Nicholas Reinhart v. Kathy Wetzel
Claim Number: FA1604001671758
Complainant is Nicholas Reinhart (“Complainant”), represented by Carlos A. Levya, Florida, USA. Respondent is Kathy Wetzel (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kathyreinhart.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.
Hector Ariel Manoff as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 22, 2016; the Forum received payment on April 22, 2016.
On April 25, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <kathyreinhart.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 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 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@kathyreinhart.com. Also on April 27, 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.
A timely Response was received and determined to be complete on May 4, 2016.
On May 9, 2016 an Additional Submission from Complainant was received.
On May 5, 2016 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hector Ariel Manoff 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 has common law rights in the KATHYREINHART.COM dating back to January 1, 2014 as he previously held the registration for over two years.
Complainant argues to have renewed the domain name on January 1st, 2015.
In March of 2016 Complainant learnt that Respondent changed the registration into her control without his authorization and making herself the registrant, since she had access to the administrative contact email account.
Mr. Reinhart contacted GoDaddy and was able to have the disputed domain name returned to his control on March 22, 2016.
Respondent again took control of the disputed domain name between March 22 and March 24.
Complainant tried to get the domain back but GoDaddy refused to do it.
Complainant argued that Respondent’s assertion in the publication (Annex D) that she is currently in possession of the disputed domain name is an admission for purposes of this proceeding.
Respondent’s <kathyreinhart.com> domain name is exactly identical to the KATHYREINHART.COM mark.
Respondent lacks rights and legitimate interests in the <kathyreinhart.com> domain name because it acquired the domain through theft and fraud by misrepresenting authority over the domain and because Respondent has publically disavowed the name.
The name Kathy Reinhart is fictitious since Respondent’s surname is not Reinhart but Wetzel.
Respondent uses the <kathyreinhart.com> domain name in commerce, promoting books through a domain name she does not own. Respondent acquired the <kathyreinhart.com> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the KATHYREINHART.COM mark and Complainant’s refusal to allow Respondent to use the mark.
B. Respondent
Respondent argues that the disputed domain name was created for Respondent to use as her fictitious name in the publication of her books.
Respondent’s rights in the <kathyreinhart.com> domain name result from exclusive use since 2015 with permission from Complainant and through the use of the name “Kathy Reinhart” in the publication of books since 2011.
The disputed domain name was registered in January of 2014 along with another one <nicholasreinhart.com>. In January of 2015, Respondent argued to have paid for the renewal of the disputed domain name.
Respondent argued that the disputed domain name had pointed to an active website since its inception.
During the third week of March, Respondent received a message from GoDaddy stating that there was a pending change of registrant for her kathyreinhart.com domain name and the email address associated with that request was nickreinhart@hotmail.com. Complaint had been able to access Respondent’s account as the credit card info he supplied in 2014 was still attached to the disputed domain name.
Respondent got the disputed domain name back a week later.
C. Additional Submissions
Complainant argued that Respondent completely failed to rebut the Complaint’s demonstration that the disputed domain name should be returned to Nicholas Reinhart.
After having reviewed both parties’ arguments and evidence, the Panel concludes that this dispute does not constitute a case of abusive registration but a case where a registered domain name is subject to a legitimate dispute and it falls outside the scope of the Policy and should be decided by the Courts.
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: Business/Contractual Dispute Outside the Scope of the UDRP
Complainant registered the disputed domain name on January 1, 2014. Complainant does not claim to have registered the KATHYREINHART mark with any trademark authority but claims to have common law rights in the KATHYREINHART.COM based on the domain registration’s date. This Panel finds that Complaint has not submitted sufficient evidence to support its claim of having acquired common law rights.
This Panel finds that the mere registration of a domain name does not automatically create common law trademark or service mark rights. See Ebénisterie Beaubois ltée (Alex Vignola) v. Reserved for Customers / MustNeed.com, FA1511001645810 (Forum December 7, 2015) (To prove a secondary meaning, the evidence must show the public associates the mark with Complainant’s goods or services).
In addition, this Panel noticed that the domain name refers to Kathy Reinhart and that this fictitious name is used by Respondent in relation to books published by her. This Panel has not found any relation between the Complainant and the domain name with respect to its use. On the contrary, it is clear the book has been written by the Respondent with the fictitious name KATHY REINHART. This Panel finds that there is no proof of association between the trademark and the Complainant’s goods. See id.
Complainant argues that he registered the domain name <kathyreinhart.com> and held it for two years and that Respondent changed the registration into her control without his authorization and making herself the registrant, since she had access to the administrative contact email account. Complainant claims that Respondent lacks rights and legitimate interests in the disputed domain name because it acquired the domain through theft and fraud.
On the contrary, Respondent argues that the disputed domain name was created for Respondent to use as her fictitious name in the publication of her books. Respondent’s rights in the <kathyreinhart.com> domain name result from exclusive use since 2015 with apparent permission from Complainant and through the use of the name “Kathy Reinhart” in the publication of books since 2011.
This Panel finds that both parties differ with respect to the main facts of the case. Prior decisions have considered that when it happens it is difficult for a Panel operating under the Rules to take a decision with respect of the real facts. See Estate of Malcolm McLaren v. Paul Nordstrom August, FA1304001492383 (Forum May 13, 2013) (“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”.)
In addition, the Panel believes that each party might have rights in the disputed domain names and the UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes. See Love v. Barnett, FA944826 (Forum May 14, 2007) (“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”.)
This Panel concludes that this dispute does not constitute a case of abusive registration but a case where a registered domain name is subject to a legitimate dispute. The Policy relegates all “legitimate disputes” to the courts. Thus, this case falls outside the scope of the Policy.
For the reasons presented above, the Panel concludes that relief shall be DENIED.
Accordingly, the Complaint is DISMISSED.
Hector Ariel Manoff, Panelist
Dated: May 16, 2016
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