National Arbitration Forum

 

DECISION

 

DT & J, Inc. v. Brent Jenkins

Claim Number: FA0508000550477

 

PARTIES

Complainant is DT & J, Inc. (“Complainant”) represented by Curtis V. Harr, 1402 25th St. South, Suite B, Fargo, ND 58103.  Respondent is Brent Jenkins (“Respondent”), P.O. Box 1904, Fargo, ND 58107.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <roll-a-ramp.com>, registered with Network Solutions, Inc.

 

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.

 

Estella Gold as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2005; the National Arbitration Forum received a hard copy of the Complaint on August 31, 2005.

 

DOCS_PH 1802037v.2

On September 2, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <roll-a-ramp.com> domain name is registered with Network Solutions, Inc. and that the 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 September 7, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 27, 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@roll-a-ramp.com by e-mail.

 

A timely Response was received and determined to be complete on September 26, 2005.

 

On October 5, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Estella Gold as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant alleges that it has legal rights in the domain name <roll-a-ramp.com> as follows:

            a.         Complainant has a registered trademark in the name ROLL-A-RAMP (USPTO Reg. 2,618,969), which was issued on September 10, 2002;

 

            b.         Complainant has been doing business under the roll-a-ramp mark since February 13, 1999;

 

            c.          Complainant alleges that the domain name registered by the Respondent, <roll-a-ramp.com> is identical and confusingly similar to Complainant’s registered trademark;

 

            d.         Complainant alleges that Respondent has no right or legitimate interests in the domain name because Respondent initially acquired the domain name for the purpose of marketing and selling Complainant’s products.  Since Respondent has stopped distributing goods for Complainant, Respondent should not continue to use the domain name to profit from the name recognition and good will established through the efforts of Complainant;

 

            e.         Complainant alleges that <roll-a-ramp.com> is being used in bad faith because Respondent did not inform Complainant of his intention to acquire the domain name or of the potential problems associated with this acquisition and Respondent has offered to sell the domain name to Complainant for $6,500.

 

B. Respondent

Respondent alleges that Complainant’s UDRP Complaint is without merit for the following reasons:

            a.         Respondent was engaged by Complainant to market and sell Complainant’s roll-a-ramp products through the normal course of business in early Spring 2001;

 

            b.         Complainant and Respondent orally agreed to a business arrangement whereby Complainant authorized Respondent to use its best efforts to sell Complainant’s product over the Internet; under the oral business arrangement, Complainant would provide Respondent with products at wholesale dealer cost.  Respondent would sell products over the Internet at retail prices, and Respondent would retain the difference between the wholesale cost and retail prices;

 

            c.          In and around June 2001, to boost sales of Complainant’s products, Respondent registered the domain name <roll-a-ramp.com> and Respondent directed Internet users visiting that domain name to Respondent’s website for purposes of selling Complainant’s product;

 

            d.         The business relationship between Complainant and Respondent thrived for about four years during which Respondent continuously made payments to keep the domain name in good standing and used its best efforts to keep the site at the top of search engine hits for products such as Complainant’s;

 

            e.         In 2005, Complainant and Respondent terminated the business relationship due to their controversy over proper compensation;

 

            f.          Complainant thereafter suggested that the domain name should be transferred to Complainant and Respondent stated that the price would be between $6,300 and $6,500 as a result of the following calculation: $20/hour x 2 hours/week x 3 years;

 

            g.         Complainant agreed to give Respondent $6,300 worth of its products free of charge in exchange for the domain name; however, upon the inducement of such agreement into writing, Respondent noticed that Complaint changed the condition from free of charge to wholesale cost.  Respondent therefore refused to perform such an agreement.

 

FINDINGS

The Panelist finds the following on the facts:

 

1.   Respondent was implicitly authorized by Complainant as Complainant’s product distributor to register the domain name for the purpose of marketing Complainant’s product;

 

2.   Respondent paid for the registration, maintenance, and operation of the domain name;

 

3.   Complainant had never challenged Respondent’s registration or use of the domain name before their business relationship was terminated;

4.   The present situation is a result of the broken business relationship between two parties and the parties had not discussed the ownership of the domain name prior to the dissolution of their relationship;

 

5.   Complainant requests that the domain name be transferred from Respondent to Complainant.

 

DISCUSSION

As the above factual recitation discloses, this is not a cybersquatting case.  Rather, it is a dispute over the original rightful ownership of a domain name between two parties who had a business relationship for several years.  The only reason that Complainant is seeking relief in this forum is that the property at issue is a domain name.

 

This forum is not a general domain name court, and the Policy is not designed to resolve all disputes concerning domain names.  The jurisdiction of this forum is limited to providing a remedy in cases of “the abusive registration of domain names,” or “cybersquatting.”  See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000).  “To attempt 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.”  Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001); see also Latent Technology Group, Inc. v. Bryan Fitchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (dispute concerning employee’s registration of domain name in his own 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).

 

This reason alone is sufficient to justify denial of the Complaint.  Further, the Complaint has not satisfied the requirements of the Policy.  To invoke the Policy, Complainant must show that: (1) the domain name is identical or confusingly similar to a mark in which the Complainant has rights; (2) that Respondent lacks rights or a legitimate interest in the domain name; and (3) that Respondent registered and used the name in bad faith.  Policy ¶ 4(a).  Assuming arguendo that the first two requirements have been met, it remains that the third has not.

 

There is no dispute that Complainant and Respondent reached a business agreement according to which Respondent could use the Internet to market and sell Complainant’s product.  Respondent thereafter registered and used the domain name <roll-a-ramp.com> to serve the purpose of marketing Complainant’s product, and Complainant has never objected to such registration and use of the domain name by Respondent.  Such registration and use of the domain name is in the best interests of both Complainant and Respondent and cannot reasonably be characterized as “bad faith.”   Furthermore, Respondent’s offer to sell the domain name does not constitute bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (concluding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses); see also LifePlan v. Life Plan, FA 94826 (Nat. Arb. Forum July 13, 2000) (“[T]he mere offering [of the domain name for sale], without more, does not indicate circumstances suggesting that Respondent registered the domain name primarily for the purpose of selling, renting, or transferring the domain name to the Complainant as required under [Policy¶ 4(b)(i)].”).

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

 

Estella Gold, Panelist
Dated: October 18, 2005