Bracemart, LLC v. Drew Lima
Claim Number: FA1304001494699
Complainant is Bracemart, LLC (“Complainant”), represented by Brittney L. Cogan of Meyers, Roman, Friedberg & Lewis, Ohio, USA. Respondent is Drew Lima (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bracemart.com>, registered with GoDaddy.com, LLC.
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.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 12, 2013; the National Arbitration Forum received payment on April 12, 2013.
On April 15, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bracemart.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 16, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 2013 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@bracemart.com. Also on April 16, 2013, 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 6, 2013.
Complainant submitted its Additional Submission, which was received and found compliant, on May 10, 2013.
On May 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.
On May 15, 2013, the Forum received Respondent’s reply to Complainant's Additional Submission. The reply was timely.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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.
A. Complainant
In its Complaint, Complainant contends as follows:
The disputed domain name is identical to Complainant’s registered legal name and trade name, “Bracemart”. Complainant has trademark rights in “Bracemart”, which are distinctive of the goods and services provided by Complainant on its website at <brace-mart.com>. Additionally, the disputed domain name is identical to Complainant’s domain name <brace-mart.com>.
Respondent has no rights or legitimate interest with respect to the disputed domain name. Bud Hagy is the owner of several related entities, including but not limited to the following: Bracemart, LLC, an Ohio limited liability company (“Complainant”); Surecare Orthopedic Supply, LLC, an Ohio limited liability company; and Green Quest, LLC, a Florida limited liability company that owns the registered fictitious name, Green Quest Group. Surecare Orthopedic Supply, LLC is the owner of the Ohio-registered trade name, “Bracemart”, registered on January 31, 2011, and provided its consent to Bracemart, LLC for the use of its trade name “Bracemart”, on July 3, 2012. Green Quest Group is the registrant of the domain name <brace-mart.com>, with GoDaddy, from which Complainant conducts its online business.
Respondent is a former employee of Complainant and a former employee/member of Surecare Orthopedic Supply, LLC. Respondent was entrusted with the responsibility of registering the Domain Name, on or around December 22, 2010, on behalf of Complainant. Complainant used the Domain Name for its business from the date of registration until sometime in June of 2012, when Respondent’s employment with Complainant and Surecare Orthopedic Supply, LLC was terminated. In June of 2012, as the agent of Complainant entrusted with the registration of the Domain Name on Complainant’s behalf, Respondent was able and did block Complainant’s access to the Domain Name and shut Complainant’s website down for a week, interfering with Complainant’s business.
After refusing to provide Complainant with the requisite access to the Domain Name account, Complainant had no choice but to register <brace-mart.com>, a virtually identical version of the disputed domain name, on June 15, 2012 in order to continue running its online business. Thereafter, on June 19, 2012, Respondent set up his own online retail store, Armor Wellness at <armorwellness.com>, in an attempt to compete with Complainant and provide goods and services similar to those provided by Complainant.
Respondent no longer has any legitimate control, association, or relationship with Complainant or Surecare Orthopedic Supply, LLC. Accordingly, Respondent has no rights or legitimate interest with respect to the disputed domain name. Respondent’s only involvement with the Domain Name was in his capacity as an employee of Complainant. As more fully described in subsection (c) herein, Respondent’s only use of the disputed domain name is for the sole purpose of diverting internet traffic from Complainant’s website at <brace-mart.com>, to Respondent’s website at <armourwellness.com>. Respondent’s use of the disputed domain name is solely intended to exploit Complainant’s good will for Respondent’s commercial gain and is intended to misleadingly divert consumers from Complainant to Respondent.
The disputed domain name is being used in bad faith, as it is being used by Respondent with the specific intent to divert consumers from Complainant’s online retail store, Bracemart, to Respondent’s online retail store, Armor Wellness, in violation of 15 U.S.C. § 1125(d)(1)(B)(i)(V). Upon searching “bracemart” in any popular search engine, like Bing, for example, such search yields Complainant’s online retail store, Bracemart, as well as Respondent’s online retail store, Armor Wellness. Bracemart and Armor Wellness are two entirely separate entities with no common ownership, management or other involvement whatsoever. Therefore, there is no logical reason why a search for “bracemart” should yield “armor wellness”, without Respondent’s perversion of Complainant’s trade name. Not only has Respondent manipulated searches for “bracemart”, but upon visiting the disputed domain name, which is identical to Complainant’s trade name, Internet users are immediately re-routed to <armorwellness.com>. Thus, consumers intending to visit Complainant’s online store are involuntarily diverted to Respondent’s online store. Moreover, a comparison of Complainant’s and Respondent’s website yields a virtually identical visual impression. Respondent is copying Complainant’s colors and arrangements, as well as its text. Based on the foregoing, Respondent is creating a likelihood of confusion with Complainant’s mark, BRACEMART, as to the source, sponsorship, affiliation and/or endorsement of Respondent’s business – all of which is exacerbated by the fact that Respondent’s business is similar, if not identical, to Complainant’s business.
Respondent has unlawfully maintained control over the disputed domain name since June of 2012 and supplied GoDaddy with material and misleading false contact information in violation of 15 U.S.C. § 1125(d)(1)(B)(i)(VII). Accordingly, simultaneous with the submission of a “domain dispute request” to GoDaddy, asking for the transfer of the disputed domain name from Respondent to Complainant, Complainant submitted an Invalid Whois report to GoDaddy. It was only after Complainant submitted an invalid WhoIs report, that Respondent provided cognizable contact information with respect to the disputed domain name, albeit still incorrect, as Complainant is the true owner of the Domain Name, not Respondent.
Respondent has engaged in a pattern of bad faith conduct with respect to Complainant and its owner. Since Respondent’s employment with Complainant and Surecare Orthopedic Supply, LLC was terminated, Respondent has exuded every effort to interfere with Mr. Hagy’s businesses. Respondent similarly precluded Mr. Hagy from accessing his account with GoDaddy for surecareortho.com by refusing to provide the requisite password, despite the fact that Mr. Hagy is the registrant of the surecareortho.com domain name. It was only after Mr. Hagy submitted a Request for Change of Account with GoDaddy, that the account access was returned to its rightful owner. In this instance, Respondent listed himself as the registrant of the disputed domain name, not Complainant, thus leaving Complainant with no choice but to file the herein Complaint.
B. Respondent
In its Response, Respondent contends the following:
Complainant does not own the BRACEMART trademark or service mark. The trade name filed by Complainant is not the same as a trademark or service mark. After investigation, Respondent has found that recently Jalmar Araujo of Evertte Massachusetts has filed a trademark for the name “Bracemart”.
In regard to the Bracemart logo (potential trademark) Respondent Drew M. Lima created the logo along side Eric Dunn, strictly under Drew Lima’s direction. Drew Lima and Complainant later used the logo in the business that the Complainant had invested in.
Respondent should have sole right to the disputed domain name as Respondent created the name Bracemart and registered bracemart.com predating any other company’s file of trademark, trade service, trade name, or corporation.
Prior to Respondent meeting Complainant, Complainant had no personal previous knowledge of the trade set forth in <bracemart.com>, including no knowledge of suppliers, customers, procedures for importing these goods, FDA rules and regulations for medical and sports products, website building, and this business trade in general.
Respondent registered the disputed domain name pre-dating the trade name filed by Complainant, and also prior to the formation of Bracemart LLC. The registration of the disputed domain name also pre-dates the filing of the BRACEMART trademark in March 2013.
Respondent has overwhelmingly been associated and commonly known as the owner of <bracemart.com> both on a commercial and non-commercial basis. Commercially Respondent has been recognized as owner of <bracemart.com> with suppliers, manufacturers, and direct customers.
In a non-commercial basis to date social media such as Facebook recognize Drew Lima as the owner of Bracemart. People attached to Respondent’s Facebook for years have seen and recognized Respondent as owner of Bracemart.
In addition Respondent Drew M. Lima created the original Bracemart Facebook along side Eric Dunn, which was also stolen and illegally compromised. In regards to the Facebook attached to the www.brace-mart.com website, Respondent has evidence of getting the initial (LIKES) for the page prior to the social profile being stolen.
The disputed domain name was created with the ingenuity and help of family and friends of the respondent Drew M. Lima. In fact the website associated with www.bracemart.com was created by Drew M. Lima along with Andrew Kuo, next door neighbor and friend for 22 years. The layout and design created by Drew M. Lima and Andrew Kuo is still being used in bad faith by Complainant today.
Complainant is making commercial use of the domain www.brace-mart.com in bad faith, as this website is confusingly similar to Respondent’s www.bracemart.com website.
It would be impossible for Respondent to tarnish and gain commercial interest diverting consumers to Respondent’s website. Respondent is making legitimate commercial and fair use of his domain name. Therefore it is impossible for Respondent to use the domain name in bad faith
While in the past Respondent has considered selling the disputed domain name, his current business/ownership of the disputed domain name is not used for the purpose to disrupt the complainants business, or seeking financial retribution. Instead, it is used to direct former customers and peoples that know Respondent as the owner of www.bracemart.com to his current site to offer the same great products and services that they were accustomed to in the prior joint venture, and prior to the Respondent’s intellectual property being stolen.
To date there is no owner of the “Bracemart” trademark or service mark. However as previously stated Jalmar Araujo filed for a “Bracemart” trademark. Araujo is in an exact related field and Respondent is investigating to see if Araujo is in any way connected to Complainant.
It is impossible for the Respondent to intentionally attract, for commercial gain, Internet users to respondents website creating a likelihood of confusion with the Complainant as Respondent’s registration of the disputed domain name pre- dates Complainant's
In its Additional Submission, Complainant contends the following:
Federal registration is not a requirement for relief under 15 U.S.C §1125(d). Although Complainant does not have a federally registered trademark for the word “Bracemart”, there is no question that Complainant has common-law trademark rights as a result of its good faith use of the mark since 2010, prior to Respondent’s registration of the domain name <bracemart.com>, on behalf of and at the direction of Mr. Hagy, as the owner of Surecare and Complainant. In addition to its common law trademark rights, Complainant has the license to use “Bracemart”, Surecare’s registered trade name.
Respondent alleges that Jalmar Araujo’s filing of an Intent-to-Use Application, on March 27, 2013, for the word mark “BRACEMART” precludes Complainant from having trademark rights in the word BRACEMART. However, Complainant has many options with respect to the enforcement of its trademark rights in the word BRACEMART against Mr. Araujo’s filing. Accordingly, Complainant served Mr. Araujo with a cease and desist letter, as well as a notice of intent to file a Notice of Opposition, in the event his application proceeds to the publication phase. A copy of Complainant’s cease and desist correspondence is attached hereto and incorporated herein by reference as Exhibit “E”. In response, Mr. Araujo has indicated that, in light of our correspondence, he has no intention of using Complainant’s mark “BRACEMART” in the future. Accordingly, Jalmar Araujo’s application, as referenced in Respondent’s Response, does not affect the appropriate conclusion in this matter.
In its reply to Complainant's Additional Submission, Respondent contends as follows:
Respondent requests the Panel to see the documents attached proving he was an owner and not an employee of Complainant.
Complainant prior to the business shared by Complainant and Respondent had no knowledge, or experience in the importation, distribution and sale of orthopedic, medical and health supplies. Respondent created the “Bracemart” name independently of the direction of Complainant. Complainant had verbally agreed to invest capital in the creation of the mutual business venture where Complainant and Respondent were to be partners. The Parties` initial verbal agreement was for Complainant's share to diminish from 90% year 1 to 50% over 5 years with Respondent gaining 10% ownership every year, also having the first right of refusal to purchase the remainder on year 5, with timely transfer to Respondent. However when Complainant failed to come up with an operating agreement that satisfied the terms which were verbally agreed upon, Respondent elected not to sign said agreement.
Based on the Parties` verbal agreements, Respondent was neither employee nor manager but owner. Complainant was to provide the financial backing while Respondent provided the business plan, manufacturing companies, distribution channels, creating all company services, including website, and of course product development. Complainant recognized Respondent’s vital importance, and the foreseeable profitable creation and maintenance of the company and domain in question. That is why Respondent was offered an increasing stake in company ownership over time. However as stated above the terms the Parties had agreed upon were not properly authored into a proper operating agreement.
The disputed domain name was registered on December 22, 2010.
Bracemart, LLC is a domestic limited liability company filed on July 3, 2012 with the Secretary of State of Ohio. The Bracemart company is owned by Mr. Bud Hagy, who also owns Sure Care Orthopedic Supply, LLC, a domestic limited liability company filed on November 4, 2010. The Sure Care Orthopedic Supply company is the registrant of the “Bracemart” trade name, filed on January 31, 2011.
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: Is the Present Dispute within the Scope of the UDRP?
Complainant states that it has no intention for this dispute to involve any of the prior business dealings between the parties. Complainant asserts that Respondent was an employee of Complainant, operating on Complainant’s behalf in registering the disputed domain name. Complainant contends that it offered Respondent to be made a member of one of Complainant’s companies subject to his signature of an Operating Agreement. Complainant argues it is the true business using the BRACEMART business, and that only Respondent’s self-serving Response can show that Respondent developed the BRACEMART brand. Complainant asserts that Mr. Bud Hagy owns a majority share of its business, and has always been the majority shareholder.
Respondent argues that he owned the BRACEMART business prior to dealing with Complainant. Respondent alleges that the idea to start this business was his own. Respondent states that Complainant was ignorant as to medical devices prior to Respondent’s decision to include Complainant in his business dealings. Respondent claims that Complainant is now attempting to seize total control of the business.
In support of his contentions Respondent submits a notice from the Internal Revenue Services (“IRS”) dated June 20, 2011, addressed to Bracemart LLC, and assigning Mr. Drew Lima of Bracemart LLC an employer identification number. Also, Respondent submits an application to reserve a booth in the “Publix Health and Business Expo” to be held in Boca Raton on February 17-18, 2012, signed by him as President/Owner of Bracemart. In the Panel’s opinion, this evidence, although not conclusive, shows at least that Respondent, in his dealings with the IRS and the organizer of a business event, behaved, not as an employee of Complainant but as an owner and employer (with or without the knowledge of Complainant).
In the Panel’s opinion, the contentions of the Parties and the evidence submitted show that there exists a business and/or contractual dispute between Complainant and Respondent concerning the true nature of their relationship to one another. Such dispute falls outside the scope of the UDRP, and can better be dealt with before a court of the competent jurisdiction, in a proceeding where witnesses under oath can be examined and full evidence can be taken. In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel cited the Final Report of the WIPO Internet Domain Name Process (April 30, 1999), stating that the scope of the UDRP procedure “is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or “cybersquatting” and is not applicable to disputes between parties with competing rights acting in good faith.” Further, the panel in Love found as follows: “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.” “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.” See also Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005), finding: “[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 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.
For the above reasons, the Panel need not consider the three requirements of the Policy.
For the reasons stated above, the remedy of transfer is DENIED and the Complaint is DISMISSED.
Roberto A. Bianchi, Panelist
Dated: May 28, 2013
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