Julie Stav and Julie Stav, Inc. v. Shlomo Nir / JST ONLINE SOLUTIONS
Claim Number: FA2007001904601
Complainant is Julie Stav and Julie Stav, Inc. (“Complainant”), represented by Gregg A. Martin, California, United States. Respondent is Shlomo Nir / JST ONLINE SOLUTIONS (“Respondent”), represented by Steven Weinberg of HOLMES WEINBERG, PC, California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <juliestav.com>, registered with CloudFlare, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelists in this proceeding.
Ms. Lynda M. Braun, Mr. Paul M. DeCicco, Darryl C. Wilson (Chair), as Panelists.
Complainant submitted a Complaint to the Forum electronically on July 16, 2020; the Forum received payment on July 16, 2020.
On July 17, 2020, CloudFlare, Inc. confirmed by e-mail to the Forum that the <juliestav.com> domain name is registered with CloudFlare, Inc. and that Respondent is the current registrant of the name. CloudFlare, Inc. has verified that Respondent is bound by the CloudFlare, Inc. 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 July 27, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 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 postmaster@juliestav.com. Also on July 27, 2020, 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 September 10, 2020.
On September 18, 2020 pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Ms. Lynda M. Braun, Mr. Paul M. DeCicco, Darryl C. Wilson (Chair), as Panelists.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: Business/Contractual Dispute Outside the Scope of the UDRP
Respondent argues that a UDRP proceeding is not the proper proceeding to handle this dispute as it is a business dispute between the two parties. Respondent also states that the Complainant’s complaint is misleading and fails to mention that Complainant had already filed a civil action in the Los Angeles Superior Court against Respondent seeking a court order that Complainant is the owner of the <juliestav.com> domain name.
The Panel here finds that the instant proceeding 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. Here Respondent points out that these causes of action are currently active claims that are pending with the courts. As such the Panel here finds the case presented here is better decided by the courts in the pending litigation.
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 trademark 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).
Based upon the above cases and the record, the Panel concludes that the instant dispute contains issues of contractual interpretation and business relations which are matters outside the scope of the UDRP. The Panel therefore concludes that the Complaint should be dismissed. 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).
A. Complainant
Complainant is in the business of giving financial advice through books, seminars, classes, and memberships. Complainant has common law rights in the JULIE STAV mark due to its long-standing use of the mark in commerce. Respondent’s <juliestav.com> domain name is identical to Complainant’s JULIE STAV mark. Respondent incorporates the mark in its entirety and adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <juliestav.com> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the mark in any way. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent engages in unauthorized commercial sale of goods and services under Complainant’s JULIE STAV mark.
Respondent registered and used the <juliestav.com> domain name in bad faith as the disputed domain name was transferred without Complainant’s knowledge or consent. Respondent uses the disputed domain name to attract internet users for commercial gain by offering unauthorized commercial products associated with Complainant’s JULIE STAV mark.
B. Respondent
Complainant lacks rights in the JULIE STAV mark as they have not registered the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent does have rights and legitimate interests in the <juliestav.com> domain name as Respondent is the owner of the disputed domain name and use it to purport their legitimate business under the “Julie Stav” name.
Respondent did not register or use the <juliestav.com> domain name in bad faith as Respondent gains rights to the business in a legitimate matter and use of the domain name is done to purport its business.
Complainant is Julie Stav and Julie Stav, Inc. (“Complainant”) of Los Angeles, CA, USA. Complainant alleges ownership rights in the mark JULIE STAV based on common law usage beginning in or about 2000. Complaint alleges that her company, Julie Stav, Inc., was formed in California in May 2000, and that the company owns all intellectual property, including the disputed domain name <juliestav.com> and related content and rights. Complainant indicates that in or around 2016 negotiations occurred between Complainant and Respondents which led to a later contractual agreement between both that involved the disputed domain name and all attendant materials, rights, and interests. Complainant claims that the disputed domain name remained Complainant’s property after the contract was signed. Complainant outlines various disputes that purportedly arose between the parties which led to an exchange of correspondence between their respective counsel disputing ownership of the business assets.
Respondent is Shlomo Nir / JST ONLINE SOLUTIONS (“Respondent”), of Woodland Hills, CA, USA. Respondent asserts that Respondent purchased Complainant’s business, including the disputed domain name, in May 2018 and Complainant has no rights in the domain name. Respondent notes further the lack of any registrations for the mark JULIE STAV.
Respondent states the agreement referred to and relied upon by Complainant is a fake that was not signed by the parties. Further, the purchase of Complainant’s business was not memorialized despite continued requests by Respondent because the Complainant and Respondent have family ties. Respondent also indicated that Complainant has filed a civil lawsuit in California Superior Court involving various issues including ownership of the disputed domain name in the instant case.
As stated above, the conflicting contentions by the parties regarding their business dealings supports the conclusion that the instant dispute contains issues of contractual interpretation and business relations which are matters outside the scope of the UDRP. The Panel therefore concludes that the Complaint should be dismissed.
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.
The Panel finds that this matter is outside the scope of the UDRP.
The Panel finds that this matter is outside the scope of the UDRP.
The Panel finds that this matter is outside the scope of the UDRP.
As the Panel has found that this matter is outside the scope of the UDRP the Panel concludes that the Complaint shall be DISMISSED.
Ms. Lynda M. Braun, Mr. Paul M. DeCicco, Darryl C. Wilson (Chair), Panelists.
Dated: September 29, 2020
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