Autoboss Tech., Inc. v. Cardiag cardiag / Cardiag Inc.
Claim Number: FA1108001405219
Complainant is Autoboss Tech., Inc. (“Complainant”), represented by John H. Weber of Baker & Hostetler LLP, Washington D.C., USA. Respondent is Cardiag cardiag / Cardiag Inc. (“Respondent”), represented by Arturas Vaicvenas, Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <autoboss.us>, registered with Godaddy.com, Inc.
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.
Charles A. Kuechenmeister as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 29, 2011; the Forum received a hard copy of the Complaint on August 30, 2011.
On August 29, 2011, Godaddy.com, Inc. confirmed by e-mail to the Forum that the <autoboss.us> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third-parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 1, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 21, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete on September 2, 2011.
On September 13, 2011, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant markets and sells automotive diagnostic products throughout the world under its AUTOBOSS mark (“Complainant’s Mark”), for which it has the following registrations with the United States Patent and Trademark Office:
AUTOBOSS (Reg. No. 3,243,704 registered May 22, 2007), and
AUTOBOSS (Reg. No. 3,754,146 registered March 2, 2010).
2. Respondent’s <autoboss.us> domain name (the “Domain Name”) is identical to Complainant’s Mark. Respondent’s addition of the ccTLD “us” fails to distinguish the Domain Name from Complainant’s Mark.
3. The Domain Name was registered October 9, 2008. Respondent has never been known by the name “Autoboss” at any time before or after this date.
4. Respondent has never been engaged in a bona fide and authorized offering of goods and services associated with Complainant’s Mark. It was previously an authorized distributor of Autoboss products in Lithuania but that distributorship was terminated by Complainant on July 15, 2008, three months before Respondent registered the Domain Name. Even if Respondent had been an authorized Autoboss distributor at the time of registration this would not grant Respondent any right to use Complainant’s Mark in Respondent’s Domain Name.
5. Respondent’s lack of any right or legitimate interest in Complainant’s Mark is further demonstrated by the fact that it did not own any trade or service mark with that name in it, and further by the fact that it used the Domain Name in a manner which attempted to pass itself off as an official website of Complainant, without authorization from Complainant.
6. At the time Respondent registered the Domain Name it had actual knowledge of Complainant’s rights in Complainant’s Mark and purposefully utilized the Domain Name to profit off of that mark. This evidences bad faith registration and use of the Domain Name.
7. Respondent also offered to sell the Domain Name to Complainant for a sum in excess of its out-of-pocket expenses incurred in registering the same, which is further evidence of bad faith.
B. Respondent
1. Respondent was an authorized distributor of Complainant’s products. It acquired and registered the Domain Name and expended funds to develop a website resolving from the Domain Name in connection with its business as such distributor and in an effort to promote the sale of Autoboss products. It invested in advertising Autoboss products by Google Ads, banner campaigns in selected websites, and press ads.
2. Complainant says it terminated Respondent’s distributorship in July 2008 but if Complainant did so at that time it did not notify Respondent of it. A newsletter article published on Complainant’s website on or about October 12, 2010 was the only indication Respondent received of such termination. That article further stated that any product purchased from Respondent would be blocked by Complainant from updates and could not get any after-sales service or warranty from Complainant.
3. At the time this article appeared Respondent still had unsold Autoboss products in its inventory, and it had warranty obligations to customers to whom it had previously sold Autoboss products. This article had a very strong negative impact on Respondent’s business.
4. Loss of the Domain Name would mean loss of contacts with Respondent’s customers and negation of all results of investments that Respondent made for its website and the Autoboss name.
5. Respondent’s reply (Exhibit 8 to the Complaint) to a cease-and-desist letter from Complainant offered to transfer the Domain Name to Complainant as part of broad negotiations to resolve all matters pending between the two firms, including such questions as removing the negative information about Respondent from Complainant’s website, partial compensation of expenses to acquire the Domain Name and develop its website, loss of sales (of existing inventory), and damage to Respondent’s company name.
B. Additional Submissions
Neither party filed an Additional Submission.
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 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; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel would normally draw upon UDRP precedent as applicable in rendering its decision. In this case, however, the Respondent claims that the Domain Name is only one element of a much broader commercial dispute between the parties that involves Complainant’s termination of Respondent’s distributorship allegedly without notice, the recovery of costs advanced by Respondent to promote the business of Respondent as a distributor of Complainant’s products, and possible improper interruption of business relationships between Respondent and its customers by Complainant.
The parties agree that Respondent was a distributor of Complainant’s products and that Complainant terminated that distributorship. Beyond that, the evidence is unclear (or utterly lacking) as to the essential elements of that distributor relationship and the circumstances surrounding its termination. Respondent claims that it never received direct notice of the termination, alleged by Complainant to have occurred in July 2008. Complainant’s website published an article describing the termination of Respondent’s distributorship and notifying customers of Respondent that Complainant would block updates for, would not furnish after-sales service to, and would not honor warranty claims from customers purchasing Complainant’s products from Respondent. That article, attached to the Complaint as Exhibit 6, purports to be dated July 15, 2008 but is copyrighted as of 2010, and Respondent says it appeared on or about October 12, 2010. Complainant’s legal counsel, who represents Claimant in this matter, sent Respondent a cease-and-desist letter demanding that Respondent transfer the Domain Name to Complainant, but the date of this demand is not furnished by either party. Respondent’s reply is attached to the Complaint as Exhibit 8, but it also is undated. The reply indicated a willingness on the part of Respondent to transfer the Domain Name but only as part of a complete, negotiated resolution of all the matters at issue between the parties, as listed above.
On the evidence before the Panel, it is clear that a fair and equitable resolution of the parties’ claims to the Domain Name, in accordance with the Policy, cannot be achieved (i) without considerably more factual information than is before the Panel at this time, and (ii) except as part of a resolution of the broader dispute between them arising out of the termination of Respondent’s distributorship. Accordingly, the Panel concludes that this is a business or commercial dispute between two companies that 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. 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 Industries 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.
Based upon the reasoning outlined in the aforementioned cases and the record here, this Panel concludes that the instant dispute contains significant questions involving the overall commercial and/or contractual relation between these parties and thus falls outside the scope of the UDRP. For this reason, it is proper for the Panel to dismiss 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).
For the reasons stated above, the Panel orders that the Complaint be and it hereby is ordered DISMISSED, with prejudice as to any future UDRP or usTLD Policy filings.
Accordingly, it is Ordered that the <autoboss.us> domain name REMAIN WITH Respondent.
Charles A. Kuechenmeister, Panelist
Dated: September 23, 2011
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