Welburn Gourd Farm, Inc. v. Patti Diaz
d/b/a California Gourds
Claim Number: FA0508000548237
PARTIES
Complainant
is Welburn Gourd Farm, Inc. (“Complainant”),
represented by Sarah J. Gardner, 2249 Manchester Avenue, Cardiff, CA
92007. Respondent is Patti Diaz d/b/a California Gourds (“Respondent”),
40635 D De Luz Road, Fallbrook, CA 92028.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain names at issue are <gourdzette.com>,
<thegourdzette.com>, and <californiagourds.com>
registered with Tucows Inc.
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.
Louis
E. Condon as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
25, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 29, 2005.
On
August 26, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the <gourdzette.com>,
<thegourdzette.com>, and <californiagourds.com>
domain names are registered with Tucows Inc. and that Respondent is the current
registrant of the name. Tucows Inc. has
verified that Respondent is bound by the Tucows Inc. 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
September 1, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 21, 2005 by which Respondent could file a Response to 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@gourdzette.com, postmaster@thegourdzette.com,
and postmaster@californiagourds.com by e-mail.
A
timely Response was received and determined to be complete on September 20,
2005.
Complainant’s timely additional
submission was received on September 26, 2005.
Respondent’s
timely additional submission was received on September 28, 2005. As noted
hereafter, both additional submissions were duly considered by the Panelist.
On September 29, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Louis E. Condon as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
Complainant
and Respondent both aver that Respondent was once Complainant’s employee. They also both agree that, subsequently,
their relationship was to change, and Respondent was to take over some aspect
of Complainant’s business, including on-line marketing. They disagree, however, on the specifics of
this change, including whether Respondent was acting as Complainant’s agent or
its own capacity when it registered the <gourdzette.com>,
<thegourdzette.com>, and <californiagourds.com>
domain names
Complainant
and Respondent agree that, in August 2005, Respondent accessed the account
information for the <gourdzette.com>,
<thegourdzette.com>, <californiagourds.com>, and <welburngourds.com> domain
names and changed the domain registrants to Respondent. Complainant and Respondent also agree that
Respondent subsequently changed the registrant information of the
<welburngourds.com> domain name back to reflect that of Complainant.
A.
Complainant
Complainant
argues that it originally registered the disputed domain names in 2003, along
with the <welburngourds.com> domain name. Complainant admits that it has not registered any of its trade
names as trademarks. Complainant, Welburn
Gourds, claims that it has traded under the name “California Gourds” and “the
Gourdzette” for years. Complainant
maintains that adding the “.com” generic top-level domain to Complainant’s mark
does not significantly distinguish the domain name from the mark.
In
its Supplemental Submission, Welburn Gourd Farm, Inc., admits it allowed
Respondent to use Complainant’s web-based technology (also referred to as
“technical infrastructure”) and reap the benefits of operating the web-based
business because this was mutually beneficial to both parties. However,
Complainant states that when it decided to turn over operation of the mail order business to Respondent, there was no
transfer of ownership interest in this technical infrastructure, because the
agreement between the parties was that Respondent would use the domain names, not own
them. By their verbal agreement Respondent was given the right to use the
technical infrastructure as a licensee.
B.
Respondent
Respondent
argues that it and Complainant agreed that Respondent would register the domain
names in Complainant’s name, and Respondent would “take over” the domain names
in the future. It supports this “agreement” with evidence that some of the
domain names were registered in Complainant’s name but with Respondent’s
address. Respondent claims ownership of
the Internet-based store of californiagourds.com and is presently a distributor
for several gourd farms. Respondent does
not claim to own “the mail order business portion of Welburn Gourd Farm, Inc.” In its response to Complainant’s
supplemental submission, Respondent states that she took over ownership and
operation of the technical infrastructure that was at one time owned and
operated by Complainant and managed by Respondent. Further, the technical infrastructure was purchased in payments
by Respondent in conjunction with the purchasing of computer hardware,
software, and all data and programming included.
In its supplemental response, Respondent
says Complainant’s statement of alleged generosity of “Respondent was given the
opportunity to earn all profits from this mail order business” was a result of
Complainant no longer having the desire to own and operate an Internet-based
store. Further, the reason for the lack of willingness to continue the
Internet-based business on the part of Complainant came from the resignation of
the Vice President, Phoebe Welburn, who assisted the President in overseeing
the Internet operation. With the Vice
President no longer involved with the Internet business, the President lacked
the skills to manage it efficiently, and therefore the President sought to end
the Internet-based portion of Welburn Gourd Farm, Inc. The President then
conferred with Respondent for its management and operational skills to find a solution
to his existing dilemma; to completely end the Internet-based portion of
Welburn Gourd Farm, Inc. or to find a distributor. The distributorship offered the most benefit to both parties. Therefore, Complainant sold several
computers, including the main server; the additional hardware and software; the
data included in the computers; the domain names of <welburngourds.com>, <thegourdzette.com>,
and <gourdzette.com>; the technical infrastructure and the
programming to Respondent due to the fact that Complainant no longer had a use
for them and no longer had the desire to own and operate an Internet-based
business.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the respondent is identical or confusingly similar to a
trademark or service mark in which the complainant has rights;
(2)
the 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.
FINDINGS
This
case pivots on which party is the rightful holder of the <gourdzette.com>, <thegourdzette.com>,
and <californiagourds.com> domain name registrations. The question may turn on tenets of agency
law, including issues of fiduciary duty, and/or contract law, both of which are
outside the scope of the UDRP.
Additionally, Complainant accuses Respondent of unlawfully changing the
domain name registrations of the disputed domain names, which may give rise to
potential civil or criminal issues of conversion. These are issues more
properly decided by a judge and/or jury. Accordingly, I find that this matter
is outside the scope of the UDRP. See
Sadoun v. Shoham, FA 206314 (Nat. Arb. Forum Jan. 6, 2004) (The Panel found
that the case’s issues “exceed the scope of the . . . Policy. The parties admit a prior relationship in
the business but disagree as to that relationship. Respondent may have engaged in fraudulent conduct in its dealings
with the registrar to the domain name.
Respondent stated an intent to bring suit over the ownership
issues. These issues are breach of
contract and breach of fiduciary issues between the parties and they are
matters to be determined in a court of law and not bay a UDRP Panel.”); 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 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 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
Panel makes no findings or decision as to the merits of the claims of either
party as they may be presented to a court of competent jurisdiction.
DECISION
Having
concluded that this matter is outside the scope of the UDRP, the Panel
concludes that relief should be DENIED.
Accordingly, it is Ordered that the <gourdzette.com>,
<thegourdzette.com>, and <californiagourds.com>
domain names be retained by Respondent pending an appropriate order by a Court
having jurisdiction thereof
Louis E. Condon, Panelist
Dated: October 11, 2005
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