Paul Wagner, Autopos Marine Inc. dba Autonav v. Gulamani, Shafiq
Claim Number: FA1503001609846
Complainant is Paul Wagner, Autopos Marine Inc. dba Autonav (“Complainant”), Canada. Respondent is Gulamani, Shafiq (“Respondent”), represented by Steven L. Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <autonav.com>, registered with Network Solutions, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or 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 March 16, 2015; the Forum received payment on March 16, 2015.
On March 17, 2015, Network Solutions, LLC confirmed by e-mail to the Forum that the <autonav.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. 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 March 20, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2015 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 March 20, 2015, 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 April 6, 2015.
Complainant submitted a timely Additional Submission, which was received on April 10, 2015.
Respondent submitted a timely Additional Submission, which was received on April 15, 2015.
On April 21, 2015, 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.
1. Respondent is using Complainant’s AUTONAV mark in its <autonav.com> domain name.
2. Respondent does not have any rights or legitimate interests in the <autonav.com> domain name.
3. Respondent registered and uses the <autonav.com> domain name in bad faith.
1. Complainant does not own the AUTONAV mark because it is descriptive. Respondent purchased the <autonav.com> domain name in an Asset Purchase Agreement.
2. Respondent does have legitimate interests in the <autonav.com> domain name.
3. Respondent did not register the <autonav.com> domain name in bad faith, as the registration pre-dates Complainant’s trademark registrations.
4. Complainant filed this UDRP case in an attempt to reverse hijack the <autonav.com> domain name.
C. Complainant’s Additional Submission
1. Respondent did not purchase the <autonav.com> domain name in the Asset Purchase Agreement because it was not part of the “Business” sold; it was part of the “Commercial Business” of Autonav Marine Systems, Inc.
2. Respondent is not selling products identical to Complainant’s products and does not need to use the <autonav.com> domain name.
3. Respondent’s use of the <autonav.com> domain name disrupts Complainant’s business.
Complainant Paul Wagner is the owner of two registrations for the AUTONAV mark, one with the United States Patent and Trademark Office (Reg. No. 4,127,278, first use in commerce 2004, filed Sept. 24, 2009, registered Apr. 17, 2012), and one with the Canadian Intellectual Property Office (Reg. No. TMA654,899, registered Dec. 13, 2005.)
Respondent originally registered the <autonav.com> domain name as an officer of Autonav Marine Systems, Inc.
There is an Asset Purchase Agreement dated November 1, 2002, between 4111389 Canada Inc. and Autonav Marine Systems Inc. (the “Agreement”), the terms of which both Complainant and Respondent cite as determining rights in the <autonav.com> domain name. The Panel notes that Complainant is Paul Wagner, Autopos Marine Inc. dba Autonav, not a party to the Agreement, and that Respondent Shafiq Gulamani signed the Agreement on behalf of both parties.
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
Respondent argues that the disputed domain name was purchased from AutoNav Marine Systems, Inc. under the terms of an Asset Purchase Agreement dated November 1, 2002, between 4111389 Canada Inc. and Autonav Marine Systems Inc. (the “Agreement”). Respondent quotes Section 4.4.4 of the Agreement, which states that Respondent is purchasing “all of the assets . . . and all of the other properties and rights of every type and description, real, personal and mixed, tangible and intangible, which are necessary or appropriate to the conduct of the Business as presently conducted, and for Buyer to conduct the Business in the same manner.”
Complainant argues that the disputed domain name was not part of the Agreement, because Respondent purchased the “Business” of the seller, namely an Autopilot, Yacht Navigational Systems and LCD/PC systems, but did not purchase the “Commercial Business,” which consisted of other assets including the disputed domain name.
Neither party explains the exact relationship between the three corporate parties named and the individuals Paul Wagner and Shafiq Gulamani. Nonetheless, they both rely on the Agreement as determining rights to the disputed domain name. Therefore, the Panel finds that this is a business and/or contractual dispute between various parties that demands significant investigation and falls outside the scope of the UDRP. In Love v. Barnett, FA 944826 (Nat. Arb. 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, however, the underlying dispute appears to be the subject of an active court case. As stated in Love, complex cases are 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.
In Bracemart, LLC v. Drew Lima, FA 1494699 (Nat. Arb. Forum Mar. 28, 2013), the Panel also 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.” In this case, there are also questions about the parties and their roles in the Agreement cited and in the underlying businesses.
Thus, the Panel reiterates that this dispute involves business and contractual matters that fall outside the scope of the UDRP, and therefore dismisses the Complaint. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. 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 (Nat. Arb. 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 (Nat. Arb. 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, the Complaint is dismissed.
Sandra J, Franklin, Panelist
Dated: April 28, 2015
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