YourTurf, Inc. v. Your Turf c/o Bill
Gowan
Claim
Number: FA0504000462460
Complainant is YourTurf, Inc. (“Complainant”), P.O.
Box 11597, Newport Beach, CA 92658.
Respondent is Your Turf c/o Bill Gowan (“Respondent”), 58 South Downy Circle Willow, The
Woodlands, TX 77382.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <yourturf.net>, registered with Register.com.
The
undersigned certifies that r she has acted independently and impartially and to
the best of her knowledge has no known conflict in serving as Panelist in this
proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
12, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 15, 2005.
On
April 12, 2005, Register.com confirmed by e-mail to the National Arbitration
Forum that the domain name <yourturf.net> is registered with Register.com
and that Respondent is the current registrant of the name. Register.com has verified that Respondent is
bound by the Register.com registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
April 21, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 11, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@yourturf.net by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
May 16, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Sandra Franklin
as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <yourturf.net>
domain name is confusingly similar to Complainant’s YOURTURF, INC. mark.
2. Respondent does not have any rights or
legitimate interests in the <yourturf.net> domain name.
3. Respondent registered and used the <yourturf.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
On August 1,
2004, Respondent registered the <yourturf.net> domain name on
behalf of Complainant. According to
Complainant, the sole purpose of Respondent in registering the domain name was
to secure the name for Complainant’s company, YourTurf, Inc. Complainant reimbursed Respondent for the
domain name registration, evidenced by a company invoice. See Complainant Exhibit 3. The domain name has always resolved to a
website operated by YourTurf, Inc.
YourTurf, Inc.
is a California corporation that sells and installs synthetic turf. Complainant commenced company operations
after its first organizational meeting that took place on August 4, 2004. At that meeting, Respondent was elected Vice
President of Marketing for YourTurf, Inc.
Respondent was subsequently removed from that position.
Since Respondent
was removed from office, Complainant has repeatedly requested that Respondent
transfer the disputed domain name registration. Respondent has repeatedly denied such requests. Respondent remains a minority shareholder in
Complainant’s company.
Complainant
filed a registration application for the YOURTURF, INC. mark with the U.S.
Patent and Trademark Office on March 29, 2005 in connection with “artificial
turf” (Ser. No. 78,597,779).
Complainant represented to the USPTO in the trademark application that
the YOURTURF, INC. mark has been used in commerce since August 15, 2004.
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."
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(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
It has been said that the
Policy “establishes a
streamlined, inexpensive administrative dispute-resolution procedure intended
only for the relatively narrow class of cases of ‘abusive registrations.’” ICANN
Second Staff Report on Implementation Documents for the Uniform Dispute
Resolution Policy,
October 24, 1999, www.icann.org/udrp/udrp-second-staff-report-24oct99.htm, at
paragraph 4.1(c).
Prior decisions
under the Policy have held that certain issues exceed the scope of the Policy
and are more properly resolved in courts of law. Among these issues are contractual disputes, breaches of
fiduciary duties, employer/employee disputes, and other business disputes. See Discover New England v. Avanti Group, Inc. FA 123886
(Nat. Arb. Forum Nov. 6, 2002) (finding the dispute outside the scope of the
UDRP because the dispute centered on the interpretation of contractual language
and whether or not a breach occurred); see
also Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum
Sept. 1, 2000) (dispute concerning employee’s registration of domain name in
his own name and subsequent refusal to transfer it to employer raises issues of
breach of contract and breach of fiduciary duty that are more appropriately
decided in court, not before a UDRP Panel); see
also Thread.com, LLC v. Poploff,
D2000-1470 (WIPO Jan. 5, 2001) (refusing to transfer the domain name and
stating that the ICANN Policy does not apply because attempting “to shoehorn
what is essentially a business dispute between former partners into a
proceeding to adjudicate cybersquatting is, at its core, misguided, if not a
misuse of the Policy”).
The instant case
implicates the agreement between Complainant and Respondent pertaining to the
disputed domain name registration, as well as possible breaches of fiduciary
duties of a former corporate officer and current minority shareholder, among
other issues. Panels have consistently
found that the resolution of such issues are more properly resolved in courts
of law than under the Policy. As this
Panel previously stated in Thump Records, Inc. v. WebPros, FA 446911
(Nat. Arb. Forum May 11, 2005):
Whatever
the Panel’s thoughts on Respondent’s alleged violations of its agreement with
Complainant, this Panel is moved to act not by sentiment, but by
authority. The limited scope of the
Policy simply does not grant such authority to panels to resolve disputes that
hinge on contractual provisions, breaches of fiduciary relationships, fraud,
and the like.
Likewise,
another panelist once stated the following: “Complainant charges that
Respondent engaged in misconduct that would possibly implicate such legal
claims as misrepresentation, fraud, breach of contract, or even breach of a
fiduciary duty. Thus, this dispute is
not covered by the Policy.” Drayton Nay v. Ice Inc., FA 400432 (Nat.
Arb. Forum Mar. 16, 2005).
Therefore, the
Panel finds that this dispute exceeds the scope of the Policy.
Even if this
dispute were not outside the scope of the Policy, however, Complainant fails on
the elements of the Policy.
Panels have held
that Policy ¶ 4(a)(i) requires a complainant to establish rights in a trademark
or service mark that predates the disputed domain name registration. See Abt Elecs., Inc. v.
Motherboards.com, FA 221239 (Nat. Arb. Forum Feb. 20, 2004)
rejecting the Travant Solutions Inc.
approach to Policy ¶ 4(a)(i) and agreeing with the "vast majority of
decisions" that Complainant's rights must predate Respondent's
registration of a domain name in order for Complainant to prevail; see also B&V
Assoc., Inc. v. Internet Waterway, Inc., FA
147531 (Nat. Arb. Forum Apr. 15, 2003) (concluding that Policy
¶ 4(a)(i) “assumes that Complainant's rights must predate Respondent's domain
name registration” because the Policy “was intended to protect against
infringement of existing trademark rights”); see also Transpark
LLC v. Network Admin., FA 135602 (Nat. Arb. Forum Jan. 21, 2003)
(finding that Complainant could not establish rights in its relied upon mark
pursuant to Policy ¶ 4(a)(i) because
Respondent’s domain name registration
predated Complainant’s trademark rights); see also Chum Ltd. v. Kashchum
Café, AF-0984 (eResolution Oct. 26, 2001) (finding that Complainant lacked
rights pursuant to Policy ¶ 4(a)(i) because Complainant's registration date for
its trademark was more than two years after Respondent’s domain name
registration); see also Planetfone, Inc. v. 1Soft Corp., FA
171259 (Nat. Arb. Forum Sept. 10, 2003) (“As Complainants have not shown that their rights pre-date
Registrant's domain name, Complainants have not satisfied paragraph 4(a)(i) of
the Policy”).
Complainant bases its
trademark rights in the YOURTURF, INC. mark.
Complainant has filed a trademark registration application with the U.S.
Patent and Trademark Office for the YOURTURF, INC. mark. The trademark application states that the
YOURTURF, INC. mark has been used in commerce since August 15, 2004. Yet Respondent registered the disputed
domain name on August 1, 2004.
Therefore, since Complainant’s alleged trademark rights did not commence
prior to Respondent’s registration of the disputed domain name, the Panel may
find that Complainant cannot establish Policy ¶ 4(a)(i) under the holdings of
prior decisions under the Policy.
Since the Panel has found
that the current dispute exceeds the scope of the Policy, Complainant lacks
priority rights under Policy ¶ 4(a)(i), and Respondent could not have
registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii), it is unnecessary for the Panel to
analyze whether Respondent has rights or legitimate interests in the domain
name under Policy ¶ 4(a)(ii). See Creative Curb v. Edgetec Int'l Pty. Ltd.,
FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that, because Complainant
must prove all three elements under the Policy, Complainant's failure to prove
one of the elements makes further inquiry into the remaining elements
unnecessary).
To be a violation of Policy ¶
4(a)(iii), a respondent must register and use a domain name in bad
faith. According to Complainant itself,
at the time Respondent registered the disputed domain name, “Respondent was
acting on behalf of the Company…[and] Respondent’s sole purpose in registering
the domain name was to secure the name for the Company and to promote its business
interests.” Complaint at ¶
5(a). Since Complainant concedes
Respondent registered the disputed domain name pursuant to an agreement between
the parties, the Panel finds that Respondent did not register the domain name
in bad faith. See Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (finding
that Respondent did not register the disputed domain name in bad faith where it
"registered the Domain Name with the full consent and knowledge of
Complainant" and therefore "did not have the requisite bad faith when
he registered the Domain Name, which is an express requirement of the
Policy"); see also Eddy’s (Nottingham) Ltd v. Smith,
D2000-0789 (WIPO Sept. 7, 2000) (finding no bad faith registration of the
domain name where Respondent registered the domain name in good faith, without
objection by Complainant, and in the interest of promoting Complainant’s
business).
Moreover, as
stated previously, Complainant’s alleged trademark rights post-date the
disputed domain name registration.
Panels have found that “the
trademark must predate the domain name” pursuant to Policy ¶ 4(a)(iii) for the
domain name to have been registered and used in bad faith. See
Ode v. Intership Ltd.,
D2001-0074 (WIPO May 1, 2001); see also Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc.,
D2000-0174 (WIPO May 26, 2000) (finding no bad faith where Respondent
registered the domain prior to Complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri,
D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where Respondent
registered the domain name in question before application and commencement of
use of the trademark by Complainant).
Therefore, the
Panel finds that Complainant has failed to establish Policy ¶ 4(a)(iii).
Finding that
this dispute exceeds the scope of the Policy and that Complainant has failed to
establish all three elements required under the ICANN Policy, the Panel
concludes that relief shall be DENIED.
Sandra Franklin, Panelist
Dated:
May 30, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum