Michael D Slinkard v. John Kutcha
Claim Number: FA1511001646764
Complainant is Michael D Slinkard (“Complainant”), Oregon. Respondent is John Kutcha (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hecs.com>, registered with 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.
R. Glen Ayers served as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 12, 2015; the Forum received payment on November 12, 2015.
On November 12, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hecs.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 November 19, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 9, 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 postmaster@hecs.com. Also on November 19, 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 December 8, 2015.
On December 17, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed R. Glen Ayers as Panelist.
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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims to be the majority shareholder and president of HECS LLC. HECS LLC owns a trademark registration with Australian Government for the HECS trademark (see, e.g., Reg. No. 1430554, filed June 14, 2011; registered Jan. 27, 2012). The mark is used on or in connection with the sale of clothing, hats, gloves, and wetsuits. The <hecs.com> domain name is confusingly similar to the HECS mark because it differs only by the addition of the generic top-level domain (“gTLD”) “.com.”
Complainant asserts that Respondent has no rights or legitimate interests. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Further, Respondent is not making a bona fide offering or a legitimate noncommercial fair use. Complainant offered to purchase the domain name for what it estimated were Respondent’s out of pocket costs, in the amount of $3,000. Respondent replied with a demand for $300,000. This, asserts Complainant, is an attempt to sell the domain name for a grossly excessive amount.
Complainant also asserts that Respondent is a former “contractor.”
Respondent has engaged in bad faith registration and use.
Complainant reports that Respondent asserts that the website is “infected with malwear which it has been for quite some time.”
B. Respondent
Respondent makes no contentions with regard to Policy ¶ 4(a)(i), but he does assert that he is a former employee or outside salesperson who registered the domain name while attempting to develop a market in the U.S. for Complainant’s military equipment, primarily clothing, which contains or uses a patented concealment process.
Respondent contends that he continued to have cordial relations with the Complainant even after the termination of their contractual relationship.
Respondent claims it has rights or legitimate interests because it registered the domain at the time it was attempting to develop a market in the U.S. for Complaint’s products.
The mark held by Complainant is identical to the domain name held by Respondent. The factual allegations show that the domain name was purchased by Respondent at approximately the same time that he was working for the Complainant. However, the Complainant says that it did not authorize or even know of the purchase/registration.
There is no allegation that the Respondent has made any significant use of the domain name since his termination.
There is some evidence that the Respondent has a legitimate interest in the domain name, having purchased it while still was employed by Complainant for the purpose of developing a U.S. market for Complainant’s products.
This is really a business or contract dispute, not a dispute which this Panel and the UDRP can address, particularly since the parties have not given the Panel any facts to support an analysis under the three elements of the UDRP set out in the DISCUSSION below.
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.
The presence of only the first of these issues is even remotely addressed in the pleadings before the Panel.
In such circumstances, the Panel may find that this is a contractual dispute between two individuals 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. In this case, however, Respondent argues that the disputed domain name was registered pursuant to the terms of a contract executed with Complainant. 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 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.”
In Bracemart, LLC v. Drew Lima, the Panel 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.” See FA 1494699 (Mar. 28, 2013). Because 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, the Panel could not resolve the dispute under the UDRP. See id.
Based upon the reasoning outlined in the aforementioned cases and the record, the Panel may conclude that the instant dispute contains a question of contractual interpretation, and thus falls outside the scope of the UDRP. If the Panel makes such a finding, the Panel may 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).
Therefore, the Panel finds that this matter should be addressed in a competent judicial forum, either in the U.S. or Australia.
The Panel chooses not to reach this issue.
The Panel chooses not to reach this issue.
The Panel chooses not to reach this issue.
Having determined that this dispute is not suitable for resolution by the Panel, and finding that thee pleadings do not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <hecs.com> domain name REMAIN WITH Respondent.
R. Glen Ayers, Panelist
Dated: December 21, 2015
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