National Arbitration Forum

DECISION

First Nationwide Exchange, Inc. v. Reskyu

Claim Number: FA0704000956937

PARTIES

Complainant is First Nationwide Exchange, Inc. (“Complainant”), represented by Martin E. Hsia, of Cades Schutte LLP, 1000 Bishop Street, Suite 1200, Honolulu, HI 96813. Respondent is Reskyu (“Respondent”), represented by John Atchison, P.O. Box 1149, Temecula, CA 90266.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <firstnationwideexchange.com>, registered with Wild West Domains, 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.

Debrett Lyons as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 9, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 12, 2007.

On April 10, 2007, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <firstnationwideexchange.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 18, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 8, 2007 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@firstnationwideexchange.com by e-mail.

A timely Response was received and determined to be complete on May 7, 2007.

On May 11, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant alleges that it was registered to do business in Hawaii as a limited liability company on March 8, 2001, by Allen Johnson (“Johnson”), initially under the name First Nationwide Exchange, LLC (“LLC”). Complainant alleges that LLC provided real estate exchange services under the name "First Nationwide Exchange" from March 2001.

Complainant converted from LLC to First Nationwide Exchange, Inc. (“Inc”) in October 2005 and asserts that it continued to provide real estate exchange services under the name First Nationwide Exchange. Complainant claims that LLC and Inc were at all times the same business.

Complainant believes that Respondent is owned and operated by John Atchison (“Atchison”) and that it provides graphic design and mailing services. Complainant alleges that Respondent, Atchison and another individual, Barry Fitzgerald (“Fitzgerald”), were hired by LLC to obtain the domain name registration <firstnationwideexchange.com> (“the disputed domain name”), and to create content to be posted at the corresponding website. Complainant asserts that Atchison was paid US$8,000.00 for his services in that connection.

Complainant alleges that on March 8, 2001, the disputed domain name was registered in the name of Respondent with Atchison designated as its Administrative Contact.

Complainant states that Atchison failed to complete the agreed website content and that he did not transfer the disputed domain name registration to LLC. Instead, in 2006, Complainant alleges that Atchison informed Inc. that he intended to post content on the website and that he intended to sell the disputed domain name registration to a competitor of Inc.

Complainant claims that on September 14, 2006, its attorneys sent a demand letter to Atchison informing him that Complainant is the legitimate owner of the disputed domain name and of the website content so far created for LLC, for which Atchison had already received payment. Complainant demanded that Atchison refrain from posting any content at the website and that he cease and desist from all use of the disputed domain name and that he transfer the domain name to Complainant by September 21, 2006. Complainant states that there was no response to the demand letter.

Complainant addresses the Policy to the following extent. It states that the domain name is identical to Complainant's trademark “First Nationwide Exchange.” Complainant argues Respondent has no rights or legitimate interests in respect of the domain name. In particular, the name "First Nationwide Exchange" does not reflect a name by which Respondent is commonly known. Additionally, Complainant has no knowledge of Respondent or Atchison using the name "First Nationwide Exchange," and there are no businesses in the State of Hawaii that are registered to do business under that name. Neither Respondent nor Atchison holds a Hawaiian or U.S. Federal trademark registration for “First Nationwide Exchange.” Therefore, Complainant concludes, neither Respondent nor Atchison has any right or legitimate interest in the domain name.

Complainant goes on to state that Respondent clearly intends to misleadingly divert customers to Respondent’s website by using Complainant's trademark in the domain name, which may tarnish the trademark to the extent that Complainant has no control over the quality of goods or services being offered by Respondent. Additionally, by using the domain name, Respondent is depriving Complainant of the opportunity to conduct online business under its trademark.

B. Respondent

Respondent alleges that in September 2000, Atchison, Fitzgerald and Johnson agreed to form a business:

[T]o collect data over the internet and integrate that information with various exchange documents to allow an exchange to be performed without participation by an intermediary. The company would do exchanges nationwide over the internet and would be the first company to do exchanges in this manner.

Respondent alleges that, at that time, Johnson was doing business in Hawaii under the name “Conduit Exchange.” Respondent goes on to state that:

Conduit Exchange is the direct successor to the Complainant. In March 2001, having agreed on the division of the company and the goals a name was selected and registered to reflect the purpose and scope of the business. John Atchison as the General Manager, Barry Fitzgerald as the Technical Director and Allen Johnson as the Operations Manager. … In 2005 Allen Johnson became ill and asked if he could take time off from development to train a replacement for his single person intermediary business which he had changed to LLC (from Conduit Exchange). When he sold this business he never informed the other principles [sic] that he allowed the new entity to become First Nationwide Exchange INC. It would appear that he was trying to transfer the good will from Conduit Exchange, which had conducted business as First Nationwide Exchange, LLC for 4 years, to the new entity.

In no way is the business of the Complainant, who is a single person Intermediary, connected with the Nationwide Internet Intermediary project known as Firstnationwideexchange.com.

Respondent specifically denies that Atchison was hired to develop a website for Complainant, or that he was paid $8,000 or any other monies by Complainant. Respondent specifically denies that Atchison was paid to obtain the disputed domain name for another. Instead, Respondent obtained and maintained the disputed domain name for a project of its own. Respondent specifically denies that it told Complainant that it was going to sell the disputed domain name to a competitor of Complainant. Respondent also denies having ever been contacted by Complainant’s attorney.

FINDINGS

Overview

In short, Complainant contends that Respondent was hired by the predecessor of Complainant, LLC, to register the disputed domain name on behalf of LLC and to create content for a corresponding website, but that Respondent did not complete the project and now refuses to return the disputed domain name to Complainant despite demands from Complainant’s attorneys.

Respondent outlines a very different version of background circumstances leading up to this dispute. Respondent asserts that in September 2000 three partners, Atchison, Fitzgerald and Johnson, joined together to form a quite different, Internet business. At the time, Respondent alleges that Johnson had his own business named “Conduit Exchange.” Respondent states that business to be the direct successor of Complainant, but presumably Respondent in fact means the direct predecessor of Complainant. Respondent states that the three partners decided to register the disputed domain name for use in connection with their business.

Complainant now petitions the Panel for an order for transfer of the domain name from Respondent.

Preliminary Issue: Potentially Outside the Scope of the Policy

Based on the assertions of both parties, the Panel is clearly satisfied that this is not a case of cybersquatting, but rather a business dispute arising from which there is a question concerning the rightful ownership of the disputed domain name.

In this Panel’s opinion, the first matter which calls for consideration is whether the Complaint falls outside the scope of the Policy. In 1999, the World Intellectual Property Organisation (“WIPO”) produced a report in which it noted that good faith disputes between competing right holders or other competing legitimate interests over whether two names were misleadingly similar would not fall within the scope of the UDRP.

Previous panels have found that disputes between employers and employees are outside the scope of the Policy and should be decided in a court of law. For example, in Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000), the panel held that a dispute concerning an employee’s registration of a domain name in his own name and his subsequent refusal to transfer it to his employer raised issues of breach of contract and breach of fiduciary duty that were more appropriately resolved in court, not before a UDRP panel. Whilst the present facts involve a dispute between former business partners, the case could nonetheless be seen as analogous to the Latent Tech. Group, Inc. case.

The circumstances of Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001), are closer to the current dispute, and there the panel refused to transfer the domain name, stating that the Policy did 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.”

Additionally, in Discover New England v. Avanti Group, Inc., FA 123886 (Nat. Arb. Forum Nov. 6, 2002), the panel found that a dispute centering on a contractual question was outside the scope of the Policy.

In the case of Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005), the facts were that the complainant came to a verbal agreement with the respondent that the respondent would become its Australian distributor of sporting goods. The relationship broke down and the respondent refused to transfer the relevant domain name to the complainant before compensatory claims against the complainant were met. The panelist noted that the purpose of the Policy:

[I]s to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes.… …The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.

In that case the panel did however go on to apply the Policy but held that the complainant had not discharged the onus in relation to the second element of Paragraph 4(a); it had failed to make out a prima facie case that the respondent lacked rights or legitimate interests in the domain name.

Again, in Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 20, 2000), it was said:

This Panel well recognizes that its jurisdiction is limited to providing a remedy in cases of “the abusive registration of domain names,” or “Cybersquatting.” . . . Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.

In the present case, neither party has shown particular concern for the Policy or what it requires to be shown. The evidence on all material questions to be determined is lacking and the Panel considers that there would be ample weight in prior UDRP decisions to justify a ruling that the matter is properly one for another forum.

Nevertheless, the Panel is equally conscious that Respondent has not made that submission and that, ignoring for the moment the merit of its claims, Complainant has submitted that the disputed domain name is identical to its trademark, that Respondent has no rights in the domain name and that the domain name was registered in bad faith.

Unlike the cases discussed above, there is no evidence on record of a larger contractual dispute or of other causes of action. Accordingly, considering all the circumstances, the Panel decides that it has jurisdiction to determine the matter.

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.

Identical and/or Confusingly Similar to a Mark in which Complainant has Rights

Barring the addition of the gTLD, “.com,” which has been consistently held immaterial to the question of identicality or confusing similarity, the disputed domain name is identical to the trademark in which Complainant asserts rights. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000); see also Sporty's Farm L.L.C. v. Sportsman's Mkt., Inc., 202 F.3d 489 (2d Cir. 2000), cert. denied, 530 U.S. 1262 (2000) (“For consumers to buy things or gather information on the Internet, they need an easy way to find particular companies or brand names. The most common method of locating an unknown domain name is simply to type in the company name or logo with the suffix .com.”).

The Policy however requires Complainant to establish those rights. Here, Complainant has no trademark registration. That is of itself not fatal if the Panel can find common law rights which have been established through use and reputation. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 20, 2000).

Complainant asserts that it has established common law rights in its FIRST NATIONWIDE EXCHANGE mark as a trade name and service mark through continuous and extensive use of the mark. Complainant contends that it has established common law rights in its mark by providing real estate exchange services under the mark since as early as March 8, 2001.

However, aside from that bald assertion, the Panel notes Complainant has not provided any proof whatsoever of common law rights dating from March 2001 or from any other time. It has not provided a single piece of evidence directed towards that claim. The Panel is therefore reminded of the case of Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) where the panel said that:

Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity. . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.

Moreover, Respondent has both denied that Complainant has rights in the claimed trademark and has provided an utterly contrary account of both its genesis and of the relationship between the parties.

The Panel therefore finds that Complainant lacks rights in the FIRST NATIONWIDE EXCHANGE mark under Policy ¶ 4(a)(i), and so fails to establish that element of the Policy.

In consequence, the Panel finds that it need not analyze the additional elements of the Policy as outlined in Policy ¶¶ 4(a)(ii) and (iii). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also 01059 GmbH v. VARTEX Media Mktg. GmbH/Stefan Heisig, D2004-0541 (WIPO Sept. 10, 2004) (holding that if the complainant does not satisfy Policy ¶ 4(a)(i) by showing it has rights in a mark, the panel need not consider whether the respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) or whether it registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii)).

DECISION

Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.