Big Brands, LLC v. Zach Mosesian
Claim Number: FA1909001863623
Complainant is Big Brands, LLC (“Complainant”), represented by James D. Boyle of Holley Driggs Walch Fine Puzey &Thompson, Nevada, USA. Respondent is Zach Mosesian (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <alcoholicbeveragedevelopment.com>, <alcoholicbeveragemanufacturing.com>, <alcoholicbeveragepacking.com>, <bigbrands-llc.com>, <usbeveragemanufacturing.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 known conflict in serving as Panelist in this proceeding.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 23, 2019; the Forum received payment on September 23, 2019.
On September 24, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <alcoholicbeveragedevelopment.com>, <alcoholicbeveragemanufacturing.com>, <alcoholicbeveragepacking.com>, <bigbrands-llc.com>, <usbeveragemanufacturing.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 October 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 2019 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@alcoholicbeveragedevelopment.com, postmaster@alcoholicbeveragemanufacturing.com, postmaster@alcoholicbeveragepacking.com, postmaster@bigbrands-llc.com, postmaster@usbeveragemanufacturing.com. Also, on October 1, 2019, 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 October 14, 2019.
Complainant and Respondent filed additional submissions on October 18, 2019 and October 30, 2019, respectively. Complainant’s additional submission complied with Supplemental Rule 7. The Respondent’s additional submission did not comply with Supplemental Rule 7.
On October 18, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Calvin A. Hamilton 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 that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a provider in the food and beverage industry. Complainant has common law rights to the BIG BRAND, AB, and USBM marks. Respondent’s <bigbrands-llc.com> domain name is confusingly similar to Complainant’s BIG BRAND mark, as Respondent merely adds a hyphen and the term “llc”, as well as the “.com” generic top-level domain (“gTLD”). Additionally, Respondent’s <alcoholicbeveragedevelopment.com>, <alcoholicbeveragemanufacturing.com>, <alcoholicbeveragepacking.com>, and <usbeveragemanufacturing.com> domain names are confusingly similar to Complainant’s AB and USBM marks, as Respondent is wrongfully holding these disputed domain names reflect or suggest Complainant’s marks. Finally, Respondent is holding the disputed domain names hostage.
Respondents has no rights or legitimate interests in the <alcoholicbeveragedevelopment.com>, <alcoholicbeveragemanufacturing.com>, <alcoholicbeveragepacking.com>, <bigbrands-llc.com> and <usbeveragemanufacturing.com> domain names as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is attempting to divert Internet users away from Complainant. Respondent was also a former employee of Complainant and misused its authority to transfer the disputed domain names to itself.
Respondent registered and used the <alcoholicbeveragedevelopment.com>, <alcoholicbeveragemanufacturing.com>, <alcoholicbeveragepacking.com>, <bigbrands-llc.com> and <usbeveragemanufacturing.com> domain names in bad faith, as Respondent is attempting to extort Complainant for monetary gain. Additionally, Respondent is attempting to disrupt Complainant’s business. Finally, Respondent has actual or constructive knowledge of Complainant’s rights in the BIG BRAND, AB, and the USBM marks at the time of registration.
B. Respondent
Respondent is the son of Complainant. Respondent brings up a number of non-UDRP issues, mainly revolving around family legal and personal issues. Respondent has rights in the US BEVERAGE MANUFACTURING mark through its trademark application with the United States Patent and Trademark Office (“USPTO”) (e.g. Ser. No. 88242289, filed on Dec. 26, 2018). See Resp. pg. 5.
Respondent properly registered and used the disputed domain names for a bona fide offering of goods sold or a legitimate noncommercial or fair use. Respondent was the original proprietor of the business associated with the disputed domain names. The <bigbrands-llc.com> is used for email and Respondent elected to have the <alcoholicbeveragemanufacturing.com> domain name direct to the <usbeveragemanufacturing.com> domain name.
Respondent is acting in good faith, and the Complainant is attempting to reverse domain name hijack the Respondent.
C. Additional Submissions
Both Parties filed Additional Submissions under the Rules.
A. Complainant
Complainant timely filed an additional submission according to the Forum's Supplemental Rule #7. The submission will be considered by the Panel.
Complainant bases its Reply on its common law rights, title and interest in and to the following service marks to which Complainant claims to have exclusive use rights pursuant to section 43(a) of the Lanham Act (15 U.S.C. 1125(a)).
1. BIG BRANDS (the “BIG BRAND Marks”)
2. The AB Marks
3. The USBM Mark
Complainant reiterates that Respondent possesses no ownership rights to the USBM Mark. Complainant states that the Respondent’s employment with the Complainant is the sole basis of his association with the disputed domain names and adds that Respondent’s improper formation of a limited liability company based on the USBM Mark provides no defense. Further, that Respondent’s complain about ownership of BIG BRANDS, LLC is not relevant. Respondent’s Response is non-compliant with the Rules and the Supplemental Rules and finally, that Respondent makes a baseless effort to create a conflict of interest.
B. Respondent
Respondent filed a submission which was received after the deadline for submissions. The submission was not in compliance with Supplemental Rule #7 and therefore will not be considered.
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: Non-UDRP Legal Arguments
Respondent argues various legal points pursuant to Business and Family Law as they may apply to the personal and business relationships between the parties (an ongoing father-son dispute). The dispute before this Panel is governed by the UDRP and not Business and/or Family Law, so the Panel shall disregard these arguments. Additionally, Policy ¶ 4(k) allows the parties to litigate these points in court, the Panel finds that these arguments are not applicable to this arbitration proceeding within the scope of the UDRP and its elements. See Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else).
Accordingly, the following analysis is strictly confined to an analysis under the UDRP and does not address any arguments made by either party with respect to Business or Family Law.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
In this matter, Respondent makes various arguments regarding the ownership and Complainant’s role in Big Brands, LLC, a Nevada-based limited liability company. Respondent claims that Complainant is his father and has treated Respondent poorly over the years, both personally and in business. Respondent argues that Complainant mistreated Respondent as an employee rather than a member of the company’s management. Respondent also cites a court record in which Complainant acknowledges that it is not an owner of Big Brands, LLC. See Resp. Ex. F.
This dispute appears to have its genesis on a business or civil dispute between the parties, with possible causes of action for breach of contract, or fiduciary responsibility. The issues between the parties are not limited to the law of trademarks. There are other intellectual property issues. There are important contractual issues.
Indeed, Respondent points out that these causes of action are currently active cases that are pending with the courts.
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.
According to the panel in Love, complex cases such as the one presented here may be better decided by the courts than by a UDRP panel:
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:
[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trademark disputes .…The issues between the parties are not limited to the law of trademarks. 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. As far as the facts fit within trademark 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, 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 an 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 Complainant and Respondent was one of employer-employee or one of partnership, which determination falls outside the scope of the Policy.” See FA 1494699 (Mar. 28, 2013). Because the question of whether the complainant or the respondent in that case had rights in the domain name relied heavily on the corporate structure of the companies involved, the Panel could not resolve the dispute under the UDRP. See id.
Based upon the reasoning outlined in the aforementioned cases, together with the record, the Panel concludes that the instant dispute contains questions of contractual interpretation and fiduciary responsibilities, and thus falls outside the scope of the UDRP.
For the reasons set forth above, the Panel need not analyze this element of the Policy.
For the reasons set forth above, the Panel need not analyze this element of the Policy.
For the reasons set forth above, the Panel need not analyze this element of the Policy.
DECISION
The Panel finds that the claim falls outside the scope of the Policy, because it involves, inter alia, a business dispute between two parties regarding control over the domain name registration.
Accordingly, the claim is denied and it is Ordered that the Complaint be and hereby is DISMISSED.
Calvin A. Hamilton, Panelist
Dated: November 8, 2019
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