Business disputes involving #domains are not to be resolved via the #UDRP process

If you have a business dispute, don’t try to resolve it via the UDRP process. That’s the end result of a UDRP involving the following 60 domain names:

ifilmcodes.com, gurlpages.com, ifilm.com, hatfallgame.com, ifilmcorp.com, hatfallgame.com, ifilmcorp.net, generatela.com, ifilmmail.com, agingfabulous.com, ifilm.net, alloydigital.com, ifilmnetworks.net, alloyeducation.com, ifilm-pro.com, alloymarketing.com, ifilmpro.com, alloyonline.com, ifilmpro.net, alloytv.com, ifilmpublishing.com, awkwardnames.com, ifilmstaff.com, b5media.com, ifilmstudios.com, bakingdelights.com, ifilmtelevision.com, breakmedia.com, ifilmtelevison.com, brkmd.com, ifilm.tv, buzzerbeat.com, makeupminute.com, cheatfiles.com, mustamine.com, chickipedia.com, myroughlife.com, defymedia.com, nextpt.com, ebeautydaily.com, gamingforums.com, epicwtfs.com, theworststuffever.com, europestring.com, uturf.com, forgedinbattlegame.com, wallstreetfighter.com, funnyreceipts.com, worklols.com, sfuniverse.com, worstthingieverate.com, shutthefailup.com, offbeathomes.com, simplythrifty.com, parentfails.com, sugarloot.com, pophangover.com, takkle.com, racketsandballs.com, thatdamnpc.com, theparistraveler.com

According to the UDRP, these sixty disputed domain names were wrongfully sold and wrongfully transferred to Respondent, who denies the allegations, stating that she acquired them lawfully as they expired and became available.

The panelist ordered the domains to remain with the Respondent, and pointed any further dispute to a court of law.

NextPoint, Inc v. Domain Holder

Claim Number: FA2004001893165

PARTIES

Complainant is NextPoint, Inc (“Complainant”), represented by Stevan H. Lieberman of Greenberg & Lieberman, LLC, District of Columbia, USA. Respondent is Domain Holder (“Respondent”), New York, USA.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <ifilmcodes.com>, <gurlpages.com>, <ifilm.com>, <hatfallgame.com>, <ifilmcorp.com>, <hatfallgame.com>, <ifilmcorp.net>, <generatela.com>, <ifilmmail.com>, <agingfabulous.com>, <ifilm.net>, <alloydigital.com>, <ifilmnetworks.net>, <alloyeducation.com>, <ifilm-pro.com>, <alloymarketing.com>, <ifilmpro.com>, <alloyonline.com>, <ifilmpro.net>, <alloytv.com>, <ifilmpublishing.com>, <awkwardnames.com>, <ifilmstaff.com>, <b5media.com>, <ifilmstudios.com>, <bakingdelights.com>, <ifilmtelevision.com>, <breakmedia.com>, <ifilmtelevison.com>, <brkmd.com>, <ifilm.tv>, <buzzerbeat.com>, <makeupminute.com>, <cheatfiles.com>, <mustamine.com>, <chickipedia.com>, <myroughlife.com>, <defymedia.com>, <nextpt.com>, <ebeautydaily.com>, <gamingforums.com>, <epicwtfs.com>, <theworststuffever.com>, <europestring.com>, <uturf.com>, <forgedinbattlegame.com>, <wallstreetfighter.com>, <funnyreceipts.com>, <worklols.com>, <sfuniverse.com>, <worstthingieverate.com>, <shutthefailup.com>, <offbeathomes.com>, <simplythrifty.com>, <parentfails.com>, <sugarloot.com>, <pophangover.com>, <takkle.com>, <racketsandballs.com>, <thatdamnpc.com>, <theparistraveler.com>, registered with NameCheap, 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.

Carol Stoner, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 22, 2020; the Forum received payment on April 24, 2020.

On April 22, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <ifilmcodes.com>, <gurlpages.com>, <ifilm.com>, <hatfallgame.com>, <ifilmcorp.com>, <hatfallgame.com>, <ifilmcorp.net>, <generatela.com>, <ifilmmail.com>, <agingfabulous.com>, <ifilm.net>, <alloydigital.com>, <ifilmnetworks.net>, <alloyeducation.com>, <ifilm-pro.com>, <alloymarketing.com>, <ifilmpro.com>, <alloyonline.com>, <ifilmpro.net>, <alloytv.com>, <ifilmpublishing.com>, <awkwardnames.com>, <ifilmstaff.com>, <b5media.com>, <ifilmstudios.com>, <bakingdelights.com>, <ifilmtelevision.com>, <breakmedia.com>, <ifilmtelevison.com>, <brkmd.com>, <ifilm.tv>, <buzzerbeat.com>, <makeupminute.com>, <cheatfiles.com>, <mustamine.com>, <chickipedia.com>, <myroughlife.com>, <defymedia.com>, <nextpt.com>, <ebeautydaily.com>, <gamingforums.com>, <epicwtfs.com>, <theworststuffever.com>, <europestring.com>, <uturf.com>, <forgedinbattlegame.com>, <wallstreetfighter.com>, <funnyreceipts.com>, <worklols.com>, <sfuniverse.com>, <worstthingieverate.com>, <shutthefailup.com>, <offbeathomes.com>, <simplythrifty.com>, <parentfails.com>, <sugarloot.com>, <pophangover.com>, <takkle.com>, <racketsandballs.com>, <thatdamnpc.com>, <theparistraveler.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 April 30, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May­­­ 20, 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@ifilmcodes.com, postmaster@gurlpages.com, postmaster@ifilm.com, postmaster@hatfallgame.com, postmaster@ifilmcorp.com, postmaster@hatfallgame.com, postmaster@ifilmcorp.net, postmaster@generatela.com, postmaster@ifilmmail.com, postmaster@agingfabulous.com, postmaster@ifilm.net, postmaster@alloydigital.com, postmaster@ifilmnetworks.net, postmaster@alloyeducation.com, postmaster@ifilm-pro.com, postmaster@alloymarketing.com, postmaster@ifilmpro.com, postmaster@alloyonline.com, postmaster@ifilmpro.net, postmaster@alloytv.com, postmaster@ifilmpublishing.com, postmaster@awkwardnames.com, postmaster@ifilmstaff.com, postmaster@b5media.com, postmaster@ifilmstudios.com, postmaster@bakingdelights.com, postmaster@ifilmtelevision.com, postmaster@breakmedia.com, postmaster@ifilmtelevison.com, postmaster@brkmd.com, postmaster@ifilm.tv, postmaster@buzzerbeat.com, postmaster@makeupminute.com, postmaster@cheatfiles.com, postmaster@mustamine.com, postmaster@chickipedia.com, postmaster@myroughlife.com, postmaster@defymedia.com, postmaster@nextpt.com, postmaster@ebeautydaily.com, postmaster@gamingforums.com, postmaster@epicwtfs.com, postmaster@theworststuffever.com, postmaster@europestring.com, postmaster@uturf.com, postmaster@forgedinbattlegame.com, postmaster@wallstreetfighter.com, postmaster@funnyreceipts.com, postmaster@worklols.com, postmaster@sfuniverse.com, postmaster@worstthingieverate.com, postmaster@shutthefailup.com, postmaster@offbeathomes.com, postmaster@simplythrifty.com, postmaster@parentfails.com, postmaster@sugarloot.com, postmaster@pophangover.com, postmaster@takkle.com, postmaster@racketsandballs.com, postmaster@thatdamnpc.com, postmaster@theparistraveler.com. Also on April 30, 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 19, 2020.

Complainant’s Additional Submission was received on May 22, 2020, and is in compliance with Supplemental Rule 7.

On May 26, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Carol Stoner, Esq., 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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant, NextPoint, Inc., is a media company that uses the disputed domain names to garner income by click-through fees and by redirecting to other profitable websites and YouTube channels. The complaint lists sixty-one domain names, however one domain name, <hatfallgame.com>, is listed twice, so there are sixty domains in dispute. Complainant has common law rights in all sixty of the disputed domain names based on longstanding and continuous use in commerce since 2007. The sixty disputed domain names were wrongfully sold and wrongfully transferred to Respondent.

Complainant cites U.S. case law to establish that it owns common law rights in the disputed domains. Weitzman v. Lead Networks Domains PVT, No. 1:09-cv-01141, at *8 (E.D. Va Sept. 24, 2010) (“Therefore, through Plaintiff’s longstanding, continuous, and exclusive use of the Domain Names, Plaintiff owns valid and enforceable rights to each of the registered Domain Names.). See Amend. Compl. Ex. E.

Respondent has no rights or legitimate interests in the sixty disputed domain names. Respondent is not authorized to use Complainant’s sixty trademarks (that correspond to the sixty disputed domain names), and is not commonly known by the disputed domain names. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent fails to make active use of the disputed domain names. Complainant states, “Respondent fraudulently took the domain names while employed in Complainant’s technical department and decided to just keep them irrespective of Complainant’s rights.”

Respondent registered and uses the sixty disputed domain names in bad faith. Respondent attempts to sell the disputed domain names. Respondent has not made any use of the disputed domain names. The disputed domain names were fraudulently transferred to Respondent. Respondent had actual knowledge of Complainant’s rights in Complainant’s sixty trademarks when it registered the sixty disputed domain names.

B. Respondent

Respondent purchased the disputed domain names when they expired, and provides receipts of its purchase of thirty-four of the sixty disputed domain names. Respondent acknowledges that the receipts were edited to show only the disputed domain names.

Complainant does not have trademark rights in the domain names; it provides no evidence of ownership of domain names or rights in any marks. Complainant’s Exhibit A (PowerPoint deck) does not mention the disputed domain names. Complainant’s Exhibit B (screenshot of the resolving website of <screenjunkies.com> using the wayback machine from May 3, 2017) does not show any of the disputed domain names. Complainant’s Exhibit C (email from Gina DiGioia listing “emails” owned by Complainant) only lists sixteen of the sixty disputed domain names and is not in .EML format therefore may not be authentic. Further, in Exhibit C, Gina DiGioia signs the email as the EVP and General Counsel of Defy Media, but in its complaint Complainant refers to Gina DiGioia as the “president of Defy,” showing an inconsistency in Complainant’s story.

Respondent does not use the disputed domain names in bad faith and Complainant fails to provide proof of bad faith use.

C. Complainant’s Additional Submission

Complainant asserts that Respondent failed to follow ICANN’S mandatory rules, as providing name, postal and email addresses.

Complainant asserts that Respondent omits signature block which certifies as to complete and accurate information.

Complainant asked Panel to disregard Respondent’s submissions for failure to comply with the rules, or in the alternative, to compel Respondent to comply with ICANN rules.

Complainant states that a review of the disputed domain names shows that they were created prior to dates of receipts.

Complainant states that Respondent paid for renewals of the domain names after he took them from the rightful owner.

Complainant asserts that Respondent’s show of receipts is incomplete and further assails the authenticity of the provided receipts.

Complainant includes additional exhibits, including Defy emails, entity information, and land lookup.

PRELIMINARY ISSUE: DISPUTE OUTSIDE THE SCOPE OF THE UDRP

Panel’s Jurisdiction to Decide Dispute

The Panel has discretion to determine whether or not it has jurisdiction over this dispute. Here, because Panel finds that there is insufficient evidence for it to properly decide the dispute under the UDRP, Panel declines to view the contentions of Complainant and Respondent under the UDRP lens. 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. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”);

See also Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 14, 2000) (“This Panel well recognizes that its jurisdiction is limited to providing a remedy in cases of ‘the abusive registration of domain names,’ or ‘Cybersquatting’ ..”.

Contractual Disputes Beyond UDRP Scope

Based upon the reasoning outlined in the aforementioned cases and the record, the Panel concludes that the instant dispute contains questions of breach of contract and fiduciary duty, and thus falls outside the scope of the UDRP. The Panel, therefore, dismisses the Complaint. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (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.”); see also Frazier Winery LLC v. Hernandez, FA 841081 (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).

Complex Business Structures Obscure Evidence

Complainant asserts in its Complaint that NextPoint is a shareholder of Defy Media and that DEFY’s President Gina Digioia ordered NextPoint to return domain names as a consequence of the Alloy-Digital Break Merger.

Complainant further avers that “Upon information and belief, Respondent fraudulently took the domain names while employed in Complainant’s technical department and decided to just keep them, irrespective of Complainant’s rights.”

Panel has no peephole into these corporate complexities, with which to view and to untangle such proprietary property as domain names. Nor is it within the purview or province of even an elucidated Panel to do so.

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). In the Bracemart case, the Panel’s ascertainment of whether the complainant or the respondent had rights in the domain name, was dependent upon an intricate knowledge of the respective corporate hierarchies, and therefore, the Panel was not empowered to resolve the dispute under the auspices of the UDRP.

In the case at bar, Panel finds that this is a business or contractual dispute between two companies that therefre falls outside the scope of the UDRP. A curiosity in this case is that, despite DEFY’s (Gina Digioia’s) email of September 27th, 2017 stating that the “emails below are not owned by DEFY” and telling Josh to work with Keith on getting them transferred, there is no pro-offered evidence as to whether or not the transfer was actually effectuated. We learn only that Keith said that he would set up a transfer account the following week. 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.”

In Love, the panel was concerned with possible causes of action for breach of contract. 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.”

FINDINGS

Panel rules that this dispute is beyond the scope of UDRP Policy, and therefore dismisses Complainant’s Complaint. Accordingly, Panel has declined to make factual findings.

DISCUSSION

As this dispute is beyond the scope of UDRP Policy, and therefore dismissed, Panel has declined to discuss the following three elements.

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.

DECISION

Panel rules that this dispute is beyond the scope of UDRP Policy, and therefore dismisses Complainant’s Complaint.

Accordingly, it is Ordered that the <ifilmcodes.com>, <gurlpages.com>, <ifilm.com>, <hatfallgame.com>, <ifilmcorp.com>, <hatfallgame.com>, <ifilmcorp.net>, <generatela.com>, <ifilmmail.com>, <agingfabulous.com>, <ifilm.net>, <alloydigital.com>, <ifilmnetworks.net>, <alloyeducation.com>, <ifilm-pro.com>, <alloymarketing.com>, <ifilmpro.com>, <alloyonline.com>, <ifilmpro.net>, <alloytv.com>, <ifilmpublishing.com>, <awkwardnames.com>, <ifilmstaff.com>, <b5media.com>, <ifilmstudios.com>, <bakingdelights.com>, <ifilmtelevision.com>, <breakmedia.com>, <ifilmtelevison.com>, <brkmd.com>, <ifilm.tv>, <buzzerbeat.com>, <makeupminute.com>, <cheatfiles.com>, <mustamine.com>, <chickipedia.com>, <myroughlife.com>, <defymedia.com>, <nextpt.com>, <ebeautydaily.com>, <gamingforums.com>, <epicwtfs.com>, <theworststuffever.com>, <europestring.com>, <uturf.com>, <forgedinbattlegame.com>, <wallstreetfighter.com>, <funnyreceipts.com>, <worklols.com>, <sfuniverse.com>, <worstthingieverate.com>, <shutthefailup.com>, <offbeathomes.com>, <simplythrifty.com>, <parentfails.com>, <sugarloot.com>, <pophangover.com>, <takkle.com>, <racketsandballs.com>, <thatdamnpc.com>, and <theparistraveler.com> domain names REMAIN WITH Respondent.

Carol Stoner, Esq., Panelist

Dated: June 9, 2020

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