BubbleMania and Company LA, LLC ® v. Caroline Dues / BubbleMania and Company Inc
Claim Number: FA1603001663923
Complainant is BubbleMania and Company LA, LLC ® (“Complainant”), represented by Brooke J. Ferri, California, USA. Respondent is Caroline Dues / BubbleMania and Company Inc (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bubblemaniaandcompany.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 3, 2016; the Forum received payment on March 3, 2016.
On March 4, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bubblemaniaandcompany.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 March 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 2016 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@bubblemaniaandcompany.com. Also on March 7, 2016, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Complainant has rights in the BUBBLEMANIA AND COMPANY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,781,098, registered July 28, 2015). Respondent’s <bubblemaniaandcompany.com> domain name is identical to the BUBBLEMANIA AND COMPANY mark, as it contains the entire mark, less the spaces, combined with the generic top-level domain (“gTLD”) “.com.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <bubblemaniaandcompany.com> domain name, despite “BubbleMania and Company Inc.” being listed as the Registrant Organization, as Respondent was only hired to create the domain for such company, but was never intended to retain ownership of it. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website has been used solely to reflect the content of Complainant’s own website, until its use was changed to display an automated GoDaddy.com page.
Policy ¶ 4(a)(iii)
Respondent uses the <bubblemaniaandcompany.com> domain name in bad faith because the resolving website has been used solely to reflect the content of Complainant’s own website, until its use was changed to display an automated GoDaddy.com page. Respondent renewed the registration of the <bubblemaniaandcompany.com> domain name in bad faith because it did so after having promised to transfer ownership of the domain to Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is BubbleMania and Company LA, LLC ® of Los Angeles, CA, USA.
Complainant is the owner of the registered service mark BUBBLEMANIA AND COMPANY mark which it has continuously used since at least as early as 2012, (when it was assigned the rights) in connection with its provision of entertainment services, including soap bubble, science themed performances for children. The mark was registered with the USPTO on or about July 28, 2015.
Respondent is Caroline Dues / BubbleMania and Company Inc. of Cincinnati, OH, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that the <bubblemaniaandcompany.com> domain name was created on or about January 21, 2010. Respondent worked with Complainant’s predecessor in interest and was allegedly responsible for securing the domain name for that company.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
Complainant claims to have purchased all rights in the BUBBLEMANIA AND COMPANY mark, and all associated intellectual property, which includes the disputed domain name. Complainant argues that Respondent was hired by the former owner of the BUBBLEMANIA AND COMPANY mark to register the domain name, but that Respondent retained ownership of it, and then after Complainant’s purchase, promised, and then refused, to transfer ownership of the <bubblemaniaandcompany.com> domain name to Complainant. Complainant has provided evidence to support its claim including; evidence of former ownership and establishment of the former company, evidence of transfer of ownership to a secondary owner, evidence that Respondent contests ownership of the domain name, evidence of Complainant’s acquisition of the BUBBLEMANIA AND COMPANY mark and associated rights, and evidence of additional correspondence between Complainant and Respondent regarding the disputed of the domain name.
The Panel finds that this is a business and/or contractual 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.
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.
Further, 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.
Based upon the aforementioned cases and the record, the Panel here concludes that the instant dispute contains questions of contractual interpretation, and thus falls outside the scope of the UDRP. Because the Panel finds this matter falls outside the scope of the UDRP, the Panel finds it appropriate 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).
The issues are outside the scope of the UDRP.
The issues are outside the scope of the UDRP.
The issues are outside the scope of the UDRP.
Having decided that the issues raised in the pleadings are outside the scope of the UDRP process the Panel holds that Complainant’s requested relief is hereby DENIED and that this case is dismissed.
Accordingly, it is Ordered that the <bubblemaniaandcompany.com> domain name REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
Dated: April 11, 2016
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