DECISION

 

Kostel, LLC and Constantin Calugher v. mohamad atef

Claim Number: FA2405002100428

 

PARTIES

Complainant is Kostel, LLC and Constantin Calugher ("Complainant"), represented by Ilya R. Lapshin of IRL Legal Services, LLC, Massachusetts, USA. Respondent is mohamad atef ("Respondent"), represented by Neil Peluchette of Taft Stettinius & Hollister LLP, Indiana, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <alternativepods.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Steven M. Levy and Douglas M. Isenberg, Panelists, and Charles A. Kuechenmeister, Chair.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on May 31, 2024; Forum received payment on June 5, 2024.

 

On June 4, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <alternativepods.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 June 7, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of July 1, 2024 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@alternativepods.com. Also on June 7, 2024, 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 July 1, 2024.

 

On July 8, 2024, pursuant to the Parties' requests to have the dispute decided by a three-member Panel, Forum appointed Steven M. Levy and Douglas M. Isenberg as Panelists and Charles A. Kuechenmeister as Chair.

 

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.

 

Respondent filed unsolicited supplemental submissions on July 8 and 10, 2024 plus an unsolicited Annex 8 on July 8, 2024. Complainant filed unsolicited supplemental submissions on July 9 and 11, 2024. The Panel has decided the case based upon the initial filings, without reference to the unsolicited submissions.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUES:  

Multiple Complainants

Two parties, Kostel, LLC and Constantin Calugher, filed this administrative proceeding as Complainants. The rules governing multiple complainants are Rule 3(a) and Forum's Supplemental Rule 1(e). Rule 3(a) states, "Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules."  Forum's Supplemental Rule 1(e) defines "The Party Initiating a Complaint Concerning a Domain Name Registration" as the "single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint."  Previous panels have interpreted Forum's Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int'l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:

 

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

 

In this case, the Complainant Constantin Calugher is the sole member of Complainant Kostel, LLC, as shown by the entity documents issued by the State of Illinois and the United States Treasury Internal Revenue Service. Respondent confirms the accuracy of this evidence. This entity relationship demonstrates a sufficient nexus among the named Complainants to meet the requirements of Supplemental Rule 1(e).  Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. kim seong su, FA 1840242 (Forum June 3, 2019) ("Skechers U.S.A., Inc. II is a wholly owned subsidiary of Skechers U.S.A., Inc.  . . . As the two Complainants in this case are in fact closely related, being part of the same company structure, the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and the Panel will therefore treat them together as a single entity in this proceeding."), Bed Bath & Beyond Procurement Co, Inc. et al. v. shaoxuan li / lishaoxuan, FA 1829423 (Forum Mar. 11, 2019). The same is true of intellectual property holding companies and their corporate parents. GUESS IP Holder L.P. and VUSE?, Inc. v. New Ventures Services, Corp., FA 1825019 (Forum Feb. 10, 2019) ("Complainant GUESS IP Holder is a holding company concerned with Complainant GUESS, Inc.'s intellectual property. The Panel therefore finds that the two Complainants (herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of such that they shall be treated as if a single entity.").  It is thus proper for both Complainants to file and prosecute a single Complaint. The Panel will treat them as a single entity for the purposes of this proceeding. All references to "Complainant" in this Decision, even though in the singular, are to both named Complainants.

 

Other Legal Proceedings

Two court cases involving these parties, the same business relationship they previously shared and the domain name are currently pending. Limitless Accessories, Inc. v. Kostel LLC, No. 2023 CH 02237, filed March 7, 2023, is pending before the Circuit Court of Cook County, Illinois, and Limitless Accessories, Inc. v. Kostel LLC, No. 23-cv-15525, filed October 21, 2023, is pending before the U. S. District Court for the Northern District of Illinois, Eastern Division. The Respondent, Mohammad Atef, is alleged to be the sole owner of Limitless Accessories, Inc., the plaintiff in both of these actions (Limitless), and the evidence supports that allegation, Mr. Atef having been the person who allegedly registered the domain name on behalf of Limitless. Mr. Atef resides at the same address, 411 Country Club Dr., Barrington, Illinois as is alleged in Limitless' Complaint in the Illinois state court action to be the Limitless' address. Complainant has appeared in that action and has filed counterclaims against Limitless and asserts a third-party complaint against Mr. Atef for various forms of relief which include the exact same relief with respect to the domain name as is requested in the Complaint in this proceeding.  Among the other claims are declaratory relief, conversion, breach of contract, tortious interference with prospective economic advantage, commercial disparagement, defamation, deceptive trade practices, and so forth.  In addition to the two court cases, Respondent has filed a cancellation proceeding with the Trademark Trial and Appeal Board of the United States Patent and Trademark Office (USPTO) seeking to cancel Complainant's USPTO registration of the ALTERNATIVE PODS mark.

 

In both court actions, the parties assert conflicting claims as to (i) which of them was actually the owner of their previous jointly-operated business venture, (ii) which of them actually registered the domain name, and (iii) which of them is entitled to the underlying ALTERNATIVE PODS mark incorporated into the domain name. These are core issues. They are fact-sensitive, and fully at-issue in the Illinois state court case. Respondent argues that this Panel should dismiss the Complaint, allowing the judicial and USPTO proceedings to take their respective courses.  Complainant contests that argument.

 

Rule 18 provides in pertinent part:  "Effect of Court Proceedings (a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision."  The Panel thus has discretion to terminate or continue with the UDRP administrative proceeding when outside litigation related to the domain name is pending. UDRP panels have often proceeded to a decision despite concurrent court proceedings when the domain name issues are ancillary to other issues in those proceedings and the domain name issues can be resolved without reference to the remedies at issue in the judicial proceedings. Mary's Futons, Inc. v. Tex. Int'l Prop. Assocs., FA 1012059 (Forum Aug. 13, 2007) (choosing to proceed under the UDRP despite concurrent court proceedings for multiple reasons, including that the proceedings appeared to be filed in a court that did not commonly adjudicate intellectual property issues), Quadrific Media Private Limited v. Rajat Agarwal, 2017-1050 (WIPO Aug. 31, 2017) (UDRP case proceeded despite ongoing litigation where "the issues concerning the rights and ownership of the Disputed Domain Name are ancillary to larger complex issues being determined in the civil suit, including an alleged breach of the terms of a joint venture between the Parties, alleged fiduciary duty, ownership of the SPARTAN POKER trade mark and the removal of the Respondent as a director of the Complainant."). 

 

In this case, control of the domain name is central to the other remedies sought in the court cases, as it is the only means by which the parties' customers can gain access to the parties' retail outlets. More importantly, resolving the domain name issue in this case necessarily involves sorting through the same competing factual allegations that will determine the other issues in those cases.

 

The UDRP was intended to resolve cases of clearly abusive registrations. Jason Crouch and Virginia McNeill v. Clement Stein, WIPO Case No. 2005-1201 ("The Policy was adopted to deal as is with the problem of cybersquatting, the registration of domain names consisting of, including, or confusingly similar to marks belonging to another for the purpose of profiting from the goodwill associated with said marks. The questions under the Policy to be addressed by the Panel are relatively simple and straightforward. The proceeding is a summary one, without the benefit of confrontation of the witnesses, or even of a hearing."). It was not intended to resolve complex factual disputes and by design provides none of the customary tools, such as discovery, rules of evidence, and evidentiary hearings with cross-examination, for performing that function. Spacesaver corporation v. The Marvel Group, Inc., FA 1250368 (Forum Apr. 22, 2009) ("The Wisconsin court proceedings will determine whether the Complainant has a trademark in the word UNIVERSAL, whether any registration that issues from the USPTO should be cancelled and whether the Respondent is guilty of cyberpiracy with respect to the domain name in dispute in this administrative proceeding. Accordingly those proceedings are the appropriate forum in which the issues raised by the Complaint should be determined."), Levine, Domain Name Arbitration, 2d Ed., pp. 103-04 ("It is generally agreed that disputes that involve the 'ownership of the business and its assets,' . . . or 'hinge mostly on a business or civil dispute between the parties,' . . . or ownership of a domain name after breakup of a business venture are better left to courts of competent jurisdiction. Questions of trademark infringement, dilution, and invalidity are "clearly not within the purview of any ICANN proceeding and are best left for court adjudication."). This case arises out of the dissolution of a previous business relationship. As such it is outside the scope of the UDRP, and resolving the factual issues involved in this matter is well beyond the limited means available for that purpose under the UDRP. The Panel will exercise its discretion in favor of terminating this proceeding.

 

DECISION

For the reasons discussed above, it is Ordered that the Complaint be and it hereby is DISMISSED.

 

 

 

Steven M. Levy, Panelist

Douglas M. Isenberg, Panelist

Charles A. Kuechenmeister, Chair

Dated:  July 12, 2024