Qycell Corporation v. Tom Schultz
Claim Number: FA1607001682939
Complainant is Qycell Corporation (“Complainant”), represented by Michael M. Ahmadshahi, California, USA. Respondent is Tom Schultz (“Respondent”), represented by Kenneth A. Linzer of Hobart Linzer LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <qycell.com>, registered with Register.com, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 8, 2016; the Forum received payment on July 8, 2016.
On July 8, 2016, Register.com, Inc. confirmed by e-mail to the Forum that the <qycell.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 July 11, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 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@qycell.com. Also on July 11, 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 August 5, 2016.
An additional Submission was received was received from Complainant in compliance with Supplemental Rule 7.
On August 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the mark QYCELL in connection with the marketing of its crosslinked polyethylene foam products to the automotive, appliances, exercise/gym mats, footwear, medical and other industries.
Complainant was the holder of a registration for the QYCELL trademark, which was on file with the United States Patent and Trademark Office (Registry No. 2,977,444, registered July 26, 2005).
That registration was cancelled effective January 22, 2015.
Complainant has expended substantial sums of money in promoting and advertising its goods under the QYCELL mark, and therefore has acquired common law rights in the mark from its first use in commerce on June 15, 2003.
On April 17, 2003, Respondent, a former employee of Complainant, registered in his sole name the domain name <qycell.com> while acting within the scope of his employment.
The domain name is substantively identical to Complainant’s QYCELL mark.
From the time of its registration, the domain name was employed by Complainant to host its business website, and that use continues to the present.
In 2005, Complainant and Respondent became parties to civil litigation which resulted in Respondent’s dismissal from his employment with the company.
Following the eventual settlement of that litigation, Complainant demanded that Respondent surrender to it the registration of the domain name, which Respondent has refused to do unless paid the sum of $500,000.
Respondent has not been commonly known by the domain name.
Respondent has no rights to or legitimate interests in the domain name.
For years following the time of its registration, the domain name was used legitimately by Complainant.
Respondent is now using the domain name in bad faith by refusing to relinquish it to Complainant.
B. Respondent
From 2003 to 2006 Respondent served as president and chief executive officer of Complainant.
During that period, Respondent licensed the disputed domain name to Complainant without compensation in the form of royalties.
Late in 2005, Complainant stopped paying Respondent’s executive salary, reneged on its long-standing promise to issue him a one-third share of equity in the business and filed suit against him.
In August of 2007, Complainant and Respondent settled the litigation between them by means of a comprehensive written settlement agreement the terms of which were negotiated by their respective attorneys.
That agreement obligates Complainant to pay Respondent $500,000 already owed to him.
The same agreement included a release and waiver of all present and future claims between the parties.
The parties also entered into an oral side agreement allowing Complainant to use and maintain the website resolving from the domain name royalty free until such time as Complainant should pay Respondent the money due to him.
In May of 2016, Complainant asked Respondent what sum of money he would accept for relinquishment of all of his rights in the domain name.
Respondent replied that he would accept the $500,000 amount owed to him, whereupon Complainant commenced this proceeding.
The controversy between Complainant and Respondent is a business and contractual dispute that falls outside the scope of the UDRP, and this proceeding should therefore be dismissed by the Panel.
C. Additional Submissions
In its Additional Submission, Complainant asserts, among other things, that:
The only issue to be decided in this proceeding is the respective ownership interests of the parties in the QYCELL trademark.
The provisions of California law respecting the waiver of claims in civil litigation do not apply to the question of the ownership of the QYCELL trademark.
Complainant was unaware of its inability to access and exercise control over the domain name as registrant at the time the described litigation settlement agreement, with its release and waiver provisions, was entered by the parties.
DISCUSSION AND FINDINGS
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.”
From our review of the submissions of the parties, it is clear that this is not a dispute within the contemplation of the Policy, which is intended solely to address instances of “cyber-squatting,” defined as the abusive registration and use of Internet domain names. Rather, this is a dispute as to the proper interpretation and application of a business-related litigation settlement agreement, which should be confided to the jurisdiction of the appropriate local or national courts. See Nintendo of America Inc. v. Alex Jones, D2000-0998 (WIPO Nov. 17, 2000):
Terry F. Peppard, Panelist
Dated: August 22, 2016
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