Sally Anderson / Pilates International Pty Ltd v. Anne-Maree Jones / Ravello Australia Pty Ltd
Claim Number: FA1805001786852
Complainant is Sally Anderson / Pilates International Pty Ltd (“Complainant”), Australia. Respondent is Anne-Maree Jones / Ravello Australia Pty Ltd (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pilatesint.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Mrs. Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 15, 2018; the Forum received payment on May 15, 2018.
On May 17, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <pilatesint.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 May 22, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 2018 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@pilatesint.com. Also on May 22, 2018, 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 mail 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 June 5, 2018.
An Additional Submission was received from Complainant on June 6, 2018; and another Additional Submission was received from Respondent on June 16, 2018.
On June 28, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nathalie Dreyfus 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Pilates International Pty Lid., owns and operates a Pilates studio and training center in connection with the alleged PILATES INT mark. Complainant and Respondent engaged in a license agreement as part of a joint venture, but due to a failure in business relations, this agreement was rescinded. Respondent claims to use Complainant’s mark, logo, brand, and business titles with the <pilatesint.com> domain name.
According to Complainant, Respondent has no rights or legitimate interests in the <pilatesint.com> domain name. Complainant claims that Respondent is not authorized to use Complainant’s mark and register the disputed domain name without Complainant’s consent. Respondent is not affiliated with Complainant as its license agreement was rescinded.
Complainant further states that Respondent has registered and is using the <pilatesint.com> domain name in bad faith. Respondent registered the disputed domain name on behalf of Complainant, but after a breach of contract, Respondent’s license was revoked. Respondent was given ten (10) days starting from November 1, 2018 to transfer the disputed domain name. Respondent still retains control of the disputed domain name and trades off the use of Complainant’s brand and domain ownership.
B. Respondent
Respondent is the founder, managing director, and principal shareholder of the Ravello Australia Pty, Ltd., which operates Pilates and related workout studios and training centers. Respondent relationship with Complainant goes back to 2000, when Respondent was taking a Pilates class with Complainant. Respondent claims to have retained long-established business relations with Complainant.
Complainant’s dispute with Respondent in regards to the <pilatesint.com> domain name is part of a broader dispute, or more specifically a variety of contractual disputes. Since the registration of the disputed domain name in 2008, Respondent has held and operated the website for its Pilates business. Complainant did authorize Respondent to register the disputed domain name and use the PILATES INT mark as part of its license agreement. Respondent claims to make a bona fide offering of goods or services and is commonly known by the disputed domain name.
C. Additional Submissions
Complainant’s and Respondent’s additional submissions specifically relate to the broader dispute, which this Decision reflects below as part of the preliminary issue.
Respondent first registered the <pilatesint.com> domain names on October 25, 2001.
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: Trademark Dispute Outside the Scope of the UDRP
Respondent argues that Complainant’s complaint is part of a broader a more serious dispute that may require formal legal proceedings.
According to Respondent, there is a dispute involving other domain names. Moreover, there is a dispute regarding the use of the WELLFIT business name and ownership.
Furthermore, other troubled relationships link Complainant to Respondent. In fact, Respondent claims to be in breach of contract of the License Agreement dated December 21, 2006 as there was a failure to perform several obligations and duties. Respondent further argues, that there is money owed by Complainant to Respondent, and that Complainant conducted in an unauthorized and improper manner towards Respondent’s employees. According to him, Complainant has made unjustified threats and inappropriate pressure against Respondent’s Internet Provider, Sarah O’Bryan and has acted improperly by removing directors of the Joint Venture PilatesITC Pty. Limited;
Complainant also claims that the dispute is a part of a larger contractual dispute that involves a license agreement between the parties, by arguing that Respondent registered the disputed domain name as part of its licensee agreement, but this agreement was rescinded;
Complainant further claims that Respondent was given ten (10) days starting from November 1, 2018 to hand back all use of brand, collateral, domains, and any use of the domain names to Complainant; and that the Registrant is acting on his behalf in full knowledge that he does not have any rights to use the disputed domain name.
The Panel emphasizes that the above submissions are made by the parties and that the Panel makes no judgment whatsoever about their validity.
In this instance, the Panel has had to consider if the real dispute between the parties is a business and/or contractual dispute between two companies that falls outside the scope of the UDRP.
In Love v. Barnett, FA 944826 (Forum May 14, 2007), the panel stated:
“A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.”
Furthermore, in AirMax Construçoes Aeronáuticas LTDA v. Richard Rofe, FA 1712001763605 (Forum February 9, 2018 ), the panel added:
“If, however, the dispute is in substance a commercial dispute and only peripherally concerns a domain name, as where the domain name is one of the assets of a business about which there is a wider dispute, the Panel has to decide whether it is possible in any real sense to separate the purely domain name issues from the wider commercial dispute. Frequently, this cannot be done for the reason that if it attempts to do so, the Panel will be trespassing on wider issues over which it has no jurisdiction and which it would be trying to resolve without the powers of a court, which it clearly does not have.”
The Panel concludes that the present case is clearly one that is in substance a wider commercial dispute where the issues concerning the domain name can be resolved only by examining and resolving issues that go far beyond the domain name issues. Those issues are aspects of a wider and complicated commercial dispute over which the Panel has no jurisdiction.
According to the previous panels, complex cases such as the one presented here are better decided by the courts than by a UDRP panel. Thus, the Love panel concluded that:
“When 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.”
The panel in Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning. Thus:
“[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 (Forum 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 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 the Complainant and the Respondent was one of employer-employee or one of partnership, which determination falls outside the scope of the Policy.”
Based upon the reasoning outlined in the aforementioned cases, numerous other decisions and the record, the Panel concludes that the instant dispute contains many questions of contractual interpretation. That in itself is a ground for dismissing the Complaint for want of jurisdiction 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 controversy grounded exclusively on 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”).
For all of these reasons the Panel is of the opinion that the dispute is outside the jurisdiction of the UDRP and the Complaint cannot proceed.
There is therefore no need for the customary UDRP examination of the three elements that must be proved for a claim to succeed under the Policy. The proper action that was taken in the case of Bracemart, LLC v. Drew Lima, FA 1494699 (Forum Mar. 28, 2013) is to dismiss the Complaint for want of jurisdiction and to order that the remedy of transfer of the domain name be denied.
For all the foregoing reasons, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <pilatesint.com> domain name REMAIN WITH Respondent.
Nathalie Dreyfus, Panelist
Dated: 06-25-2018
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