Rexair LLC v. Vladimir Leon
Claim Number: FA2305002044372
Complainant is Rexair LLC (“Complainant”), represented by Jennifer Mikulina of McDermott Will & Emery LLP, Illinois, USA. Respondent is Vladimir Leon (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myrainbowsystem.com>, registered with GoDaddy.com, LLC.
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 Forum electronically on May 12, 2023; Forum received payment on May 12, 2023.
On May 15, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <myrainbowsystem.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 18, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 2023, 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@myrainbowsystem.com. Also on May 18, 2023, 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.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On June 13, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
Since 1936, Complainant has developed, made and marketed vacuum cleaners, floor scrubbers, upholstery cleaning machines, water extractors and other products designed to improve indoor environments.
Complainant holds a registration for the RAINBOW trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,963,161, registered May 17, 2011.
Complainant also has common law rights in the RAINBOW mark.
Respondent registered the domain name <myrainbowsystem.com> on May 31, 2013.
The domain name is confusingly similar to Complainant’s RAINBOW mark.
Respondent has not been commonly known by the domain name.
Respondent is not currently licensed or otherwise authorized by Complainant to use the RAINBOW Mark.
From May 8, 2006, through October 6, 2017, Respondent was an authorized sub-distributor of Complainant’s RAINBOW branded products pursuant to the terms of a written agreement.
Once its sub-distributor relationship came to an end, Respondent was contractually obligated to cease all use of the <myrainbowsystem.com> domain name.
However, not until May 1, 2023, did Respondent undertake in writing to end its use of the domain name as of May 5, 2023.
Respondent does not now use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The domain name no longer resolves to an active webpage, but it does resolve to a website that is described as being “under construction.”
Respondent has offered to sell the domain name to Complainant.
Respondent has no rights to or legitimate interests in the domain name.
Respondent knew of Complainant’s rights in the RAINBNOW mark prior to its registration of the domain name.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 Complaint and accompanying submissions, 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 dispute appears to be centered around the unwinding of a business agreement, which should be confided to the jurisdiction of the appropriate local or national courts. See, for example, Summit Industries, Inc. v. Jardine Performance Exhaust Inc., D2001-1001 (WIPO Oct. 15, 2001):
[T]he question presented is outside the purview of the UDRP, in that it involves questions of the extent of rights transferred and retained under a stock purchase agreement. Such questions should be determined in an arbitration conducted by agreement of the parties or by a court of law. Accordingly, the Complaint must be dismissed.
See also Nintendo of America Inc. v. Alex Jones, D2000-0998 (WIPO Nov. 17, 2000):
It is not the function of an ICANN Administrative Panel to resolve all issues concerning the use of intellectual property rights. Matters beyond the narrow purview of the Policy are for the courts of appropriate jurisdictions.
Further see Love v. Barnett, FA 944826 (Forum May 14, 2007):
A dispute, such as the present one, … is outside the scope of the Policy … [in that] 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.
DECISION
For the reasons indicated, it is Ordered that the Complaint herein is hereby DISMISSED.
Terry F. Peppard, Panelist
Dated: June 22, 2023
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