Redox Power Systems, LLC v. Paul Faulkner
Claim Number: FA1504001615480
Complainant is Redox Power Systems, LLC (“Complainant”), Maryland, USA. Respondent is Paul Faulkner (“Respondent”), represented by David M. Wyand, Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <redoxpowersystems.com> and <powerserg.com>, registered with BigRock Solutions Ltd and GoDaddy.com, 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, Dennis A. Foster, and Debrett Lyons as Panelists.
Complainant submitted a Complaint to the Forum electronically on April 20, 2015; the Forum received payment on April 20, 2015.
On April 21, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <redoxpowersystems.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 April 22, 2015, BigRock Solutions Ltd confirmed by e-mail to the Forum that the <powerserg.com> domain name is registered with BigRock Solutions Ltd and that Respondent is the current registrant of the name. BigRock Solutions Ltd has verified that Respondent is bound by the BigRock Solutions Ltd 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 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 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 and firstname.lastname@example.org. Also on April 24, 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 May 12, 2015.
Complainant’s Additional Submission was received and determined to be complete on May 17, 2015.
Complainant’s Additional Submission was received and determined to be complete on May 26, 2015.
On May 22, 2015, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Sandra J. Franklin, Dennis A. Foster, and Debrett Lyons 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
1. Respondent’s <redoxpowersystems.com> contains Complainant’s business name and Respondent’s <powerserg.com> domain name contains a future product of Complainant’s.
2. Respondent registered the <redoxpowersystems.com> and <powerserg.com> domain names on behalf of Complainant.
1. Complainant does not have trademark rights in REDOX POWER SYSTEMS or POWERSERG.
2. Respondent registered the <redoxpowersystems.com> and <powerserg.com> domain names under direction from members of Complainant’s Board of Directors.
3. There is a pending court case concerning the ownership and control of Redox Power Systems, Inc., including the <redoxpowersystems.com> and <powerserg.com> domain names, and this is not a proper case for UDRP determination.
C. Complainant’s Additional Submission
1. Respondent is not a party to the pending court case. The Panel can determine the ownership of the disputed domain names even when there is a pending court case.
2. Complainant has common law rights in REDOX POWER SYSTEMS and POWERSERG.
3. Respondent originally registered the <redoxpowersystems.com> and <powerserg.com> domain names in good faith, but is refusing to relinquish them in bad faith.
4. The bulk of Complainant’s Additional Submission is a discussion of corporate matters that do not bear directly on the <redoxpowersystems.com> and <powerserg.com> domain names, and a discussion of cited UDRP decisions.
D. Respondent’s Additional Submission
1. Respondent reiterates that the UDRP is not designed to handle complex business disputes of this nature, and distinguishes cases Complainant cited on this point.
2. Complainant has failed to establish the three required elements under the UDRP.
Respondent registered the <redoxpowersystems.com> and <powerserg.com> domain names under direction of the Board of Directors of Complainant, which includes Respondent’s brother-in-law, during the early stages of the company in 2012. Since then, a complex business dispute has arisen among the owners and directors of the company, resulting in more than one court case. The issues in dispute include the ownership and control of Redox Power Systems, LLC, and the ownership and control of the disputed domain names in this case.
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 alleges that this is a business dispute that falls outside the scope of the UDRP. The Panel notes that there is ongoing litigation involving the owners and/or Directors of Complainant. See Citrin, et al. v. Buscher, et al., Case No. 13-C-14-101068 DJ (Cir. Ct., Howard County, MD). Although the litigation does not name Respondent, it is clear from the submissions made by both Complainant and Respondent, that Respondent is an integral part of the dispute in litigation. The nature of the dispute makes it unclear as to who can act on behalf of Redox Power Systems, LLC. There are many facts in dispute that bear upon the ownership of the disputed domain names, facts that warrant full investigation in the court system. Indeed, that process is already underway, where appropriate legal precedent can be applied, including precedent beyond 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. In this case, there is already at least one active case pending with the courts.
The panel in Love further stated:
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.
In this case, one of the fundamental factual disputes is who has the right to control Redox Power Systems, LLC, and, consequently, who has the right to control the disputed domain names. Unlike prior UDRP cases cited by Complainant, this is not a case where ownership of the disputed domain name can easily be separated from the related court proceeding.
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.
The Panel similarly finds that this case involves many other legal issues that are already under consideration in a court, issues that go well beyond the scope of the Policy.
The panel in Bracemart, LLC v. Drew Lima, FA 1494699 (Nat. Arb. Forum Mar. 28, 2013) 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.” 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, and the panel could not resolve the dispute under the UDRP. Likewise in this case, there is evidence that Complainant and Respondent both acted in an official capacity on behalf of the company, and it is unclear who has the right to do so now.
Additional panels have come to the same conclusion. See 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); 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 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.”)
Based upon the foregoing, the Panel finds that this case falls outside the scope of the UDRP and dismisses the Complaint.
Accordingly, it is Ordered that the Complaint be dismissed.
Sandra J. Franklin, Panelist and Chairperson
Dennis A. Foster, Panelist
Debrett Lyons, Panelist
Dated: June 1, 2015
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