DECISION

Lazzara Custom Yachts, LLC v. Richard Lazzara

Claim Number: FA2011001919965

PARTIES

Complainant is Lazzara Custom Yachts, LLC (“Complainant”), represented by Carl J. Spagnuolo of McHale & Slavin, P.A., Florida, USA. Respondent is Richard Lazzara (“Respondent”), Florida, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lazzara.com>, registered with GoDaddy.com, LLC.

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 9, 2020; the Forum received payment on November 9, 2020.

On November 10, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lazzara.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 November 11, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@lazzara.com. Also on November 11, 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.

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

On December 7, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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. 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A. Complainant

1. In the early 1990s, Respondent founded Lazzara Yacht Corporation. By 2012, Lazzara Yacht Corporation fell on financial difficulties and defaulted on a large credit line causing creditors ReVal NPL and ReVal Financial Properties, LLC to foreclose on the entirety of the assets of Lazzara Yacht Corporation including (amongst other things), all intellectual property, trademarks and domain names. Effective November 7, 2014, ReVal NPL and ReVal Properties sold the LAZZARA mark, and other assets, to GB Asset Investments, LLC. On April 17, 2015 GB Asset Investments, LLC sold the assets it had purchased, including the LAZZARA trademark and other intellectual property, (including domain names) to Complainant. Complainant has rights in the LAZZARA mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,064,907, registered March 7, 2006). See Compl. Annex 1. Respondent’s <lazzara.com> is identical or confusingly similar to Complainant’s LAZZARA mark as it is comprised entirely of Complainant’s mark.

2. Respondent lacks rights or legitimate interests in the <lazzara.com> domain name. Respondent is not associated with Complainant and Respondent is maintaining ownership of the disputed domain name merely to deprive Complainant of its rightful use of the disputed domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent fails to make active use of the disputed domain name.

3. Respondent uses the <lazzara.com> domain name in bad faith. Respondent only maintains ownership of the disputed domain name to prevent Complainant from doing so. Respondent also fails to make any use of the disputed domain name.

B. Respondent

1. Respondent failed to submit a response in this proceeding.

PRELIMINARY ISSUE: BUSINESS/CONTRACTUAL DISPUTE OUTSIDE THE SCOPE OF THE UDRP

Complainant asserts it is entitled to transfer of the <lazzara.com> domain name as a result of a series of asset sales and a U.S. District Court order transferring all intellectual property from Lazzara Yacht Corporation to Complainant.

Respondent did not submit a response in this proceeding. Nevertheless, 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.

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 trademarks. 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). 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. Once the Panel makes such a finding, the Panel may dismiss 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).

FINDINGS

Based upon the foregoing, and the finding that this is a question of contractual interpretation that falls outside the scope of the UDRP, the complaint is hereby dismissed.

DECISION

The Complaint is dismissed. Consequently, the requested relief is DENIED.

Accordingly, it is Ordered that the <lazzara.com> domain name REMAIN with Respondent.

John J. Upchurch, Panelist

Dated: December 21, 2020