National Arbitration Forum

 

DECISION

 

eProperty Direct LLC v. Dana Miller

Claim Number: FA0611000836419

 

PARTIES

Complainant is eProperty Direct LLC (“Complainant”), represented by Michael Agee, of American Pacific Financial Corp, 225 W. Hospitality Lane, Suite 201, San Bernardino, CA 92324.  Respondent is Dana Miller (“Respondent”), 12037 Quarry Ct., Fishers, IN 46037.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <homeyeah.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.

 

Debrett Gordon Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 7, 2006; the National Arbitration Forum received a hard copy of the Complaint on November 16, 2006.

 

On November 7, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <homeyeah.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 November 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 18, 2006 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@homeyeah.com by e-mail.

 

A timely Response was received and determined to be complete on December 18, 2006.

 

On December 28, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett Lyons as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant was formerly known as HomeYeah.com LLC and is or was in the business of residential real estate sales and brokerage.  

 

It is the owner of US Trade Mark Registration No. 2,440,843 for a HOMEYEAH!COM logostyle mark in international class 36 for relevant services. 

 

It alleges that Respondent was an employee and shareholder of Complainant whose contract was terminated on August 7, 2003.  Respondent’s role was as its website manager.

 

It claims that the disputed domain name was transferred by Respondent to Respondent without Complainant’s knowledge or consent sometime after August 7, 2003.  It asserts that Respondent did so in order to gain leverage over Complainant in a civil lawsuit between the parties, amongst others.

 

Complainant asserts that the lawsuit was initiated by Respondent and others in relation to an alleged breach of contract relating to certain technology assets which do not touch on the disputed domain name.  It accordingly states in the Complaint that there are no additional legal proceedings in which the domain name is the subject of the proceeding.

 

It claims to have fruitlessly petitioned Respondent for return of the domain name.

 

B. Respondent

 

Respondent asserts that “the disputed domain name, trade marks and associated trade names” are the subject to Judgment 49D6-0401-PL-000186 of the Marion County Superior Court in the State of Indiana.

 

Respondent claims that it maintained the domain name during a period when Complainant had “abandoned it” and preserved it during the time that the parties were engaged in court proceedings.

Respondent claims that it has not acted in ways which might be comprehended as bad faith under the Policy and that the court judgment in its favor shows that it has legitimate interests in the assets, or the disputed assets, of the Complainant.

 

FINDINGS/DISCUSSION

 

            A.   Effect of Court Proceedings

            Rule 18(a) of the Administrative Policy states that:

 

“In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”

 

Rule 3(b)(xi) of the Administrative Policy requires the parties to a dispute to:

 

“Identify any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain name(s) that are the subject of the complaint.” 

 

            The language of Rule 3 is broader than Rule 18 in terms of the requisite nexus between the domain name and the legal proceedings since the proceedings need only relate to,       or have a connection with, the domain name.

 

Complainant admitted to legal proceedings but denied a connection with the disputed domain name.  Respondent, by contrast, asserted that the domain name and the trade marks were the subject of the legal proceedings and submitted in evidence a copy of the judgment referred to above.

 

The judgment dated August 10, 2006 from the Marion Superior County Court names Respondent as a co-plaintiff and Complainant as a co-defendant.  It is based on a motion by the plaintiffs for default judgment because of the defendants’ repeated failure to comply with court directions.  The motion was granted and the defendants ordered to pay the plaintiffs substantial damages plus costs, expenses and attorney fees.

 

There is no indication anywhere in the Court document as to the nature of the claim or the cause of action from which it arose.

 

A question arises as to how the Panel should exercise the discretion given under Rule 18(a).  In UDRP decisions such as AmeriPlan Corp. v. Gilbert FA105737 (Nat. Arb. Forum Apr. 22, 2002), there were simultaneous Court proceedings and UDRP disputes regarding the same subject matter.  There is no clear evidence of that in this case.  The Panel is mindful of the common-sense appreciation by the AmeriPlan Corp. v. Gilbert panel that the function of the UDRP is to reduce the cost and effort required to resolve domain name disputes by offering a simplified mechanism in place of litigation, and that to render a decision on a domain name dispute when there is already a Court action pending violates this logic.  But, again, the present Panel finds that there is no application of that thinking in this case since the legal proceedings referred to by the parties appear to be concluded and Orders made.  Moreover, to repeat, those Orders do not touch directly on the disposition of the disputed domain name or on the parties’ intellectual property rights.

 

Accordingly, exercising the discretion given to it under Rule 18(a), the Panel decides that it is appropriate to consider and decide the dispute.

 

            B.  Scope and Function of the UDRP

 

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 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.

 

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.”

 

Rule 10(a) under the Policy states that the Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.

 

The Complaint does not raise issues of abusive registration of the <homeyeah.com> domain name.  It claims that it was the original registrant. The Panel observes from the evidence supplied by Complainant that the original registrant was listed as “HAYS, GERRY ( HOMEYEAH-DOM)” (sic.) and the Complainant’s company given as his/her address.  The Panel observes that, as claimed, Respondent was listed as the Administrative Contact.

 

Respondent was in a business relationship with Complainant.  There is some evidence that Respondent’s employment with Respondent ended on August 7, 2003, due to “department downsizing” but Complainant admits that Respondent was a shareholder in its company and there is no evidence as to how or when that aspect of the parties’ relationship was resolved.  Moreover, there is no evidence as to when the domain name was transferred into the name of Respondent.

 

Complainant admits to a contractual arrangement with Respondent for the purchase or use of unspecified “technology assets” belonging to Respondent.  Respondent supplies correspondence which refers to certain software licences and other, again unspecified, intellectual property.

 

In general, Complaint alleges issues regarding the rightful possession of the domain name.  It made no effort in its Complaint to address the specific criteria in Paragraph 4(a) of the Policy.  The disputed domain name and the mark of the US Federal trade mark registration are not identical (as Complainant asserts) and it made no argument that the two were confusingly similar.  It made no effort to show that the Respondent lacked rights or legitimate interests in the name in terms of the Policy, nor did it adduce arguments that Respondent had demonstrated acts of bad faith in terms of the Policy.

 

Were it necessary to do so, the Panel would find that Complainant had failed to make out its case under all three limbs of Paragraph 4(a) of the Policy, however on the basis of the arguments and evidence provided the Panel holds that this dispute is simply outside of the scope of the UDRP.  See Commercial Publ’g Co. v. EarthComm., 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”); see also Discover New Eng. 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).  

 

DECISION

 

The Panel concludes that relief shall be DENIED.

 

 

 

 

Debrett Gordon Lyons, Panelist
Dated: January 8, 2007