BODIS

#BaduHouse .com : Common law #trademark from 1891 used in #UDRP filing

UDRP has been denied.

The Registrant of the domain BaduHouse.com secured it in 2000.

Fast forward 17 years later, a company acquired rights to the physical property that is named “Badu House,” in Llano, Texas.

According to the UDRP:

“Complainant is the owner of a historic and distinctive building in Llano, Texas, built in 1891.  Respondent is a previous owner of the building. In connection with its business, Complainant has common law rights in the BADU HOUSE mark. When Complainant bought the building in 2017, it purchased rights to the BADU HOUSE mark and other intellectual property along with the conveyed real estate.”

In this case, the Respondent remained silent. Whoever they are, they parked the domain name in recent years; after the UDRP was filed, it appears that some 10+ year old content was restored to the live web site.

Regardless, the sole panelist at the National Arbitration Forum, Terry F. Peppard, stated that the 2000 registration trumps the sale of rights to the Complainant in 2017, and their claim to a common law trademark going back to 1891 was thus dismissed.

BaduHouse.com was ordered to remain with the Respondent. Full details on this UDRP decision follow:

Rambler Joint Ventures II, LLC v. Judy Cathcart

Claim Number: FA1808001802430
PARTIES

Complainant is Rambler Joint Ventures II, LLC (“Complainant”), represented by Peter D. Kennedy of Graves, Dougherty, Hearon & Moody, P.C., Texas, USA. Respondent is Judy Cathcart (“Respondent”), California, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

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

PANEL

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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 21, 2018; the Forum received payment on August 21, 2018.

On August 22, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <baduhouse.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 August 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 2018 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@baduhouse.com. Also on August 29, 2018, 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, the Forum transmitted to the parties a Notification of Respondent Default.

On September 20, 2018, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant is the owner of a historic and distinctive building in Llano, Texas, built in 1891. Respondent is a previous owner of the building.

In connection with its business, Complainant has common law rights in the BADU HOUSE mark.

When Complainant bought the building in 2017, it purchased rights to the BADU HOUSE mark and other intellectual property along with the conveyed real estate.

Respondent registered the domain name <baduhouse.com> on or about February 15, 2000.

The domain name is confusingly similar to Complainant’s BADU HOUSE mark.

Respondent is not authorized to use Complainant’s BADU HOUSE mark.

Respondent has not been commonly known by the domain name.

Respondent fails to use the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use.

Instead, Respondent is effectively maintaining a parked website without making any active use of the domain name.

Respondent lacks rights to and legitimate interests in the domain name.

Respondent registered and uses the domain name in bad faith.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

The submitted dispute is outside the scope of ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy” or the “UDRP Policy”).

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 to or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used by Respondent in bad faith.

In view of Respondent’s failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant’s undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”

Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP

Complainant claims that, in 2017, it purchased from Respondent an historic house, and that the sale included rights to the BADU HOUSE mark and to the <baduhouse.com> domain name previously owned by Respondent. The Complaint reflects that Respondent registered the challenged domain name on or about February 15, 2000, approximately seventeen (17) years before Complainant acquired the conveyed property. The Complaint thus concedes that the essence of this dispute is not one of abusive domain name registration that a UDRP panel has competency or jurisdiction to decide, but rather one involving enforcement of contract rights. See, for example, Love v. Barnett, FA 944826 (Forum May 14, 2007):

A dispute, such as the present one, … is outside the scope of the Policy … [T]he 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.

The problem with asking a UDRP panel, with the limited procedural and evidentiary tools available to it under the Policy, to resolve what is essentially a civil breach of contract or contested trademark rights dispute was elucidated earlier in Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO September 6, 2005):

[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes .… The issues between the parties are not limited to the law of trade marks. 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. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.

See also Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Forum April 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.

Further see Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Forum January 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.

DECISION

Therefore, it appearing from the undenied contentions contained in the Complaint filed in this proceeding that the dispute described therein is outside the scope of ICANN’s Uniform Domain Name Dispute Resolution Policy, it is Ordered that the Complaint be, and it is hereby, DISMISSED.

Terry F. Peppard, Panelist

Dated: September 24, 2018


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