Albert R. Okura v. LOCOMPANY
Claim Number: FA1904001839083
Complainant is Albert R. Okura (“Complainant”), represented by Aaron Okura, California, USA. Respondent is LOCOMPANY (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <juanpollo.com> and <albertokura.com>, registered with Network Solutions, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 16, 2019; the Forum received payment on April 16, 2019.
On April 16, 2019, Network Solutions, LLC confirmed by e-mail to the Forum that the <juanpollo.com> and <albertokura.com> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 13, 2019 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@juanpollo.com, postmaster@albertokura.com. Also on April 17, 2019, 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 13, 2019.
A timely Additional Submission was received from Complainant and determined to be complete on May 14, 2019.
On May 20, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <juanpollo.com> and <albertokura.com> domain names are confusingly similar to Complainant’s JUAN POLLO mark, owned by Albert Okura.
2. Respondent does not have any rights or legitimate interests in the <juanpollo.com> and <albertokura.com> domain names.
3. Respondent registered and uses the <juanpollo.com> and <albertokura.com> domain names in bad faith.
B. Respondent
1. Respondent does not dispute Complainant’s ownership of the JUAN POLLO mark.
2. Respondent has rights or legitimate interests in the <juanpollo.com> and <albertokura.com> domain names because he created the domain names and some of the content at <juanpollo.com>, and was not paid.
C. In its Additional Submission, Complainant reiterates that Respondent has no rights in the <juanpollo.com> and <albertokura.com> domain names because he was paid for the work he did and offers no proof that he made payments to Network Solutions for the domain names.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
The Panel has discretion to determine whether or not it has jurisdiction over this dispute. See Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 14, 2000) (“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.”)
Respondent argues that it was not paid for services performed in connection with the disputed domain names, and is holding the disputed domain names until Complainant pays for Respondent’s services. Both parties make a number of conflicting allegations regarding the nature of Respondent’s employment by Complainant and whether or not full payment was made to Respondent for services rendered. In this case, there may be one or more causes of action outside the realm of trademark law and the UDRP. The UDRP was not designed to adjudicate business disputes.
Therefore, based on all of the pleadings in this case, the Panel finds that this is a business and/or contractual dispute between the parties that requires analysis of the facts surrounding the business relationship and events between the parties and, as such, falls outside the scope of the UDRP. The Panel thus finds that it does not have proper jurisdiction in this case, and dismisses this Complaint. See Love v. Barnett, FA 944826 (Forum May 14, 2007), where 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.”
The panel in Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with the following 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 (Mar. 28, 2013).
See also 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).
This Complaint is dismissed without prejudice.
Sandra J. Franklin, Panelist
Dated: May 22, 2019
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