Invictus Global Management, LLC v. Aaron Goldberg
Claim Number: FA2005001895112
Complainant is Invictus Global Management, LLC (“Complainant”), represented by Jessica L. Roe, USA. Respondent is Aaron Goldberg (“Respondent”), represented by Craig Stuart Lanza, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <igmllc.com>, registered with GoDaddy.com, LLC.
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.
Ms. Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 6, 2020; the Forum received payment on May 6, 2020.
On May 7, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <igmllc.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 May 11, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2020 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@igmllc.com. Also on May 11, 2020, 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 May 28, 2020.
On June 2, 2020, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant's company is an asset management company incorporated in the State of Delaware. The disputed domain name, <igmllc.com>, is Complainant’s website used for its business.
Complainant alleges that Respondent was one of its employees. And as a condition of his employment, Respondent was subject to a Confidential Information and Invention Assignment Agreement.
Complainant asserts that Respondent purchased the disputed domain name on a company credit card that is owned and paid for by Complainant. Complainant alleges that it owns the disputed domain name because it paid for it and Respondent registered it in the course of its employment but in his personal name.
Subsequently, Respondent was terminated by Complainant on February 15, 2020. The Assignment of Confidential Information and Inventions Agreement required Respondent to provide or return to Complainant all of its property, including the proceeds of its work and work performed for others.
Moreover, despite repeated requests to Respondent to return the domain name information to Complainant, Respondent has refused. Complainant finally states that Respondent has attempted to extort money from Complainant in return for Complainant’s rightful property.
B. Respondent
Respondent argues that he was hired as a consultant in Complainant’s company on September 6, 2019. Respondent purchased the disputed domain name <igmllc.com>, 7 months prior to being hired as a consultant on February 2, 2019. As the result, Respondent considers himself as being the legitimate owner of the disputed domain name.
Moreover, the credit card used to purchase the disputed domain name was Respondent's personal visa card. Respondent alleges that Complainant’s company granted a credit card to Respondent in September 2019, thus 7 months after the purchase of the disputed domain name. The credit card provided was an American Express card, not a visa.
Therefore, Respondent argues that he personally owns the disputed domain as it was purchased with his personal Visa card ending in 1330.
Respondent states that Complainant's credit card statement proving the purchase of the disputed domain name on December 3, 2019 is false. It is actually the monthly payment for email hosting services while the domain name was purchased 10 months ago.
The Confidential Information and Invention Assignment Agreement between the parties was only concluded around September 6, 2019 and clearly does not cover the period prior to the employment of the Respondent. Again, Respondent alleges that he rightfully and personally owns the disputed domain name and that he has neither acquired it in bad faith, nor is using it in bad faith .
Finally, with regard to the information on the disputed domain name requested by Complainant, which Respondent refused to provide, and the attempt to extort money, this is also false and a blatant distortion of the facts.
Respondent states that the representatives of the parties discussed a comprehensive financial settlement covering many issues such as unpaid wages, severance pay, and future cooperation.
Complainant is Invictus Global Management, LLC, an asset management company incorporated in the State of Delaware, dated of January 8, 2019.
Respondent is Aaron Goldberg, a former employee of Complainant, who registered the disputed domain name <igmllc.com>, 7 months prior to being hired as a consultant, on February 2, 2019
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.
Complainant created its Invictus Global Management company before Respondent registered the domain name <igmllc.com>.
However, Complainant has no trademark rights, neither in the sign Invictus Global Management, nor in the sign IGM.
In the disputed domain name, the term “IGM” refers to the acronym of the company and “LLC” to its form. It could be considered that the disputed domain name is confusingly similar to the “IGM” sign and therefore to “Invictus Global Management”.
Besides, Complainant argues that it is an asset management company incorporated in the State of Delaware and that the <igmllc.com> domain name is Complainant’s website for Complainant’s business. Policy ¶ 4(a)(i) does not require a Complainant to own a trademark prior to a Respondent’s domain name registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). In order to establish common law rights in a mark, Complainant must generally prove that the mark has generated secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Complainant does not specifically assert it has common law rights in the disputed domain name, but Complainant does provide Complainant’s certificate of formation for the business. However, Complainant does not put forward any specific arguments concerning confusing identity or similarity, the disputed domain name incorporates the mark in its entirety. The incorporation of a mark in its entirety does not sufficiently distinguish a mark under the Policy ¶ (a)(i). It is the Forum decision of July 27, 2017 Marquette Golf Club v. Al Perkins, FA 1738263 which states that "Where the Respondent's domain name incorporates a mark in its entirety and simply adds a generic Top-Level Domain (gTLD), ".com", the disputed domain name is identical to the Complainant's mark". The mark is confusingly similar to the disputed domain name.
Therefore, Complainant does not prove any common law trademark right in the “IGM” sign since there is no evidence of the continuous use of this sign as a trademark. The evidence that the company has been created before Respondent registered the domain name is not enough to prove it has common law rights and does not constitute a prior right.
However, to find a confusing similarity between Complainant’s rights and the disputed domain name, Complainant should have proven common law trademark right, which it did not.
Thus, the Panel finds there is no confusing similarity between Complainant’s rights and the disputed domain name under Policy ¶ 4(a)(i).
Since the first requirement is not met, there should be no need to consider the other conditions. Nevertheless, we will still analyze the other two criteria.
Since the Complainant’s company is known under the disputed domain name, Respondent no longer has rights or legitimate interest in this domain name. Thus, both parties have signed Confidential Information and Invention Assignment Agreement. In this agreement, it is stipulated in Article 4 Proprietary Rights, that all intellectual property rights are the sole and exclusive property of the company.
Complainant alleges that Respondent is one of its former employees and that Respondent purchased the Disputed Domain Name with a company credit card paid for by Complainant. Furthermore, it argues that the disputed domain name has been registered during the course of its employment with Complainant. However, since Respondent registered the disputed domain name before starting to work for Complainant as a consultant, it could not be stated it is Complainant’s ownership.
Nevertheless, former employees of a complainant may cease to have rights or legitimate interest in a disputed domain name under Policy ¶ 4(a)(ii). See Dominic Vetere v. DAVE CARRIER / DC FINANCE INC, FA 1707259 (Forum Jan. 24, 2017)(holding that “former employees of a company no longer hold any rights or legitimate interests in the company’s mark”); see also Jaguar Land Rover Limited v. David Cullens, FA 1618499 (Forum June 15, 2015) (holding that “even an unauthorized reseller may under certain circumstances have a legitimate interest in a domain name that reflects another’s trademark,” but nonetheless finding the respondent lacked rights and legitimate interests in the domain name because “any legitimate interest Respondent then had must have ceased upon Respondent leaving that employment.”). Complainant argues Respondent was terminated February 15, 2020 and per Respondent’s Confidential Information and Invention Assignment Agreement with Complainant, Respondent must return all of Complainant’s property. See Compl. Annex 2.
Furthermore, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. Complainant has sufficiently alleged that Respondent has no rights or legitimate interests in the disputed domain name, so there is no need to consider Respondent's arguments. Respondent does not try to prove it has such rights or legitimate interests in the disputed domain name.
It can therefore be concluded that Respondent has no rights or legitimate interest in the disputed domain name, pursuant to Policy ¶ 4(a)(ii).
Panel finds that the argument based on the refusal to return the disputed domain name and the attempt to extort money by Respondent is not sufficient. Complainant does not provide proof of Respondent’s bad faith in the registration and demand beyond the allegations in the Complainant.
Complainant failed to meet the burden of proof for registration and bad faith use under paragraph 4(a)(iii) of the Policy. See Forum decision of February 16, 2015 Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp, FA 1597388 stated that "Complainant makes conclusive allegations of bad faith, but has not provided specific evidence to support a finding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple bases, do not prove bad faith". Also see, the Forum decision of July 3, 2015 Chris Pearson v. Domain Admin / Automattic, Inc, FA 1613723 finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding.
Furthermore, Policy ¶ 4(a)(iii) requires proof of bad faith registration and use. This is indeed what is stated in the Forum decision of June 19, 2017 Platterz v. Andrew Melcher, FA 1729887 "Whatever the merits of the Petitioner's arguments that the Respondent is using the Domain Name in bad faith, these arguments are irrelevant, as the Petitioner must prove both registration and use in bad faith in order to prevail.
In this case, Complainant did not prove any of those requirements. It only argues that Respondent tried to extort money from Complainant and that the disputed domain name should revert to it. Such allegations should revert before the courts but appear to be outside the scope of UDRP proceedings.
Panels does not find any evidence of registration in bad faith and use in bad faith of the disputed domain name.
Consequently, the Panel finds Complainant has not satisfied Policy ¶ 4(a)(iii).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <igmllc.com> domain name shall REMAIN WITH Respondent.
Nathalie Dreyfus, Panelist
Dated: June 16, 2020
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