Paul Wyatt v. Michael Hoopes a/k/a
Gotaweb
Claim Number: FA0507000510910
PARTIES
Complainant
is Paul Wyatt (“Complainant”),
represented by Stephen L. Anderson, of Anderson & Associates,
27349 Jefferson Avenue, Suite 211, Temecula, CA 92590. Respondent is Michael Hoopes a/k/a Gotaweb (“Respondent”), represented by
Eric Garner, 1792 Tribute Rd.,
Suite 450, Sacramento, CA 95815.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <paulwyatt.com>, <fine-wine.com> and <finewinerack.com>, registered with Enom, Inc.; and <paulwyatt.info>, <paulwyattdesigns.info> and <paulwyattexclusive.info>, registered with Dotster,
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.
Darryl
C. Wilson as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
8, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 12, 2005.
On
June 30, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum
that the domain names <paulwyatt.com>, <fine-wine.com>, and <finewinerack.com> are registered with Enom, Inc. and that
the Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is
bound by the Enom, 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
June 30, 2005, Dotster, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain names <paulwyatt.info>, <paulwyattdesigns.info>, and <paulwyattexclusive.info> are registered with Dotster, Inc.
and that the Respondent is the current registrant of the names. Dotster, Inc. has verified that Respondent
is bound by the Dotster, 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
July 14, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 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@paulwyatt.com, postmaster@paulwyatt.info,
postmaster@paulwyattdesigns.info, postmaster@paulwyattexclusive.info,
postmaster@fine-wine.com, and postmaster@finewinerack.com by e-mail.
A timely
Response was received and determined to be complete on August 15, 2005. On August 23, 2005, Complainant sent a
timely Additional Submission.
Respondent replied with a timely Additional Submission on August 30,
2005.
On September 1, 2005 an Additional
Submission was submitted by Complainant and determined to be deficient. The Panel has not chosen to consider this
Additional Submission in its Decision.
On August 22, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Darryl C. Wilson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant,
Paul Wyatt, contends that he continuously used his name as a common law
trademark for nearly twenty-five years and has also used the trade name “Fine
Wine Rack & Cellar Co.” in connection with the design and installation of
custom wine cellars, for private collectors, hotels, restaurants and other
clients. Complainant states that he has
gained extraordinary recognition worldwide and that his business efforts have
resulted in his name becoming synonymous with the highest quality wine cellars,
display cases and bottle storage systems.
Complainant also states that he previously registered the <fine-wine.com>,
<paulwyatt.com>, and <finewinerack.com> domain names and
used the domain names in conducting his business from the date of registration
through sometime in 2003. Complainant
asserts that Respondent has illegitimately registered the <paulwyatt.com>,
<paulwyatt.info>, <paulwyattdesigns.info>, <paulwyattexclusive.info>,
<fine-wine.com>, and <finewinerack.com> domain names,
having no rights in the same.
Complainant contends Respondent’s actions are in bad faith and meant to
improperly take advantage of Complainant’s reputation and goodwill.
B.
Respondent
Respondent
contends that the domain names in dispute were registered by him as an employee
and/or agent of individuals who purchased Complainant’s business. Respondent alleges that, after various
meetings and subsequent negotiations, sometime in 2003, two individuals
purchased Fine Wine Rack & Cellar Company from Paul Wyatt, including its
inventory, equipment, contents, clientele, designs and domain names.
Respondent, the son-in-law of one of the
purchasers, indicates that after the purchase he was hired to work with
Complainant’s son to transfer the domain names from the original business to
the new business entity.
Respondent further asserts that Paul
Wyatt and the purchasers formed the new business, Paul Wyatt Designs, LLC, on
November 6, 2003 and that Paul Wyatt worked with the new entity until ceasing
communications sometime in January 2004.
Respondent contends that in March 2004,
an attorney purporting to represent Complainant contacted Paul Wyatt Designs,
LLC stating that Complainant wanted “his name back” and that he was going to
resume use of his name and website. Paul Wyatt Designs, LLC’s attorney at the
time responded that Complainant’s actions and demands amounted to a breach of
contract. Respondent states that no
further action took place between the parties until Complainant filed the
instant case. Respondent denies
Complainant’s allegations regarding improper registration and bad faith
actions, asserting instead that the business arrangement between the parties
included the transfer of the domains to Paul Wyatt Designs, LLC. Respondent further contends that he is not
the proper respondent in this matter, claiming to have registered the disputed
domains as part of his employment arrangement with Paul Wyatt Designs, LLC and
that it is the company that is the registered owner and entity maintaining sole
and absolute use and control over the domain names in dispute.
C.
Additional Submissions
Complainant’s
additional submission substantially replicated the initial complaint,
supplementing the basic assertions with additional documents and claims
regarding the scope of the sales transactions that occurred between Complainant
and Respondent’s employer. Complainant
noted that Respondent did not dispute that the domains in dispute were the same
or similar to those previously registered and used by the Complainant. Complainant reiterated allegations of
illegitimacy and bad faith referring to United States federal trademark law and
other intellectual property references to further support the domain name
precedent cited.
Respondent’s additional submission
addressed Complainant’s assertions by focusing on the jurisdiction of the Panel
in UDRP proceedings as compared to matters litigated under state and federal
intellectual property laws. Respondent
also asserts that this dispute is a common law contract matter. Respondent further asserted that Respondent
had a legitimate interest in the subject domains and did not act in bad faith,
and as factual support for the same, relied solely on the documents produced by
the meetings, negotiations and transfer of Complainant’s original business to
the new business entity established by Respondent’s employer.
FINDINGS
The Panel finds
that this matter involves a business conflict between the parties that is
better left to judicial resolution. It
is undisputed that Complainant did originally register some of the domain names
in dispute and used them until 2003.
There is also no dispute that in 2003, Complainant sold the business
associated with the domain names to certain individuals who did employ
Respondent to transfer the domain names to a newly formed business in which
Complainant had and still possibly has some legal interest. This new business entity, bearing
Complainant’s name appears to still be in operation, although Complainant has,
through counsel, expressed a desire to disassociate with the same and return to
business using some of the domain names in dispute. Complainant’s rights to use the original domain names registered
by him and further prevent Respondent or his employer from using the same and
similar related domain names in dispute is inextricably intertwined with the
parties’ conflicting views of what was intended and what actually transpired in
the sales transaction. Both parties
present a multitude of documents, affidavits, receipts and contractual documents
as points of reference, comparatively dwarfing the support they assert premised
on domain name policy and precedent.
The Panel thus concludes that this dispute is outside the scope of the
Policy. See Thread.com, LLC v.
Poploff, D2000-1470 (WIPO Jan. 5, 2001) (refusing to transfer the domain
name and stating that ICANN Policy does not apply because attempting “to
shoehorn what is essentially a business dispute between former parties into a
proceeding to adjudicate cybersquatting is, at its core, misguided, if not a
misuse of the Policy”); see also Commercial Publ’g Co. v. Earth Comm., Inc.,
FA 95013 (Nat. Arb. Forum July 20, 2000) (finding that the Policy’s
administrative procedure is “intended only for the relatively narrow class of
cases of ‘abusive registrations ... The [P]olicy relegates all ‘legitimate
disputes’ to the courts”).
The Uniform Domain Name Dispute
Resolution Policy allows parties to use judicial means or alternative dispute
resolution proceedings to resolve matters not properly brought pursuant to its
mandatory administrative proceedings.
Although domain names are disputed in the present case, the mere
presence of domain names in dispute does not automatically make the mandatory
administrative process the proper or best forum to resolve the conflict. When the disputed domains are part of an
underlying contractual dispute between the parties, it is more appropriate for
the parties to initially resolve the contractual conflict as a whole, rather
than use piecemeal proceedings to address selective aspects of the disputed
transaction.
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 makes
no findings on this issue.
The Panel makes
no findings on this issue.
The Panel makes
no findings on this issue.
DECISION
The Panel
decides that the ICANN policy is not applicable to this matter, therefore the
Panel concludes that the requested relief shall be DENIED.
Darryl C. Wilson, Panelist
Dated: September 6, 2005
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum