Insolvency Services Group, Inc., As Assignee for the Benefit of Creditors of BIDZ.COM, INC. v. Leon Kuperman / LGK Consulting
Claim Number: FA1409001580768
Complainant is Insolvency Services Group, Inc., As Assignee for the Benefit of Creditors of BIDZ.COM, INC. (“Complainant”), represented by Philip Nulud of Buchalter Nemer, California, USA. Respondent is Leon Kuperman / LGK Consulting (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bids.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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 19, 2014; the National Arbitration Forum received payment on September 19, 2014.
On September 22, 2014, Godaddy.Com, LLC confirmed by e-mail to the National Arbitration Forum that the <bids.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 September 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 2014 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@bids.com. Also on September 25, 2014, 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 from a third party and determined to be complete on October 27, 2014.
A timely Additional Submission was received from Complainant on November 3, 2014. A timely Additional Submission was received from a third party on November 10, 2014.
On November 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
1. Respondent’s <bids.com> domain name is confusingly similar to Complainant’s BIDZ.COM mark.
2. Respondent does not have any rights or legitimate interests in the <bids.com> domain name.
3. Respondent registered and uses the <bids.com> domain name in bad faith.
B. Alleged Respondent Daniella Zinberg
1. Complainant does not have rights in the <bids.com> domain name.
2. Daniella Zinberg is the rightful owner of the <bids.com> domain name, which incorporates a generic word.
3. The <bids.com> domain name in not being used in bad faith.
4. This dispute is outside the scope of the UDRP, involving a complex business history.
C. Additional Submissions
1. Complainant argues that Daniella Zinberg is a third party with no standing in this proceeding, and maintains that Complainant acquired rights in the <bids.com> domain name through an Assignment for the benefit of creditors. Complainant states that there is no business dispute between Complainant and Zinberg.
2. Daniella Zinberg reiterates the generic nature of the word “bids” in the disputed domain name, and argues that it was intended that she be the listed owner of the <bids.com> domain name.
Complainant has rights in the registered BIDZ.COM trademark by virtue of an Assignment from BIDZ.COM, INC.
Respondent Leon Kuperman / LGK Consulting did not respond to the Complaint. Daniella Zinberg filed a response and an Additional Submission, but is not the listed owner of the disputed domain name and thus has no standing to file documents in this proceeding. Therefore, no Response has been filed.
The dispute over the <bids.com> is the subject of lengthy history and contractual obligations that are outside the scope of the UDRP.
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: Deficient Response
Complainant argues that the person submitting the response in this proceeding is not the listed registrant of the domain name, has never been the listed registrant of the domain name, and has no interest in the domain name to make her a proper Respondent to this proceeding. Complainant reiterates, in its Additional Submission, that the responding party is not the actual Respondent, and beyond self-serving statements, there is nothing in the record to suggest that Daniella Zinberg is the Respondent. The Panel agrees and finds that Daniella Zinberg has no standing in this proceeding, rejecting her argument, which is essentially that she should be the listed registrant. The Panel does not have the ability, under the UDRP, to correct who is listed as the registrant of a disputed domain name at the time the UDRP case is filed. The Respondent of record is Leon Kuperman / LGK Consulting. In Banco Mercantil del Norte, S.A., v. Servicios de Comunicacion En Linea, WIPO Case No. D2000-1215, the Panel decided a similar issue and held that only the registrant of record at the time a UDRP action is filed may file a Response and that any attempt to transfer a domain name after a UDRP action is filed is without force. See also ICANN Rule 1, defining “Respondent” as the “holder of a domain-name registration against which a complaint is initiated.” Thus, the Panel finds that there is no response in this case.
Without a response, the Panel relies on representations made in the Complaint and also in Complainant’s Additional Submission to decide the following additional preliminary matter.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
Complainant argues that this dispute is within the scope of the UDRP as a dispute between a former employee (Respondent Kuperman) who misappropriated the <bids.com> domain name for his own benefit. Without even noting Daniella Zinberg’s arguments on this point, the Panel finds that Complainant’s own statements suggest the existence of a complicated business dispute underlying the ownership of both the BIDZ.COM mark and the <bids.com> domain name. The Panel notes that Complainant did not even provide the Assignment document upon which it rests its rights in the BIDZ.COM mark until its Additional Submission. That Assignment document is not straightforward, particularly regarding the <bids.com> domain name, allegedly part of the assets of BIDZ.COM, INC. Complainant presents a convoluted history regarding who is listed as the registrant of the disputed domain name, and a complicated history of the winding down of BIDZ.COM, INC. Both the listed registrant of the disputed domain name and Daniella Zinberg have ties to BIDZ.COM, INC.; Leon Kuperman was the former President of BIDZ.Com, Inc. and Daniella Zinberg is allegedly the daughter of the founder of the company. Complainant also entertains the argument that it has not abandoned the use of the BIDZ.COM mark. Thus, many issues have been raised which would require proof more suited to the thorough scrutiny afforded in litigation.
Thus, the Panel finds that this is a business dispute that falls outside the scope of the UDRP. The panel in Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) held:
[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, FA 1494699 (Mar. 28, 2013), 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 also Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. 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 (Nat. Arb. 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 (Nat. Arb. 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).
As this is a dispute outside the UDRP, the Panel dismisses the Complaint.
Accordingly, it is Ordered that the <bids.com> domain name REMAIN WITH RESPONDENT.
Sandra J. Franklin, Panelist
Dated: November 13, 2014
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