2000. Respondent
Leo J. “Chuck” Russell (“Respondent”) was a 51% owner of the Company and Julie
A. Moreland was a 49% owner of the Company.
After certain agreements were executed among the parties in October
2000, Respondent Russell and Ms. Moreland managed the Company. In early 2001, the Company was contemplating
bringing in additional owners. As part
of those discussions, it was suggested to Respondent that the name “Psichometrics”
would be an excellent new operating name for the Company. Respondent then apparently secured a domain
name for <psichometrics.com>.
However, Respondent, who at that time was the majority owner of the
Company as well as the Company’s Manager/Officer, apparently registered the
domain name <psichometrics.com>
in his individual capacity and not as a Company asset. The Company never authorized this
registration in Russell’s individual name nor was the Company fully aware of it
until some time in 2004.
On
March 18, 2002, the Company officially changed its name with the Georgia Secretary
of State to “Psichometrics, LLC” and began using <psichometrics.com> as its domain name for online
applications and as its e-mail server.
Respondent, acting on behalf of the Company, signed the necessary
paperwork to effectuate the name change. On August 28, 2002, Respondent resigned as Manager and
Vice-President and Chief Knowledge Officer of the Company. On or about September 8, 2002, Respondent,
along with the Company and all members of the Company, signed an Agreement
terminating Respondent’s interest as a member in the Company. As of such date, Respondent was no longer
associated with the Company other than as a commissioned sales person.
During
the time he was a manager of the Company, Respondent never disclosed that he
personally procured the domain name <psichometrics.com>. All
email for the Company goes to this site which is essential for the Company’s
marketing and operations.
The
Company believes that Respondent has not used the name “Psichometrics” in
connection with his business since September 8, 2002, when he was no longer
affiliated with the Company.
B. Respondent
Respondent
contends that this case arises out of a business dispute among former business
partners and is not a cybersquatting case at all. Respondent states that at no time has he attempted to publish a
website using the dispute domain name.
Respondent states that he has cooperated with Complainant to ensure that
Complainant could continue to use the domain.
In
early 2001 there were discussions about the future development of Complainant
which was then known as CheckStart Development Company, LLC. A number of new names for the Company were
discussed. Respondent was a part of
those discussions. One of the names
discussed was “psichometrics.” Because
at that time Complainant had not decided to use that name or “psychometrics,”
Respondent sought to register the domain name “psychometrics.com.” When Respondent found that this name was
already taken, he registered the domain name <psichometrics.com> in his name, using his own funds.
On
the date the domain name was registered by Respondent, Complainant was still
operating under the name CheckStart Development Company, LLC. Complainant did not change its name to Psichometrics, LLC until
approximately March 2002. After
Complainant changed its name, Respondent made the name available to Complainant
and it continues to be used by Complainant.
FINDINGS
Complainant
is a Georgia limited liability company formed in July 2000. Respondent Leo J. “Chuck” Russell was 51%
owner of the Company and Julie A. Moreland was 49% owner of the Company. On March 18, 2002, Complainant officially
changed its name with the Georgia Secretary of State to “Psichometrics, LLC”
and began using <psichometrics.com>
as its domain name for online applications and as its e-mail server. Respondent Russell registered the domain
name for <psichometrics.com> in
his own name. Complainant never
authorized this registration in Russell’s individual name. On August 28, 2002, Respondent Russell
resigned as Manager and Vice-President and Chief Knowledge Officer of the
Company.
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 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.
Complainant
has not established that the disputed domain name is identical or confusingly
similar to a trademark or service mark in which Complainant has rights. Complainant has not registered the
“PSICHOMETRICS” mark with the United States Patent and Trademark Office. Moreover, the record does not contain
sufficient evidence from which to conclude that Complainant’s use of the mark
has established a secondary meaning in the relevant market. Accordingly, Complainant may not exclude
Respondent from using its mark because Complainant has not established “rights”
in the mark within the meaning of the Policy.
See Weatherford Int’l, Inc. v. Wells, FA 153626
(Nat. Arb. Forum May 19, 2003); see also Lowestfare.com LLA v. US
Tours & Travel, Inc.,
AF-0284 (eResolution Sept. 9, 2000).
In
this respect, Complainant’s situation is different than that of the complaining
party in Am. Med. Labs., Inc. v.
Colondres, FA 95159 (Nat. Arb. Forum Sept. 22, 2000), a case relied upon by
Complainant. In that case, the
complaining party had filed applications for trademark and service mark
registration and the panel found that the complainant had “rights” in the marks
incorporated into the disputed domain name.
DECISION
Because
Complainant has not established that the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights, the relief sought by Complainant in this UDRP
proceeding is DENIED. This
ruling is without prejudice to whatever rights Complainant may have under the
various agreements entered into between the parties or whatever common law
rights Complainant may have.
Bruce Meyerson, Panelist
Dated: May 23, 2005
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