national arbitration forum

DECISION

Water Feature Supply, Inc., Earth Inspired Products, Inc., Matthew Schneider and Joaquin Quintero v. Patrick Maloy and GKG.NET Domain Proxy Service / GKG.NET Domain Proxy Service Administrator

Claim Number: FA1203001434296

PARTIES

Complainant is Water Feature Supply, Inc., Earth Inspired Products, Inc., Matthew Schneider and Joaquin Quintero (collectively, “Complainant”), represented by David C. Beavans of Law Offices of David C. Beavans, California, USA. Respondent is Patrick Maloy and GKG.NET Domain Proxy Service / GKG.NET Domain Proxy Service Administrator (collectively, “Respondent”), represented by T.C. Johnston of Internet Law, California, USA.

REGISTRAR AND DISPUTED DOMAIN NAMES

The two domain names at issue are <waterfeaturesupply.com>, registered with GoDaddy.com, LLC and <earthinspiredproducts.com> registered with GKG.NET, INC.

PANEL

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.

Linda M. Byrne as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 12, 2012; the National Arbitration Forum received payment on March 13, 2012.

On March 15, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <waterfeaturesupply.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 March 15, 2012, GKG.NET, INC. confirmed by e-mail to the National Arbitration Forum that the <earthinspiredproducts.com> domain name is registered with GKG.NET, INC. and that Respondent is the current registrant of the name. GKG.NET, INC. has verified that Respondent is bound by the GKG.NET, 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 March 22, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 11, 2012, 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@waterfeaturesupply.com and postmaster@earthinspiredproducts.com. Also on March 22, 2012, 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 April 12, 2012.

Complainant’s Additional Submission was received on April 16, 2012 and deemed compliant with Supplemental Rule 7.

On May 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Linda M. Byrne as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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.

RELIEF SOUGHT

Complainant requests that the <waterfeaturesupply.com> and <earthinspiredproducts.com> domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant’s Second Amended Complaint asserts the following:

Respondent was an employee of Complainant prior to this dispute, but Respondent has never been a business partner of Complainant’s.
Complainant has established rights in the WATER FEATURE SUPPLY and the EARTH INSPIRED PRODUCTS marks under California law.
Complainant owns the online business named Water Feature Supply, Inc. which is the successor-in-interest to Earth Inspired Products, Inc.
Complainant purchased the Earth Inspired Products, Inc. business on July 9, 2011 and renamed the business Water Feature Supply, Inc. on October 6 2011.
Respondent previously owned the <waterfeaturesupply.com> domain name and sold the domain name to Complainant for $1,500.00, at which time Complainant became the registrant of record for the domain name. However, Respondent reclaimed the disputed domain names by accessing Complainant’s online accounts without authorization and transferring them into Respondent’s control.
The <earthinspiredproducts.com> domain name redirects Internet traffic to the website associated with the <waterfeaturesupply.com> domain name.
Respondent is defrauding Complainant’s current customers by taking online orders and receiving payment for those orders without actually shipping any products to the customers, which disrupts Complainant’s business.
Respondent is not commonly known by the disputed domain names, and Respondent does not have rights or legitimate interests in the disputed domain names.
Complainant instigated an action against Respondent in the San Diego Superior Court, and that litigation is currently pending.

Respondent’s Response to the Second Amended Complaint asserts the following:

In exchange for Respondent’s work on behalf of Complainant, Complainant offered Respondent a 10% equity interest in the Complainant’s company.
When Complainant moved its operations from the <earthinspiredproducts.com> domain name to Respondent’s <waterfeaturesupply.com> domain name, Respondent was promised a 33% interest in Complainant’s company as payment for the domain name and corresponding website.
Respondent took back the disputed domain names in January 2012 for restitution related to non-payment for services and Complainant’s failure to grant an interest in Complainant’s company to Respondent.
Complainant owns no trademark rights in the WATER FEATURE SUPPLY and EARTH INSPIRED PRODUCTS terms. Complainant’s formation of a corporation having a name that includes the words “Water Feature Supply,” and Complainant’s operation of a commercial website at the <waterfeaturesupply.com> domain name are insufficient to establish common law rights in the term “Water Feature Supply.”
Complainant’s alleged marks are generic or merely descriptive of the goods and services that Complainant provides.
Respondent has a legitimate interest in the <waterfeaturesupply.com> domain name because it developed, registered, and built the website associated with the domain name before Complainant owned the domain name.
Respondent admits to not having a legitimate interest in the <earthinspiredproducts.com> domain name as it belongs to a third party. The <earthinspiredproducts.com> domain name is actually owned by a third party, Mike McStay, not Respondent.
Respondent registered the <waterfeaturesupply.com> domain name in good faith because it did so prior to meeting Complainant.

Complainant’s Additional Submission asserts the following:

The Panel has the ability to render a decision concerning <waterfeaturesupply.com> and <earthinspiredproducts.com> even though the disputed domain names are subject to pending litigation. Respondent’s theft of the two disputed domain names lies within the scope of the Policy.
Respondent admits to taking the two disputed domain names from Complainant without permission.
Mr. McStay’s interest in the <earthinspiredproducts.com> domain name is irrelevant to a determination that Respondent is not the rightful owner of the domain name.
Complainant actively used the WATER FEATURE SUPPLY term in commerce and owns common law rights in this mark. Complainant’s WATER FEATURE SUPPLY mark is not generic or merely descriptive.
Respondent has failed to present evidence of any claimed ownership interest in Complainant’s business.

FINDINGS

1. The Panel makes no factual findings regarding ownership, theft, or contractual obligations, relating to the <waterfeaturesupply.com> and <earthinspiredproducts.com> domain names.

2. The Panel finds that the <waterfeaturesupply.com> and <earthinspiredproducts.com> domain names are commonly controlled by the Respondent.

DISCUSSION

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.

I. Multiple Complainants

The instant proceeding names four Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “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.” This Panel finds that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants. See Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003) (the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names).

II. Multiple Respondents

In the instant proceeding two respondents are named. Complainant has alleged that the two domain names at issue are effectively controlled by the same person and/or entity. The WHOIS information identifies the registrant of the <earthinspiredproducts.com> domain name as “GKG.NET Domain Proxy Service,” which appears to be a proxy service offered by the registrar. Complainant claims that the true owner of the <earthinspiredproducts.com> domain name is Respondent Patrick Maloy. Maloy acknowledges that he has control of both of the <waterfeaturesupply.com> and <earthinspiredproducts.com> domains. See Declaration Of Patrick Maloy In Support Of Response To UDRP Claim, Items 24 and 25. Moreover, as of the Complainant’s filing date, the two disputed domain names resolved to an identical website. This Panel finds that the parties have presented sufficient evidence to show that the disputed domain names are controlled by the same entity (Patrick Maloy).

III. Business/Contractual Dispute Outside the Scope of the UDRP

The Complainant asserts it rightfully owns the two disputed domain names, which Complainant allegedly purchased from Respondent and/or a third party. The Complainant asserts that the two domain names were unlawfully transferred to Respondent, thereby unjustly enriching Respondent. Respondent denies that such sale or theft occurred. The Respondent argues that these issues constitute a business dispute that lies outside the scope of the UDRP.

This Panel agrees with Respondent and finds that these issues are contractual in nature and are beyond the scope of the UDRP. See Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. 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); see also Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. 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 kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”).

As discussed in more detail below, the Complainant may own common law trademark rights in the terms “Water Feature Supply” and “Earth Inspired Products,” based on continuous and prominent use of these terms in commerce. If proven, common law rights could support a transfer of the domain names under paragraph 4(a). However, in view of the fact that the parties submissions primarily focus on the contractual issues, the presented evidence is insufficient to determine whether common law trademark rights have been acquired. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it.”).

This Panel finds that the instant dispute involves a question of contractual interpretation, and thus falls outside the scope of the UDRP.

IV. Concurrent Court Proceedings

Complainant and Respondent agree that there is a pending court action proceeding in San Diego Superior Court (Case No. 37-2012-00092477-CU-BT-CTL) that Complainant filed on February 17, 2012. According to the Parties, Complainant filed the action against Respondent and Respondent’s girlfriend, Gina Baca, for Conversion, Trademark Infringement, and Unjust Enrichment. The subject matter of the litigation includes the ownership and use of the two disputed domain names. Complainant states in its Additional Submission that the remedies requested in the lawsuit are monetary damages and an injunction to turn over the two disputed domain names to Complainant.

The issues presented in the pending action appear to relate to potential rights and/or obligations arising out of a business and/or contractual dispute between Complainant and Respondent. As discussed above, these issues are beyond the scope of the UDRP and are not considered in this Decision.

Because the submissions of the parties are insufficient to make a determination on other grounds, this Panel finds it is advantageous to await a judicial determination of the issues raised in the pending litigation. See AmeriPlan Corp. v. Gilbert FA105737 (Nat. Arb. Forum Apr. 22, 2002) (Regarding simultaneous court proceedings and UDRP disputes, Policy ¶ 4(k) requires that ICANN not implement an administrative panel’s decision regarding a UDRP dispute “until the court proceeding is resolved.” Therefore, a panel should not rule on a decision when there is a court proceeding pending because “no purpose is served by [the panel] rendering a decision on the merits to transfer the domain name, or have it remain, when as here, a decision regarding the domain name will have no practical consequence.”).

Any substantive decision under the Policy would concern only control of the two domain names, not any of the other remedies involved in the pending litigation. It would not be binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the pending litigation.

V. Identical and/or Confusingly Similar

Complainant asserts that it owns common law rights in the WATER FEATURE SUPPLY and EARTH INSPIRED PRODUCTS marks, which are essentially identical to the <waterfeaturesupply.com> and <earthinspiredproducts.com> domain names, respectively.

Complainant owns no registration for either alleged trademark. However, trademark registration is not required to establish rights in a given mark if the complainant is able to establish rights under the common law. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).

Even if this matter were appropriate for decision, this Panel concludes that Complainant has failed to provide sufficient evidence to show that it owns common law rights in the EARTH INSPIRED PRODUCTS and WATER FEATURE SUPPLY terms. Regarding WATER FEATURE SUPPLY, Complainant notes that it has registered a corporation under the laws of California with the business name “Water Feature Supply, Inc.” In its Additional Submission, Complainant claims to have advertised extensively under the name “Water Feature Supply” to promote its business. Regarding EARTH INSPIRED PRODUCTS, Complainant states that it acquired rights to this term when it purchased the Earth Inspired Products, Inc. company from a third party.

However, this Panel concludes that Complainant has failed to provide sufficient evidence showing that either of the WATER FEATURE SUPPLY or EARTH INSPIRED PRODUCTS terms have sufficiently been used in commerce so as to acquire common law rights in the respective marks. See Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products); see also Coupons Inc. v. Motherboards.com, FA 192249 (Nat. Arb. Forum Nov. 4, 2003) (finding that the complainant failed to establish rights in the COUPONS mark because the mark was “highly descriptive” and the complainant did not establish secondary meaning).

This Panel finds that insufficient evidence has been submitted in this proceeding to establish Complainant’s common law trademark rights in the WATER FEATURE SUPPLY or EARTH INSPIRED PRODUCTS marks. Accordingly, this Panel concludes that the ¶ 4(a)(i) requirement has not been satisfied.

VI. Rights or Legitimate Interests / Registration and Use in Bad Faith

Because the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish rights in the mark, the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

DECISION

This Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <waterfeaturesupply.com> and <earthinspiredproducts.com> domain name REMAIN WITH Respondent.

Linda M. Byrne as Panelist.

Dated: May 4, 2012