Thomas E. Wright v. Oliver GRaham
Claim Number: FA1804001783404
Complainant is Thomas E. Wright (“Complainant”), represented by William R. Lovin, Texas, USA. Respondent is Oliver GRaham (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <twrightassociates.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Vali Sakellarides as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 24, 2018; the Forum received payment on April 24, 2018.
On April 25, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <twrightassociates.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 16, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@twrightassociates.com. Also on April 26, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 2, 2018.
On May 08, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Vali Sakellarides as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant sells insurance and insurance related products from its offices in Palestine, Texas and has done so using the marks since on or about March 25, 2009. Complainant asserts common law rights in the THOMAS WRIGHT & ASSOCIATES and TWRIGHTASSOCIATES.COM marks. See Compl. Annexes 5-8. Respondent’s <twrightassociates.com> domain name is identical or confusingly similar to Complainant’s mark.
Respondent has no rights or legitimate interests in the <twrightassociates.com> domain name. Respondent is a former employee that fraudulently altered the domain registration to show Respondent as the Registrant, Administrative, and Technical Contacts for the disputed domain name. See Compl. Annexes 12.2 & 12.3.
Respondent registered and uses the <twrightassociates.com> domain name in bad faith. Respondent intentionally attracts Internet users otherwise seeking Complainant to Respondent’s third-party website, which offers services in direct competition with Complainant’s insurance business for Respondent’s commercial gain. See Compl. Annex 13.
B. Respondent
Respondent asserts Respondent, known under the business name “Iron Horse,” owns the <twrightassociates.com> domain name. Respondent merged its business with Complainant to form a new agency and thus has an ownership interest in the disputed domain name.
Complainant is Thomas E. Wright, sole owner of the company named Thomas Wright & Associates LLC, which was registered in the State of Texas on December 26, 2012, as shown in Annex 11. The company sells insurance and insurance related products from its offices in Palestine, Texas.
Registrant is Oliver Graham, resident in Texas.
Complainant provides evidence that the domain name registration <twrightassociates.com> was first registered with Registrar GoDaddyCom to Complainant, Thomas Right, on or about March 25, 2009 (Annex 12.1).
Complainant asserts that said domain name registration was fraudulently altered on March 27, 2018, to show Oliver Graham as new Registrant, Administrative and Technical Contact (Annex 12.3).
Complainant asserts that he has rights in common law trademarks THOMAS WRIGHT & ASSOCIATES and TWRIGHTASSOCIATES.COM.
Complainant asserts that Respondent, who is a contract repair and maintenance specialist, was hired in May 2017 to maintain Complainant’s information technology infrastructure, including the website <twrightassociates.com>. Complainant submitted Annex 3, which is two emails from Respondent to Complainant on October 9, 2017 and on July 18, 2017, and Annex 10, which is Invoices for professional IT services issued by “On-Site Computer Solutions” to be paid by Complainant’s company “Thomas Wright Insurance”.
Complainant asserts that it has no “monetary agreements” referred to in an email from Respondent to Complainant on December 21, 2017 shown in Annex 9, and that no agreement was made with Respondent other than the invoices for Respondent’s service shown in Annex 10 and that denial of “access to the admin side” of the domain name records stated in the email of Annex 9 was not within the scope of any contractual or agreed rights between Complainant and Respondent.
Complainant asserts that by using the domain name, Respondent intentionally attracted for commercial gain, Internet users to Respondent’s web site <www.iron-horsesve.com> by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site of a product or service on the Respondent’s web site or location. Annex 13 submitted by Complainant shows the products offered by Respondent’s web site, which amongst others includes ‘insurance’. Complainant asserts that there are sold in competition with Complainant’s business.
Respondent contends that it entered into a contractual agreement with Complainant where Complainant agreed to sell the domain name to Respondent. See Resp. Annex 1. Respondent contends that its company, named Iron Horse, owns the domain, after merging with Complainant’s company. Respondent submits a Shareholder’s Agreement, signed in January 2017 by Complainant and two other shareholders of Iron Horse Risk and Insurance Services LLC, in which it is provided in paragraph 8 that “Assets brought in and transferred are owned by the Iron Horse shall include and consist of all computers; all web site and domains, initial and subsequent, and any and all such business personal property including computer data.”
Respondent avers that Complainant has engaged in fraudulent business transactions, and provides evidence of such transactions in the Response. See Resp. Annexes 2-9.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
Respondent contends that it entered into a contractual agreement with Complainant where Complainant agreed to sell the domain name to Respondent. See Resp. Annex 1. Respondent avers that Complainant has engaged in fraudulent business transactions, and provides evidence of such transactions in the Response. See Resp. Annexes 2-9.
Complainant contends that Respondent was formerly hired by Complainant for services, which Respondent performed and Complainant paid for. Complainant claims that Respondent then hijacked the domain name from Complainant without permission.
In this instance, the Panel finds that this is a business and/or contractual dispute between two companies that falls outside the scope of the UDRP. In Love v. Barnett, FA 944826 (Forum May 14, 2007), the panel stated:
A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.
In Love, the panel was concerned with possible causes of action for breach of contract. In this case, however, Respondent points out that these causes of action are currently active cases that are pending with the courts. According to the panel in Love, complex cases such as the one presented here may be better decided by the courts than by a UDRP panel:
When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.
The panel in Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning:
[The Policy’s purpose is 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.
Further, In Bracemart, LLC v. Drew Lima, the Panel declined to make any findings under the UDRP when there was evidence that both the complainant and the respondent at some point acted in an official capacity in the management of the company, and that “[b]ased upon this reasoning, the Panel concludes that the instant dispute relates to contractual interpretation and/or whether the relationship between Complainant and Respondent was one of employer-employee or one of partnership, which determination falls outside the scope of the Policy.” See FA 1494699 (Forum Mar. 28, 2013). Because the question of whether the complainant or the respondent in that case had rights in the domain name relied heavily on the corporate structure of the companies involved, the Panel could not resolve the dispute under the UDRP. See id.
Based upon the reasoning outlined in the aforementioned cases and the record, the Panel concludes that the instant dispute contains a question of contractual interpretation, and thus falls outside the scope of the UDRP. By making such a finding, the Panel dismisses the Complaint. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); see also Frazier Winery LLC v. Hernandez, FA 841081 (Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
The Panel finds that this matter is outside the scope of the ICANN Policy because it involves a business dispute between two parties, therefore the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <twrightassociates.com> domain name REMAIN WITH Respondent and that the case is.
Vali Sakellarides, Panelist
Dated: May 21, 2018
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