Paul Wyatt v. Gotaweb WhoisGaurd a/k/a
WhoisGuard Protection a/k/a Gotaweb Admin a/k/a Whois Guard
Claim Number: FA0506000506612
PARTIES
Complainant
is Paul Wyatt (“Complainant”),
represented by Stephen L. Anderson, of Anderson & Associates,
27349 Jefferson Avenue, Suite 211, Temecula, CA 92590. Respondent is Gotaweb WhoisGaurd a/k/a WhoisGuard Protection a/k/a Gotaweb Admin a/k/a Whois Guard (“Respondent”),
represented by Eric Garner,
1792 Tribute Rd., Suite 450, Sacramento, CA 95815.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <paulwyatt.net>, <paulwyattcellar.com>, <paulwyattcellar.net>, <paulwyattcellars.com>, <paulwyattcellars.net>, <paulwyattdesign.com>, <paulwyattdesign.net>, <paulwyattdesigns.com>, <paulwyattdesigns.net>, <paulwyattexclusivecellar.com>, <paulwyattexclusivecellars.com>, <cellarpaulwyatt.com>, <cellarspaulwyatt.com>, <cellarspaulwyatt.net>, <finewinecellar.net>, <finewinerack.net>, <finewineracks.net>, <finewinerackandcellarcompany.com>, <finewinerackandcellarcompany.net>, and <cellarpaulwyatt.net>, registered with Direct Information Pvt. Ltd., d/b/a Directi.com.
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.
Paul
M. DeCicco as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
29, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 30, 2005.
On
July 1, 2005, Direct Information Pvt. Ltd., d/b/a Directi.com confirmed by
e-mail to the National Arbitration Forum that the domain names <paulwyatt.net>, <paulwyattcellar.com>, <paulwyattcellar.net>, <paulwyattcellars.com>, <paulwyattcellars.net>, <paulwyattdesign.com>, <paulwyattdesign.net>, <paulwyattdesigns.com>, <paulwyattdesigns.net>, <paulwyattexclusivecellar.com>, <paulwyattexclusivecellars.com>, <cellarpaulwyatt.com>, <cellarspaulwyatt.com>, <finewinecellar.net>, <finewinerack.net>, <finewineracks.net>, <finewinerackandcellarcompany.com>, <finewinerackandcellarcompany.net>, and <cellarspaulwyatt.net> are registered with Direct Information
Pvt. Ltd., d/b/a Directi.com and that the Respondent is the current registrant
of the names. On July 8, 2005, Direct
Information Pvt. Ltd., d/b/a Directi.com confirmed by e-mail to the National
Arbitration Forum that the <cellarpaulwyatt.net>
domain name is registered with Direct Information Pvt. Ltd., d/b/a Directi.com
and that the Respondent is the current registrant of the name. Direct Information Pvt. Ltd., d/b/a
Directi.com has verified that Respondent is bound by the Direct Information
Pvt. Ltd., d/b/a Directi.com registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
July 11, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 1,
2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@paulwyatt.net, postmaster@paulwyattcellar.com, postmaster@paulwyattcellar.net,
postmaster@paulwyattcellars.com, postmaster@paulwyattcellars.net, postmaster@paulwyattdesign.com,
postmaster@paulwyattdesign.net, postmaster@paulwyattdesigns.com, postmaster@paulwyattdesigns.net,
postmaster@paulwyattexclusivecellar.com, postmaster@paulwyattexclusivecellars.com,
postmaster@cellarpaulwyatt.com, postmaster@cellarspaulwyatt.com, postmaster@cellarspaulwyatt.net,
postmaster@finewinecellar.net, postmaster@finewinerack.net, postmaster@finewineracks.net,
postmaster@finewinerackandcellarcompany.com, postmaster@finewinerackandcellarcompany.net,
and postmaster@cellarpaulwyatt.net by e-mail.
A
timely Response was received and determined to be complete on August 15, 2005.
On August 24, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Paul M. DeCicco as Panelist.
Complainant
submitted a timely Additional Submission in reply to the Response. Respondent
submitted an additional response in sur-reply to Complainant’s reply on or
about August 29, 2005.
A
Second Additional Submission was submitted by Complainant on or about August
31, 2005 and was determined to be deficient.
Likewise a Second Additional Submission was submitted by Respondent on
September 6, 2005 and determined to be deficient. The Panel chooses not to
consider either of these Additional Submissions in its Decision.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
contends in significant part as follows:
Complainant
has continuously used his given name, “Paul Wyatt,” as a common law trademark
and has also used the trade name “Fine Wine Rack & Cellar Co.” in
connection with the design and installation of custom wine cellars, for private
collectors, hotels, restaurants and other clients.
On
or about June 27, 1995, Mr. Wyatt’s company, then known as Fine Wine Rack &
Cellar Co. registered the <fine-wine.com> domain name in the name of Fine
Wine Rack & Cellar Co. Beginning at least as early as November 4, 1996, Mr.
Wyatt’s company used <fine-wine.com> to promote the design and fabrication
of custom wine cellars, racks and wine storage environments.
On
or about September 20, 1999, Complainant’s company registered the non-subject
domain name, <paulwyatt.com>.
From some time later that year through 2003, Mr. Wyatt’s company used such
URL to host an Internet website promoting the services of Paul Wyatt and Fine
Wine Rack & Cellar Co.
Beginning
on or about September 21, 2001, Mr. Wyatt’s company registered and thereafter
used the non-subject domain name, <finewinerack.com>, to promote its
goods and services. Complainant has never authorized Respondent or any other
person to register or use the subject domain names, and has never licensed,
assigned or otherwise granted the right to use his name “Paul Wyatt” or the
name “Fine Wine Rack & Cellar Co.” or any other related trade names,
trademarks, copyrights, or associated goodwill to anyone.
In
the fall of 2003, Mr. Wyatt’s company encountered a series of business
difficulties. Mr. Wyatt closed his manufacturing operations and sold the physical
assets owned by Fine Wine Rack & Cellar Co., a California corporation, to
Richard Silcock and Stephen A. Ward. Pursuant to a written Memorandum of
Understanding and confirmed by the associated Receipt For Goods Sold, however,
such transaction consisted only of equipment, inventory and works in progress,
as were then owned by the corporation. Nowhere in such document or in any other
agreement did Mr. Wyatt ever grant, license or sell the right to use his
personal name or the name of the Fine Wine Rack & Cellar Co. nor any of Mr.
Wyatt’s trade or service marks, domain names, copyrights, or right of
endorsement, particularly including Internet content, to anyone, particularly
including Respondent herein.
Notwithstanding
Mr. Wyatt’s exclusive rights, upon information and belief, Respondent, at some
time after November 10, 2003 improperly, illegally and without the
authorization of Complainant, in bad faith, transferred and/or renewed the
registration and/or otherwise hijacked the non-subject domain names:
<fine-wine.com>, <finewinerack.com> and <paulwyatt.com>.
Complainant
is further informed and believes that beginning on or about November 11, 2003,
Respondent has engaged in a pattern of bad faith registration of domain names
consisting of, and including the names that were previously used in commerce by
Mr. Wyatt and Fine Wine Rack & Cellar Co., particularly including the
subject domain names, and several others in bad faith and for the sole purpose
of unfairly competing with Complainant herein. In so doing, Respondent has
engaged in a clear pattern of bad faith registration of the subject domain
names, and others, to prevent Paul Wyatt the owner of the trademark or service
mark from reflecting his name as a corresponding domain name in violation of Section
4(b)(ii) of the Policy.
The
majority of these records further demonstrate that Respondent has used the
subject domain names to refer to Complainant, and his business, Fine Wine Rack
and Cellar Company within the meta-tags and website descriptions, and many
include the images containing the content taken directly from Complainant’s
websites described above (<finewinerackandcellarcompany.net>, <paulwyattdesign.com>
and <paulwyattdesign.net>). The name and identity of Respondent
was no doubt hidden and falsely identified as “Gotaweb WhoisGuard” and/or
“WHOIS GUARD PROTECTION” in bad faith, in violation of the Paragraph 2 of the
Policy and in apparent violation of the terms of Respondent’s Registration
Agreement with the concerned Registrar.
Respondent
and/or others with Respondent’s assistance have, without the consent of Paul
Wyatt, used all, or nearly all of the subject domain names in connection with
the hosting of, or redirection to a commercial website which blatantly: (1)
infringes on Complainant’s rights related to his personal name, trade names,
trademarks, service marks, and copyrights.
Respondent
has never been known, commonly or otherwise, in any manner as related to any of
the contested domain names or any name corresponding to or including
Complainant's FINE WINE RACK & CELLAR trademark or the name “Paul Wyatt” or
“Paul Wyatt Designs.”
Respondent
is not making a legitimate noncommercial or fair use of the domain name.
Respondent is actively using Complainant's trademark(s), and name, to promote
its unauthorized business, providing commercial products and services. Accordingly, Respondent is not making a
legitimate noncommercial or fair use of the subject domain names. Respondent has no rights or legitimate
interest in the Domain Name, either by any of the illustrations under Paragraph
4(c) of the Policy or on any other basis.
Respondent’s
use of the domain names is not in connection with the bona fide offering
of goods or services. Respondent has used Complainant’s marks within each of the
subject domain names to attract traffic to a series of commercial sites that
have no connection with Complainant whatsoever. Such use usurps Complainant’s
rights and simply takes unfair advantage of Paul Wyatt’s personal reputation
and the remaining goodwill in his FINE WINE RACK & CELLAR CO. mark.
Respondent
has registered the Subject Domain Names in bad faith. Respondent has engaged in
a pattern of bad faith registration of the subject domain names in order to
prevent Paul Wyatt from reflecting his name and marks in a corresponding domain
name. Further, Respondent’s registration of the subject domain names amounts to
a direct violation of paragraph 4(b)(iii) of the Policy since Respondent has
registered the subject domain names primarily for the purpose of disrupting the
business of a competitor. Respondent is clearly using the subject domain names
to host a commercial website concerning Complainant and his business that
contains false and misleading descriptions, contact information and the like. Even
assuming, arguendo, that Respondent Hoopes was not a “competitor,” his
use of the subject registration is deceptive, and harmful to the public and
highly damaging to Complainant.
Respondent
has also intentionally attempted to attract, for commercial gain, Internet
users to Respondent’s web site by creating a likelihood of confusion with
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of Respondent’s web site. Respondent intends to mislead the public and to
divert online traffic from Complainant to its website by creating a likelihood
of confusion with Complainant's mark as to the source, sponsorship,
affiliation, or endorsement of Respondent's web site. Accordingly, Respondent
has registered the Domain Name in bad faith in violation of Paragraph 4(b)(iv)
of the Policy.
B.
Respondent
Respondent
contends in significant part as follows:
Paul
Wyatt is not the proper complainant in this matter. Paul Wyatt did not register
the subject domain names; Fine Wine Rack & Cellar Company (“FWRC”), in
which Paul Wyatt was a stockholder, registered them. Therefore, FWRC is the
proper complainant. For this reason alone, the relief requested should be
denied.
It should also be noted that Michael Hoopes, Whoisguard and Gotaweb are not the
proper respondents in this matter. Michael Hoopes, acting within the scope of
his employment for Paul Wyatt Designs, LLC, registered the subject domain names
under the name Michael Hoopes, d/b/a Gotaweb, in order to protect Paul Wyatt
Designs, LLC from Paul Wyatt’s and FWCC’s creditors. “Whoisguard” is merely a
service respondent ordered from its Internet provider to protect Paul Wyatt
Designs, LLC’s contact information from being abused by marketing and
advertising companies. Since the transfer of the subject domain names, Paul
Wyatt Designs, LLC has remained the registered owner of the subject domain
names, and has maintained sole and absolute use and control of them. Therefore, Paul Wyatt Designs, LLC is the
proper Respondent in this matter. For this reason alone, the relief requested
should be denied.
Paul
Wyatt Designs, LLC purchased the assets of FWRC, including its domain names,
for $60,000 in cash and the assumption of nearly $800,000 of debt. Paul Wyatt,
through his son Patrick Wyatt, provided Paul Wyatt Designs, LLC, who in turn
provided to Respondent the account information for the domain names, including
the user name and password. Furthermore, Paul Wyatt Designs, LLC, was named as
such with Paul Wyatt’s full knowledge and consent. Following the agreement to
sell the assets of Fine Wine Rack & Cellar to Paul Wyatt Designs, LLC,
Wyatt was no longer a competitor in the wine cellar business. In fact, as part
of the asset sale, Wyatt agreed to work for Paul Wyatt Designs, LLC as an
independent contractor, negotiating a five (5) year non-compete clause with the
company. his
Furthermore, Paul Wyatt Designs, LLC, was named as
such with Paul Wyatt’s full knowledge and consent. Following the agreement to sell the assets of Fine
Wine Rack & Cellar to Paul Wyatt Designs, LLC, Wyatt was no longer a
competitor in the wine cellar business. In fact, as part of the asset sale,
Wyatt agreed to work for Paul Wyatt Designs, LLC as an independent contractor,
negotiating a five (5) year non-complete clause with the company.
Paul
Wyatt Designs, LLC fully executed an agreement to acquire the assets of Paul
Wyatt’s company, FWRC, and Respondent did not improperly, illegally and without
Paul Wyatt’s authorization “hijack” any of Paul Wyatt’s domain names. Beginning
in November 2003, Paul Wyatt Designs, LLC has used the subject domain names in
connection with a bona fide offering of goods and services, a complete
defense to Paul Wyatt’s allegations of bad faith registration and use of the
subject domain names.
On March
4, 2004, an attorney in California, Lin Stillman, called W. Kent Fletcher, Paul
Wyatt Designs, LLC’s attorney at the time, and stated that she represented Paul
Wyatt and that Wyatt no longer wanted to work for Ward and Silcock. Stillman
stated that Wyatt wanted “his name back,” that he was going to resume use of
his own website and name and that he was “withdrawing his permission to use the
name.” Stillman followed this phone conversation with a letter repeating her
client’s demands. In her letter, Stillman conceded that Wyatt, Ward and Silcock
“originally intended” to have Ward and Silcock use Wyatt’s name in their
venture.
Since November 2003, Paul Wyatt Designs, LLC has maintained control and use of
<paulwyatt.com> and the subject domain names. It has advertised in
magazines, donated products to wine auctions, distributed numerous business
cards and received e-mails from potential clients responding to the website,
all using the <paulwyatt.com> domain name and the business name Paul
Wyatt Designs, LLC. It has continued receiving referrals from individuals
wanting to purchase wine.
The
applicable law is that of California. The conflict arose from the contract
entered in California and concerning a California corporation. With a fully
executed contract to purchase the company’s assets, including the subject
domain names, Paul Wyatt’s contentions are groundless. The parties entered into
a valid contract whereby the domain name rights passed to Respondent and are
not bound by the statue of frauds. The contract was fully executed.
Complainant
is subject to the principles of promissory estoppel. Respondent and/or his
employer Paul Wyatt Designs, LLC, used, and continue to use, the subject domain
names in connection with a bona fide offering of goods and services. They are not used in bad faith.
Complainant
cannot show that Respondent has “No rights or legitimate interests in the
subject domain names” because Paul Wyatt Design LLC, through Respondent,
purchased the subject domain names from FWRC.
The
domains were not registered or used in bad faith. Paul Wyatt contends that
“Respondent and/or others with the Respondent’s assistance have, without the
consent of Paul Wyatt, used all, or nearly all of the subject domain names in
connection with the hosting of, or redirection to a commercial website...” This
contention is false. Paul Wyatt sold the subject domain names to Paul Wyatt
Designs, LLC. Paul Wyatt instructed his
son Patrick Wyatt to provide the access codes for the subject domain names to
Michael Hoopes. For the next two and a half months, Paul Wyatt worked as an
independent contractor for Paul Wyatt Designs, LLC and never objected to Paul
Wyatt Designs, LLC’s exclusive use and control of the website and subject
domain names, even though he had knowledge that Paul Wyatt Designs, LLC was
maintaining and controlling the website and subject domain names solely for the
purpose of soliciting business for Paul Wyatt Designs, LLC. Therefore, Paul
Wyatt’s conduct directly contradicts his contention that he did not consent to
such use and control.
Wyatt’s
contention that Respondent (and/or his employer, Paul Wyatt Designs, LLC)
acquired the subject domain names to disrupt or otherwise negatively affect
Paul Wyatt is false. Wyatt offers no evidence that he or any company he is
associated with competes with Paul Wyatt Designs, LLC.
Respondent
and/or the company that employs Respondent are commonly known by the subject
domain names. Paul Wyatt Designs, LLC acquired the assets of FWRC in November
2003. Since then, it has owned and done business with the subject domain names.
All of Paul Wyatt Designs, LLC’s clientele commonly refer to Paul Wyatt
Designs, LLC as such, and presumably use some of the subject domain names to
access information on the Internet from Paul Wyatt Designs, LLC.
Respondent
is making a legitimate noncommercial or fair use of the domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish Paul
Wyatt’s name or any other name in connection with the subject domain names.
From the above, Paul Wyatt Designs, LLC is using the subject domain names to
identify itself. It is doing so legitimately, as it purchased the subject
domain names from FWRC, and has continued to use them to prosper and grow. At
no time did Respondent and/or Paul Wyatt Designs, LLC (Respondent’s employer)
use the subject domain names to divert customers from Paul Wyatt or to tarnish
Paul Wyatt’s name.
Paul
Wyatt’s company, FWRC, as evidenced by the conduct between the parties, fully
executed an agreement to sell its assets, including the subject domain names,
to Paul Wyatt Designs, LLC. Therefore, Paul Wyatt Designs, LLC, through its
employee, (Respondent) Michael Hoopes, legally and legitimately acquired the
subject domain names. As a result, Respondent and/or Paul Wyatt Designs, LLC
have rights to and a legitimate interest in the subject domain names, and did
not acquire, register or use them in bad faith.
It is plain to see that Wyatt’s complaints are nothing more than an effort to
reap the benefits of Paul Wyatt Designs, LLC’s hard work in a company Paul
Wyatt could not sustain. Paul Wyatt was losing his company in October 2003, and
sold its assets and liabilities to escape the crushing debt. Now that the
business is profitable he wants to say, “never mind, I want it back.” But he
sold its assets. He cannot have back what he sold just because he wants to have
it back.
C.
Additional Submissions
Complainant’s
Additional Submission.
Complainant
contends in significant part in its Additional Submission as follows:
In
his/its Response to the Complaint, Respondent has conceded that the name “Paul
Wyatt” and that of Mr. Wyatt’s former company “Fine Wine Rack and Cellar Co.,”
have achieved a significant reputation amounting to “legendary” status in the relevant
industry and among the consuming public.
Respondent
contends that he/it or rather an purported entity allegedly later identified as
“Paul Wyatt Designs LLC” of which Respondent has conceded Mr. Wyatt has no
present ownership, or other employment relationship, had been given oral
consent by Mr. Wyatt to use his personal, and former business name and further
register approximately thirty domain names consisting of or containing the name
“Paul Wyatt” and/or “Fine Wine Rack and Cellar Company” which has indisputably
prevented Complainant from registering his own personal name, or that of his
former company’s trade name as a corresponding domain name in violation of
paragraph 4(b)(ii) of the Policy.
Respondent
raises spurious allegations of fact and law, littering these proceedings with
false and unsubstantiated “red herrings.” No oral consent was given by Paul
Wyatt for anyone to register or use his name(s) as a domain name or business
entity. The written Memorandum of Understanding and the Receipt For Goods Sold
as executed on October 30, 2003 and November 25, 2003, respectively by Paul
Wyatt on behalf of Fine Wine Rack & Cellar Company did not sell, transfer
or otherwise grant any rights in the subject domain names nor did it grant any
right to anyone to register or use Mr. Wyatt’s personal name nor any name which
is confusingly similar to that of his former company.
Complainant
never intended to transfer ownership of any of his domain names or trade names
under this agreement, as Complainant “is not selling the company, but only the
equipment of the company.” Certainly, FWRC did not own Paul Wyatt’s name nor
did FWRC explicitly or implicitly sell or transfer any purported right to use
the subject domain names or to register Paul Wyatt’s name as a company name,
trade name or domain name.
Despite
Respondent’s false reliance on a purported “oral” consent issued by Mr. Wyatt,
there was simply no mention of same nor any consideration paid for such a
valuable and important right that Respondent contends was transferred. To the contrary, the Memorandum of
Understanding between the parties makes further clear that the seller is not
selling the company.
In
further light of the pertinent sections of the California Civil Code section
1625, Respondent’s contention that Mr. Wyatt sold anything belonging to FWRC
and not mentioned in the Memorandum of Understanding including that he
allegedly consented to the registration and use of his personal name, misstates
the law and the explicit prior recorded understanding of Complainant herein.
Pursuant
To U.S. Trademark Law, an alleged oral consent to register a personal name is
invalid. According to the United States
Patent and Trademark Office: “The statement of consent to registration of the
name or likeness of a living individual must be personally signed by the
individual whose name or likeness appears in the mark.” Inasmuch as Respondent concedes that no
written consent to register Mr. Wyatt’s name was ever obtained, no alleged oral
agreement can ever override the clear legal statement and important public
policy in protecting personal names from misuse and the commensurate confusion
that would no doubt occur in the public by suggesting a false affiliation with
a person such as Mr. Wyatt.
California
Law also protects personal names from misuse by third parties who lack written
consent to register or use such names.
Contrary to Respondent’s suggestion, California law has expressed strong
public policy considerations against the use of valuable personal names (and
the likeness of such persons) by unaffiliated third parties, in business,
absent explicit consent and genuine consideration therefore.
Due
to Respondent’s failure to specifically deny certain plain allegations of bad
faith and unfair competition in its response brief, (including copyright
infringement and an intentional attempt to mislead consumers about Mr. Wyatt’s
non-affiliation with Respondent’s websites) the Panel can simply accept such
facts as uncontroverted and conclusively proven herein.
Respondent’s
Additional Submission.
Complainant attempts to obfuscate the
issues by citing a litany of state and federal intellectual property law. The
Panel does not have jurisdiction
to decide claims of trademark infringement, dilution, unfair competition or
other statutory or common law causes of action.
The
instant matter is one of common law contract rights. In dispute are the terms
of a fully executed oral agreement between Steve Ward and Richard Silcock (and
their successor-in-interest Paul Wyatt Designs, LLC) on one side, and Paul
Wyatt, personally, and as President and sole shareholder of Fine Wine Rack
& Cellar Company, on the other. The parties are entitled to a factual
determination in a court of law as to the validity of the parties’ contentions.
Complainant alleges that Respondent may not properly assert the alleged
interests of a third party herein. First, Complainant concludes, without legal
basis, that the “registrant” is necessarily the sole and only party with
interests in a domain name dispute. There is simply no law against an agent
acting in the course of their employment from registering a domain name on
behalf of their principal. Complainant argues that registrant failed to keep
his identification information current. This is untrue. The registrant, Michael
Hoopes, submitted accurate information and is not obligated to divulge contact
information for the principal for which he is acting under.
Pursuant to Complainant’s own line of reasoning, Complainant lacks standing
since
Fine Wine Rack & Cellar Company (“FWRC”), and not Complainant, initially
registered a couple of the domain names at issue in this matter. Complainant
was merely a shareholder of FWRC and never individually registered or even paid
for a single domain name identified in the Complaint.
Respondent
asserts an agency relationship with Paul Wyatt Designs, LLC, the party
asserting rights to alienate the domain names from Complainant. Therefore, as
opposed to RC Ritzenhoff Cristal AG v. Mitsuhashi, D2000-1796 (WIPO Feb.
19, 2001), where the respondent was asserting the interest of one in opposition
to him, Respondent is asserting the interests of a party supporting his
position, and joining in his defense.
Respondent
used and/or prepared to use the subject domain names in connection with a bona
fide offering of goods or services before any notice of a dispute with
Complainant.
Respondent
began registering the subject domain names in November 2003. At that time,
Complainant did not object to Respondent’s registration of any of them. In
fact, Complainant’s son, at Complainant’s request, provided the access codes
for the transfer of the subject domain names that he was controlling at the
time, and Complainant fully consented (as part of the contract between the
parties) to the transfer and to Respondent’s registration of them.
Both Paul Wyatt and his son allege that they did not consent to transferring
ownership of the relevant domain names to Respondent. Yet in (Michael) Ryan
Hoopes’s November 14, 2003 email to Patrick Wyatt, Ryan informs Patrick “we have purchased paulwyattdesigns.com and
.net...” and asks for help transferring the domain names. Less than fifteen
minutes later, Patrick Wyatt provides the username and password to Ryan and
offers his advice to Ryan on how to “switch over the paulwyatt.com domain to
point at your new server. . . .” In addition, W. Kent Fletcher’s uncontroverted
testimony demonstrates that Paul Wyatt wanted “back his name,” demonstrating
that Mr. Wyatt transferred and consented to Respondent’s use of the domain
names at issue.
Furthermore,
with Complainant’s assistance, Respondent prepared for and began using the
domain names. In November 2003, Complainant traveled to Idaho to help set up
the new company, Paul Wyatt Designs, LLC, training employees and instructing
the work crews on how to use the machines. In November and December of 2003,
Paul Wyatt Designs, LLC, compensated Paul Wyatt through two separate wire
transfers showing that the payment was made to Paul Wyatt by Paul Wyatt
Designs, LLC. (See Exhibit 1 to Declaration of Angela Hoopes). Paul Wyatt has
known about Paul Wyatt Designs, LLC’s registration and use of the subject
domain names at all relevant times to this matter and has accepted significant
financial benefit from such entity. Not until March, 2004, when Respondent
received a letter from Complainant’s first attorney, did Respondent have notice
of a dispute with regard to the subject domain names. The April 22, 2004 letter
from attorney Stillman should be ignored by the Panel. It is not signed by
Stillman and has not been authenticated.
Since
purchasing the subject domain names, Respondent used the subject domain names
to solicit new clients and new projects, building high-end wine cellars.
Respondent also used the subject domain names to post contact information and
other valuable information for current and future clients to use.
Paul
Wyatt Designs, LLC (Respondent’s employer, i.e., Respondent’s business name) is
accused of having no legitimate interest in the subject domain names. These
domain names are strikingly similar to Respondent’s business name. Therefore,
Respondent has a legitimate interest in all of the subject domain names.
Complainant suggests that he is entitled to the subject domain names registered
by Respondent after November 2003, yet Complainant had ceased operations of his
business, sold his company’s assets, abandoned his company’s manufacturing
warehouse and began working for Respondent. Indeed Complainant maintains that
the unsigned MOU embodies the parties’ agreement despite the fact that the
parties fully performed otherwise. Nevertheless, the Complainant conveniently
omits the fact that pursuant to Section 5.2 of the unexecuted MOU, Complainant
agreed to refrain from competing with Respondent for a five-year period. If the
MOU were the operative agreement (which it is not), Complainant would have no
legitimate interest in the subject domain names since their use by Complainant
would surely violate the MOU.
Complainant
asserts that noncompete clauses are invalid in California. This is an incorrect
statement of law. A noncompete clause is valid in California if a portion of a
business is sold. Accordingly, even under Complainant’s erroneous argument that
the unsigned MOU is the operative agreement between the parties, Complainant
cannot engage in the manufacture, sale or marketing of wine racks using any of
the subject domain names which Complainant requests transfer and therefore
cannot possess a legitimate interest in such domains.
Complainant
has shown no bad faith in the registration of the subject domain names because
Respondent registered them to promote the business of his employer and to
attract customers. These legitimate business practices have been ongoing for
nearly two years.
There
is no bad faith use if Respondent does not know that he/she/it would be
competing with anyone, including Complainant. Additionally, no bad faith can be
established if Respondent had no knowledge that Complainant was using similar
names. Respondent cannot demonstrate bad faith in the use of the subject domain
names because Respondent did not know he would be in competition with
Complainant, nor did Respondent know Complainant was using similar domain
names. In fact, Complainant has failed to produce any evidence that since
transfer of the assets, Complainant is even in business. Complainant worked as
an independent contractor for Respondent (i.e. Paul Wyatt Designs, LLC) and transferred the subject
domain names to Respondent. Indeed, Paul Wyatt agreed not to compete with Paul
Wyatt Designs, LLC for five years. Respondent’s registration of the subject
domain names, including and the non-subject domain name <paulwyatt.com>,
was a “natural and legitimate preparation to extend its business and to reflect
the scope of its business.”
Furthermore,
Respondent has not attempted to “shop” any of the subject domain names to
anyone including Complainant and has not attempted to use the name in anyway
detrimental to Complainant. To the contrary, Respondent has used the subject
domain names solely in connection with the offering of Respondent’s goods and
services. It would be impossible for Respondent to keep the legend of Paul
Wyatt alive and not be able to use the subject domain names to conduct the
business operations purchased from Fine Wine Rack & Cellar Co.
FINDINGS
Substantive resolution of the parties’
domain name dispute requires the resolution of complex factual and legal issues
surrounding a prior business transaction between the parties. The parties are
involved in another proceeding which relates to this dispute. This is not the type of case that should be
decided on the merits in this forum.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights;
(2) the 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.
A threshold question in all UDRP
proceeding is thus whether or not the instant dispute is of such a type as to
be amenable to a decision within the forum. In its Additional Submission,
Respondent suggests in the alternative that this UDRP proceeding might not be a
proper forum to render a substantive decision given the nature of the parties’
dispute. This Panel agrees.
Here, the nature of the underlying
dispute, the complex legal and factual issues presented, and the fact that
there are other proceedings pending concerning the matter, lead the Panel to
hold that this is not a dispute that the Panel should decide on its merits.
Under the UDRP a Panel is permitted to decide a case on the narrow grounds set
out in the Policy. In the case before
us a substantive decision would require the Panel to resolve complex factual
and legal issues regarding contract and trademark law. Section 5 of the Policy is concerned with
using the UDRP forum to settle rich legal and factual matters that are
tangential to the disposition of domain names.
The section declares that disputes outside the narrow framework of
Section 4 “shall be resolved through any court … available.” Additionally, Policy 4(k) states that when
there is evidence of a court proceeding ICANN “will not implement the
Administrative Panel’s decision. . . .”
See AmeriPlan Corp. v. Gilbert, FA 105737 (Nat. Arb. Forum Apr.
22, 2002):
While Section
5 primarily seems to be concerned with using a UDRP forum to settle matters
unrelated, or indirectly related, to issues concerning domain name registration
and use, a complainant or respondent should not be permitted to use a UDRP
claim to boot strap decisions regarding more senior disputes between the
parties.
Id.
In the instant case the parties are at
odds as to which of Complainant’s assets were transferred to Respondent
pursuant to an agreement between the parties. There is evidence of a related
arbitration proceeding being commenced prior to the filing of the complaint.
The issue of whether or not each nominal party is a proper party in this
proceeding is also raised by each party as to its opposing party.
At the heart of the parties’ substantive
dispute is the question of who has equitable rights in the trademarks and other
intellectual property that apparently belonged to Complainant prior to the
parties’ dealings. The resolution of this issue turns on the interpretation and
legal effect of an agreement between the parties relating to the sale of
Complainant’s business assets. Each party has filed declarations supporting its
respective position. It is difficult at best for the Panel to properly assess the
credibility of somewhat contradictory declarations. Each party has further
offered documentary exhibits.
This Panel sets out in the “Party
Contentions” section above detailed excerpts from the parties’ submissions.
Review of these contentions makes clear the complexity of the dispute between
the parties. The moving papers in this case are rich with opposing and
contradictory factual contentions.
Technical legal issues abound concerning contract interpretation and
trademark law. Numerous issues relate to the business transaction between the
real parties in interest in the underlying dispute. Before reaching the narrow
UDRP issues set out in that Policy and above, the Panel must consider and
determine the scope and implications of the agreement of the parties relating
to the transfer of assets from Complainant to Respondent.
Complainant argues that the written
documents surrounding its transaction with Respondent indicate that there was
no intent by Complainant to transfer or license trademark rights to Respondent.
If correct, Respondent would be prohibited from registering the at-issue domain
names and using them in conjunction with Respondent’s business to the extent
that each domain name violates the Policy. Complainant goes on to assert that
any grant of license would need to be in writing, inter alia, citing
trademark law.
On the other hand, Respondent contends
that the parties’ oral agreement contemplates the transfer of the certain
trademark rights and other intellectual property, which permitted that
registration of the domain names and their use in conjunction with Respondent’s
business. Further, Respondent claims that Complainant, through Paul Wyatt’s
son, cooperated and assisted in transferring some of the domain names to
Respondent. Respondent thus urges that its position (that it had the right to
register domain names relating to marks ostensibly held by Complainant prior to
the parties agreement) is consistent with, and corroborated by, the parties’
course of dealing subsequent to the transaction.
Each side has presented predominantly
well-reasoned arguments and each side appears genuine in its assertions.
Sorting out the truth and the law and then making a proper determination of the
merits regarding the parties more senior contract dispute is not well suited to
the abbreviated fact finding devices available in this forum. Indeed, it is
unlikely that any decision on the merits here would bring finality to the
underlying domain name dispute and that the ultimate determination of who has rights
in the at-issue domain names is likely to be determined in another proceedings
upon resolution of the underlying contract dispute between the parties. The
purpose of the UDRP - to reduce costs and effort to resolve domain names
disputes - is thus foiled. For these reason and the reasons discussed above,
the Panel will dismiss the instant case.
DECISION
The
dispute not being suitable to resolution under the ICANN Policy, the Panel
concludes that the Complaint should be DISMISSED.
Paul M. DeCicco, Panelist
Dated: September 19, 2005
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum