Primera Technology, Inc. v. Carlos Levenstein
Claim Number: FA1404001556919
Complainant is Primera Technology, Inc. (“Complainant”), represented by Peter J. Ims of Westman, Champlin & Koehler, P.A., Minnesota, USA. Respondent is Carlos Levenstein (“Respondent”), represented by Jon L. Farnsworth of Felhaber Larson Law Firm, Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <primera.la>, registered with Marcaria.com Corp.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 30, 2014; the National Arbitration Forum received payment on April 30, 2014.
On May 7, 2014, Marcaria.com Corp confirmed by e-mail to the National Arbitration Forum that the <primera.la> domain name is registered with Marcaria.com Corp and that Respondent is the current registrant of the name. Marcaria.com Corp has verified that Respondent is bound by the Marcaria.com Corp 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 May 7, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 2014 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@primera.la. Also on May 7, 2014, 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 June 6, 2014.
Both parties made Additional Submissions which were received by the Forum in a timely manner according to
Supplemental Rule 7.
On June 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in PRIMERA and alleges that the disputed domain name is identical to the trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent broadly denies those allegations and submits, in particular that:
Complainant does not have trademark rights in the jurisdiction where the disputed domain name has been used.
The disputed domain name was used to promote and assist Complainant’s business for over two years in Latin America and under the terms of a distributorship agreement. Accordingly, Respondent has a legitimate interest in the domain name and has not acted in bad faith.
In any event, Respondent submits that the nature of the dispute between the parties puts it outside the scope of the UDRP and the mandate of the Panel.
C. Complainant’s Additional Submissions
Complainant denies the existence of a distributorship agreement with Respondent. Complainant argues that a company controlled by Respondent had, at best, a non-exclusive license to use Complainant’s trademark in connection with the sale of Complainant’s products in Latin America, but that license came to an end when the business relationship between the parties was terminated on August 1, 2013.
Finally, any permission to register the domain name or to use the trademark was limited to use or registration by a corporate entity and did not extend to Respondent.
D. Respondent’s Additional Submissions
In short, Respondent reiterates that Complainant had dealings with, and consented to actions taken by, Respondent before formation of Respondent’s company and submits that Complainant is unable to sustain any argument of bad faith intentions on part of Respondent.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells colour printers by reference to the trademark, PRIMERA.
2. The trademark is the subject of United States Patent and Trademark Office (“USPTO”) Reg. 1,876,441, registered January 31, 1995;
3. The disputed domain name was registered on January 27, 2011;
4. Respondent and a company associated with Respondent have, by agreement, sold Complainant’s goods in Latin America.
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.
Respondent argues that the Complaint should be denied because the dispute relates to a complex business arrangement between the parties that is inappropriate for arbitration under the UDRP.
Complainant argues that the dispute is properly within the scope of the Policy because any business dealings and any agreement was between Complainant and Primera Latin America Comercios e Representacoe (“PLACER”) and so the Respondent, an individual, had no authorization or approval to register a domain name incorporating Complainant’s trademark, no matter how the relationship with PLACER might be understood.
In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel stated that “[A] dispute … 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”.
In Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) the panel wrote the purpose of the UDRP 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.”
Panel finds that the dispute here involves serious contractual questions which it is not mandated to decide upon, even if it was seized of all the relevant evidence. It is enough for Panel to note that the domain name was registered some years before Complainant alleges that the arrangement between it and PLACER was terminated and that for much of that time there was no objection taken that Respondent was the registrant of the domain name. Moreover, there is nothing to clearly contradict Respondent’s claim that the domain name was registered by Respondent even before PLACER was incorporated or that Complainant had consensual business dealings with Respondent for a period before the incorporation of that company. On the evidence, it seems to this Panel that there are open questions of the kind described in the Luvilon case which are better explored by another forum.
Panel finds that the dispute is outside the scope of the Policy and so declines to make the traditional paragraph 4(a) analysis (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.”).
With that finding Panel concludes that relief shall be DENIED and so it is ordered that the <primera.la> domain name REMAIN with Respondent.
Debrett G. Lyons, Panelist
Dated: July 2, 2014
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