Indoor Air Technologies, Inc. v. Casey Janke / My Tech Company LLC / Privacy Administrator / Anonymize, Inc.
Claim Number: FA1701001714547
Complainant is Indoor Air Technologies, Inc. (“Complainant”), New York, USA. Respondent is Casey Janke / My Tech Company LLC / Privacy Administrator / Anonymize, Inc. (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <iatcorpusa.com>, <indoorairtechnologies.net>, and <iatcorpusa.net>, registered with Epik, Inc.
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.
Dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 27, 2017; the Forum received payment on January 27, 2017.
On January 27, 2017, Epik, Inc. confirmed by e-mail to the Forum that the <iatcorpusa.com>, <indoorairtechnologies.net>, and <iatcorpusa.net> domain names are registered with Epik, Inc. and that Respondent is the current registrant of the names. Epik, Inc. has verified that Respondent is bound by the Epik, Inc. 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 February 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2017 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@iatcorpusa.com, postmaster@indoorairtechnologies.net, postmaster@iatcorpusa.net. Also on February 2, 2017, 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 February 21, 2017.
Complainant’s Additional Submission was received on February 27, 2017 and determined to be in compliance with the Rules.
Respondent's Additional Submission was received on March 5, 2017 and determined to be in compliance with the Rules.
On March 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Katalin Szamosi 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 names be transferred from Respondent to Complainant.
A. Complainant
In the complaint, Complainant alleges the following.
Complainant, Indoor Air Technologies, Inc., operates in conjunction with services of design, installation, and maintenance of air-handling systems. Complainant has acquired common law rights through its usage of both the INDOOR AIR TECHNOLOGIES and IAT marks for the purposes of Policy ¶ 4(a)(i). Respondent’s <indoorairtechnologies.net> is Complainant’s company name, INDOOR AIR TECHNOLOGIES, and merely adds “.net.” Further, <iatcorpusa.com> and <iatcorpusa.net> consist of the IAT mark, with the addition of “corp” (descriptive in that it identifies Complainant as a corporation), and “USA,” a geographically descriptive term, along with either “.com” or “.net.”
Respondent has no rights or legitimate interests in <iatcorpusa.com>, <indoorairtechnologies.net>, and <iatcorpusa.net>. Respondent is not commonly known by the domain names. Respondent acted as a third-party IT Support for Complainant, and registered the domain names in its role as IT Support for Complainant solely for Complainant’s use. Complainant did utilize the domain names until the work relationship ended in November 2016.
Respondent has caused the domain names to host links to Complainant’s competitors, which is not a bona fide offering of goods or services or any legitimate noncommercial or fair use. Respondent refused to transfer the domain names to Complainant, and instead requested Complainant pay it for the domain names—$5,000 for the “.net” domain names and an unspecified amount for the “.com” domain name.
Respondent registered and used the domain names in bad faith. Respondent acknowledged that the domain names were registered solely for ease of access and intent/willingness to transfer. Respondent registered the domain names in bad faith because it led Complainant to believe that it was registering them on Complainant’s behalf. Respondent requested “lease” payments of $12,000 for the domain names, in violation of Policy ¶ 4(b)(i). Further, Respondent has a portfolio of approximately 90 domain names that incorporate third party marks, demonstrating Policy ¶ 4(b)(ii). Further, Respondent has threatened to disrupt Complainant’s use of email, in violation of Policy ¶ 4(b)(iii). Respondent has also changed the registration information for <iatcorpusa.com> to reflect anonymity, further indicating bad faith for that domain under Policy ¶ 4(a)(iii).
B. Respondent
Respondent concedes that <indoorairtechnologies.net> is “extremely similar” to Complainant’s company name of INDOOR AIR TECHNOLOGIES. Complainant’s assertion that it has rights to the IAT mark is a joke. The only place Complainant is known as IAT is in its own office.
Respondent advised Complainant that it should purchase and take control of several domain names, and once this was accomplished, Respondent caused the domain names to forward to Complainant’s home website. Respondent was engaged to register “good domain names” for Complainant in the hopes that Complainant would accept it for use. Respondent was never directed to register any domain name on behalf of Complainant, if it did, Respondent concedes Complainant would have rights to those domain names. Now that the business relationship has been severed, Complainant asserts a claim to domain names that it did not think it needed in the first place. Further, Respondent now plans on using the <iatcorpusa.com> and <iatcorpusa.net> domain names to provide Information Automation Technologies for its clients to provide automation services for desktops, servers, and the importing of data from vendors to QuickBooks. Respondent intends to utilize <indoorairtechnologies.net> for another “Indoor air technologies” company in a different state than New York. Currently, <indoorairtechnologies.net> is parked at <epik.com>, and has no say on the automated links that appear. All the domain names could be used nationally or globally because of their value in containing generic terms.
Respondent is an IT company that registers domain names that it feels it can provide web hosting, email hosting, WordPress Management, etc., it will register that domain name in good faith for the purpose of obtaining new clients. This is what it did for Complainant: registered the domain names in good faith for Complainant’s benefit. Respondent is not holding the domain names for consideration in excess of out-of-pocket costs; rather, Respondent has use for the domain names. Respondent’s offer to lease the domain names for $12,000 was not a demand or request, it was merely a response to Complainant’s question, “How much to make this go away?” Further, Respondent owns over 100 domain names which incorporate the names of its clients who utilize Respondent’s domain management services. Respondent also never threatened to disrupt Complainant’s email, it informed Complainant that its business could be disrupted if they didn’t do something. Complainant also resorted to threats of physical violence, which shows Complainant’s bad faith.
C. Additional Submissions
Complainant’s Additional Submission
In the additional submission, Complainant asserts and provides evidence that Complainant is known by IAT.
Complainant argues and presents evidence that Complainant was billed for the registration and renewal of the domain names. Respondent was engaged to manage Complainant’s domain names, not to register them in Complainant’s name and control for personal gain. It is bad faith to register domain names with a company’s name without their permission in an effort to retain control should the relationship dissolve. If Respondent was acting in good faith, it would have registered all domain names in Complainant’s name from the beginning as was done with <indoorairtechnologies.com>. Complainant did not threaten or bully Respondent.
Respondent’s Additional Submission
Respondent contends that it billed for the registration and renewal of the domain names. Respondent alleges that Complainant never gave Respondent any direction to purchase any specific domain on their behalf.
Respondent asserts that although Complainant uses the letters IAT on some of their company materials, but so do lot of other companies using a logo with the letters does not give Complainant exclusive use of the letter combination IAT or the domain name iatcorpusa.com.
Complainant, operates in conjunction with services of design, installation, and maintenance of air-handling systems under the company name Indoor Air Technologies, Inc.
At one time, the parties had a relationship and Respondent acted as IT Support for Complainant. No concrete agreement or contract between the parties was presented which would give indication to their relationship or their agreement concerning the disputed domain names. The relationship of the parties was terminated after which the dispute regarding the disputed domain names arose.
There are no registered marks related to either of the disputed domain names.
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: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Respondent did not contest that it is the holder of the domain name registrations for all three domain names, therefore the Panel finds that the disputed domain names are controlled by the same person.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
The Panel notes that the facts and accounts presented by the parties differ based on which party use those accounts to support their claim on the disputed domain names. The Panel finds that the submitted written evidence was inconclusive and in the absence of a contract or formal agreement, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible.
The Panel was only able to determine - on which both parties agreed - that Complainant engaged with Respondent to make use of Respondent’s IT services in developing and promoting Complainant’s business. However, the Parties disagree as to who terminated the relationship.
The Panel finds that similarly to the Love v. Barnett, FA 944826 (Forum May 14, 2007) case "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." therefore this is a business and/or contractual dispute between two companies that falls outside the scope of the UDRP.
The Panel also notes a previous decision in Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) in which the a previous panel concurred with the above 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.
The Panel finds that the disputed domain names were registered by Respondent during the business relationship with Complainant therefore the case does not raises any issues of abusive registration.
Based upon the aforementioned the Panel finds that the instant dispute contains a business dispute outside the scope of the UDRP, therefore it is not necessary for the Panel to consider the three elements of the Policy. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (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 (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 (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).
Having found that this dispute is outside the scope of the UDRP, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <iatcorpusa.com>, <indoorairtechnologies.net>, and <iatcorpusa.net> REMAIN WITH Respondent.
Dr. Katalin Szamosi, Panelist
Dated: March 14, 2017
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