DECISION

 

Innovative Marketing and Distribution, Inc d/b/a Engel Coolers v. Michael Harrington

Claim Number: FA1606001678152

 

PARTIES

Complainant is Innovative Marketing and Distribution, Inc d/b/a Engel Coolers (“Complainant”), Florida, USA.  Respondent is Michael Harrington (“Respondent”), represented by Steven S. Fox, New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <buyengelcoolers.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 6, 2016; the Forum received payment on June 6, 2016.

 

On June 6, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <buyengelcoolers.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 June 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 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@buyengelcoolers.com.  Also on June 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.

 

A timely Response was received and determined to be complete on June 14, 2016.

 

An additional submission was submitted by Complainant to the Forum in accordance with Supplemental Rule 7, on June 17, 2016.

 

On June 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Roberto A. Bianchi 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

In its Complaint, Complainant contends as follows:

Complainant has made use of the ENGEL mark in interstate and international commerce since at least as early as May, 1962 for fridge-freezers, and at least as early as August, 2002 for portable coolers. Complainant has registered the ENGEL COOLERS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,721,792, registered Apr. 14, 2015).  The disputed domain name is confusingly similar to Complainant’s ENGEL COOLERS mark.  The disputed domain name incorporates the entire mark, while removing the space between the words, and adds the generic term “buy” and the generic top level domain (“gTLD”) “.com.”

 

Respondent does not have rights or a legitimate interest in the disputed domain name.  Respondent is not commonly known by the disputed domain name and is no longer licensed or authorized to use the ENGEL COOLER mark. Respondent, who was at one time an authorized dealer for Complainant, is holding the domain name for the purpose of depriving Complainant of its use and attempting to interfere with Complainant’s legitimate business purpose.

 

Respondent is using the disputed domain name in bad faith. Respondent intentionally attempts to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website.

 

B. Respondent:

In its Response, Respondent contends the following:

Complainant has not provided any evidence to support its use of the ENGEL or ENGEL COOLERS mark during the timeframe it claims use.  Complainant’s trademark registration for ENGEL COOLERS indicates a stylized mark, and Respondent is not using this stylized mark. 

 

Respondent was an authorized distributor for Complainant from September 2010 until April 2016.  Respondent registered the disputed domain name on September 28, 2010 for use as part of its distributor position.

 

Respondent did not register and is not using the disputed domain name in bad faith.  Respondent was authorized to use the ENGEL COOLER mark by virtue of its distributor agreement with Complainant.  Respondent and Complainant are currently involved in a contract dispute which falls outside of the scope of the UDRP.

 

C.  Complainant´s Additional Submission

In its Additional Submission, Complainant contends as follows:

Respondent’s arguments are unsupported by the facts at hand.  Respondent and Complainant’s dealership arrangement was lawfully terminated and Respondent is no longer authorized to use any marks owned by Complainant.

 

FINDINGS

The Panel finds that that the present dispute entails issues of contract performance and interpretation of a distributorship agreement entered into by the Parties, which issues are beyond the scope of the UDRP Policy.

 

DISCUSSION

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

 

The Panel notes that as seen above, the Parties are coincident that Respondent was a distributor of Complainant`s products covered by the ENGEL COOLERS mark.   The Parties however appear to disagree over the performance and/or interpretation of this distributorship agreement, under which Respondent asserts rights in the disputed domain name, and which Complainant revoked on April 4, 2016, adding that Respondent is holding the disputed domain name for the purpose of maliciously depriving Complainant of its use.  For its part, Respondent argues that Complainant`s statement about the revocation proves that at least until April 4, 2016 Respondent`s registration and use of the disputed domain name was not in bad faith. The Panel also notes that Complainant submitted as evidence a printout of Respondent`s website at the disputed domain name dated June 6, 2016, where Respondent appears to be offering Engel coolers exclusively, while it presents itself as “the most trusted USA supplier of all Engel products”, a representation which is consistent with Respondent`s contention that it was acting as a distributor of Complainant`s products covered by the ENGEL trademark, and that it continued to do so after April 4, 2016, the date of revocation of the distribution agreement by Complainant. 

 

Based exclusively upon the existing casefile, the Panel believes that it should not apply the Policy to the present dispute, which instead requires to establish whether or not Respondent`s registration and use of the disputed domain name website is violating the distributorship agreement including its revocation.  In other words, 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 extent and effects of their relationship under the distributorship agreement, including the effects of Complainant `s revocation of April 4, 2016.  The Panel is of the opinion that this 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 (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.” 

 

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 (Forum 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 concludes that the instant dispute contains a question of contractual interpretation, and thus falls outside the scope of the UDRP.  Accordingly, the Panel need not consider the three requirements of the Policy.

 

DECISION

For the reasons stated above, the remedy of transfer is DENIED and the Complaint is DISMISSED.

 

 

Roberto A. Bianchi, Panelist

Date: July 5, 2016