Battle Ground Healing Arts v. Jon and Diana Davidson / Battleground Apothecary and Natural Goods
Claim Number: FA1912001875226
Complainant is Battle Ground Healing Arts (“Complainant”), represented by Dr Jillian (jill) E. Stansbury of Battle Ground Healing Arts, US. Respondent is Jon and Diana Davidson / Battleground Apothecary and Natural Goods (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bghealingarts.com>, registered with GoDaddy.com, LLC.
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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 14, 2019; the Forum received payment on December 14, 2019.
On December 16, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bghealingarts.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 December 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 13, 2020 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 email@example.com. Also on December 18, 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 January 13, 2020.
Additional Submissions were received on January 20, 21, 24, and 27, 2020 – and were considered by the Panel.
On January 17, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda, Esq., 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.
Complainant is a medical clinic and apothecary that specializes in natural or alternative medicine. Complainant has rights in the BATTLE GROUND HEALING ARTS mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,063,917, registered Oct. 16, 2016). See. Compl. Annex 1B. In that registration Complainant disclaimed the exclusive right to use “Healing Arts” apart from the mark as shown. Additionally, Complainant claims rights in the BG HEALING ARTS mark through its registration with the State of Washington, as well as common law rights in the BG HEALING ARTS mark, dating to a state registration in 2016. Complainant contends Respondent’s <bghealingarts.com> domain name should be transferred as the disputed domain name includes Complainant’s BG HEALING ARTS mark.
Complainant claims further that Respondents have no rights or legitimate interests in the <bghealingarts.com> domain name as Respondent is known by the disputed domain name. Respondents’ use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondents use the disputed domain to promote Respondents’ own apothecary business.
Respondents registered and used the <bghealingarts.com> domain name in bad faith, as Respondents are attempting to attract Internet users seeking Complainant for financial gain and to disrupt Complainant’s business. Additionally, Respondents have harassed Complainant outside of this dispute.
Respondents Jon and Diana Davidson (Respondent), registered the <bghealingarts.com> domain name on November 16, 2011. Co-Respondent Diana Davidson is a former employee of Complainant. The disputed domain name registration predates Complainant’s BATTLE GROUND HEALING ARTS federal trademark registration, BG HEALING ARTS federal trademark application, and BG HEALING ARTS state registration. The <bghealingarts.com> domain name was registered to benefit business owners that resided in the same building as Complainant.
Respondents claim rights and legitimate interest in the <bghealingarts.com> domain name, as the domain name is being used as a business website for Respondents and other related businesses.
Respondents claim they did not register the <bghealingarts.com> domain name in bad faith, as there was no intent to sell the disputed domain name. Respondents have gone to considerable length to disassociate themselves with the Complainant.
The Panel finds this is a business and/or contractual dispute that falls outside the scope of the UDRP.
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."
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; and
(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.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
Complainant has a federal trademark registration for BATTLE GROUND HEALING ARTS, with “HEALING ARTS” disclaimed, dating to 2016 and a pending federal trademark application for BG HEALING ARTS, filed on October 18, 2019.
Respondent registered the disputed domain name on November 16, 2011. Complainant became aware of the domain registration shortly thereafter and provided input to Respondent regarding the content of the website. Complainant claims that Respondent was angered by Complainant’s suggestions for the website and Complainant further contends Respondent directly competes with Complainant using the disputed domain name.
Respondent argues that it was a former employee and then tenant of the Complainant and the disputed domain name was originally registered to benefit the Complainant, Respondent and other businesses located within the Complainant’s building. Respondent further argues that attempts have been made to negotiate the use of the disputed domain name.
There are numerous arguments from both parties about their various business and personal grievances against the other, and very little discussion or proof regarding trademark rights to BG HEALING ARTS associated with the domain in question. There is no proof of a relevant trademark registration that predates the domain registration. In this instance, the Panel finds that this is a business and/or contractual dispute between two parties 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, both parties make substantial factual and legal claims that have nothing to do with trademark rights or UDRP policy. 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.
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 other non-trademark business matters, and thus falls outside the scope of the UDRP. As such, 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).
Accordingly, it is Ordered that the Complaint is dismissed, without prejudice, and the <bghealingarts.com> domain name REMAIN WITH Respondent.
David P. Miranda, Esq., Panelist
Dated: January 29, 2020
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