The Complainant is Cool-View, LLC of Lakeland, Florida, United States of America, represented by Linda Donaldson, United States of America.
The Respondent is Dave Medinis (a/k/a David Medinis) of Vancouver, Washington, United States of America (hereafter “United States”). 2. The Domain Name and Registrar
The disputed domain name (“Domain Name”) is registered with Dotster, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2011. On the same date the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 15, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center received several email communications from the Respondent between December 20, 2011 and January 1, 2012 requesting information about the administrative proceeding. The Center replied on January 3, 2012.
On January 6, 2012 the Center informed the Complainant about the contact information furnished by the Respondent and requested the Complainant to amend the Complaint accordingly. The Complainant filed its amendment to the Complaint on the same date.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2012. The Response was filed with the Center on February 3, 2012.
On February 8 and 16, 2012 the Center received by email Supplemental Filings from the Complainant. In each case, the Center informed the Complainant that the Panel (when duly appointed) would be informed of the Center's receipt of the Supplemental Filing.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 15, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is a Florida limited liability company that sells surgical headlamps and standing lamps designed for surgical theatres and other medical settings. The Respondent is a businessman and inventor who was a founder of the Complainant.
The Respondent and Brian Hummel signed a Limited Liability Company Operating Agreement dated September 1, 2006, showing Dave Medinis and Brian Hummel as the two initial members of the Complainant. The Articles of Organization were filed with the Florida Secretary of State on September 19, 2006. Dave Medinis subsequently assigned relevant patent and trademark applications to the Complainant.
Of particular interest in the current proceeding is the standard character trademark COOL-VIEW, a United States Trademark Registration No. 3948396. Dave Medinis applied for registration of this mark in May 2009 and assigned his entire interest in the mark to the Complainant on October 20, 2000. The assignment was recorded with the United States Patent and Trademark Office on October 30, 2009. The mark was registered on April 19, 2011 and continues to be owned by the Complainant.
It appears from the record that a dispute arose in November 2011 over allegations that Dave Medinis was selling the Complainant’s products or similar products through competing channels. The Complainant’s management board replaced Dave Medinis with Brian Hummel as manager and managing member and filed new Articles of Organization reflecting that change. Dave Medinis remains a member with an ownership interest in the Complainant.
It is undisputed that the Respondent registered the Domain Name in his own name on September 3, 2006. It is also undisputed that the Domain Name has been used since only to promote the products invented by the Respondent and sold by the Complainant. The Domain Name currently resolves to a website describing the Complainant’s products and providing contact information for its distributors. However, the Complainant has requested that the Domain Name registration be transferred to the Complainant, which the Respondent has declined to do.
According to the Complaint, the Complainant intends to file a lawsuit to obtain all company assets in the Respondent’s possession, including the Domain Name registration and control of the associated website. At present, however, there is no pending litigation concerning the Domain Name. 5. Parties’ Contentions A. Complainant
The Complainant asserts ownership of the registered COOL-VIEW mark, to which the Domain Name is identical. The Complainant argues that the Respondent has no rights or legitimate interests in the Domain Name and that the parties intended for the Domain Name to be owned and controlled by the Complainant.
The Complainant contends that the Respondent has used the Domain Name to mislead Internet users for commercial gain. As further indicia of bad faith, the Complainant argues that the Respondent has misappropriated company assets, set up competing websites, taken orders and payments for the Complainant’s products and then failed to deliver them, and deleted company records stored in a cloud computing service. B. Respondent
The Respondent argues that he registered the Domain Name before the Complainant was legally formed and years before, there was even an application to register the mark. As a founder and owner of the Complainant, he claims a legitimate interest in subsequently using the Domain Name in connection with the Complainant’s business.
The Respondent denies any bad faith in registering and using the Domain Name and points out that it continues to be associated with the website for the Complainant’s business rather than redirecting users to any competing website.
The Respondent requests a finding of attempted “reverse domain name hijacking” under Rule 15(e). 6. Discussion and Findings
This case concerns a falling out among business partners, whose disputes lie largely if not entirely outside the narrow ambit of a UDRP administrative proceeding. The task for the Panel is only to decide whether the Complainant has established a right to have the Domain Name transferred to it based on UDRP grounds.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
“(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.”
Under paragraph 15(a) of the Rules:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” A. Preliminary question: Complainant’s Supplemental Filings
The Rules, paragraph 12, do not explicitly provide for supplemental filings in a Policy proceeding, except at the request of the Panel. Paragraph 10 of the Rules enjoins the Panel to conduct the proceeding “with due expedition” and empowers the Panel to “determine the admissibility, relevance, materiality and weight of the evidence”. Therefore, UDRP Panels are reluctant to countenance delay through additional rounds of pleading and typically accept supplemental filings only to consider new evidence or provide a fair opportunity to respond to new arguments.
The Complainant filed an “Amendment to the Amended Complaint to Add Additional Information” on February 8, 2012, a few days after the Response was filed and one day after the Response was due. This filing has not materially delayed the proceeding. The Panel accepts this filing as part of the record in this proceeding to the extent that it simply furnishes evidence in rebuttal of facts asserted in the Response.
The Complainant’s “Fourth Amendment to the Amended Complaint to Add Additional Information”, dated February 16, 2012, attaches a worksheet prepared by the Respondent showing the website associated with the Domain Name as a company asset between December 2009 and December 2010. The Complainant characterizes this evidence as a “recently discovered admission” that the Complainant owns the website, but does not assert that it was unavailable to the Complainant when the Complaint was filed. The Panel finds that this submission is neither timely nor material and declines to accept it as part of the record. B. Identical or Confusingly Similar
It is undisputed that the Respondent assigned all his interests in the COOL-VIEW mark to the Complainant, and that the Domain Name is identical to this mark. This is sufficient to establish the first element of the Complaint. C. Rights or Legitimate Interests
The Complainant argues that the parties intended from the outset that the Domain Name would be owned and controlled by the Complainant, and that the Respondent registered the name only on behalf of the Complainant. There is no evidence in the record of an agreement to this effect, however, and in the context of a UDRP proceeding there is no opportunity for the Panel to hear and evaluate oral testimony concerning the parties’ intentions and communications in 2006.
The Complainant also suggests that the Respondent currently has no rights to own or exercise control over the Domain Name, since the Respondent has been removed from his former position as managing member of the Complainant. The current extent of the Respondent’s rights and interests in the Complainant, which owns the Domain Name, are subject to dispute, and the Complainant indicates its intention to resolve that dispute through a legal action. These matters go beyond the scope of the current UDRP administrative proceeding.
In any event, it is unnecessary for the Panel to rule on the second element of the Complaint because, as described below, the Complainant cannot prevail on the third element, bad faith. D. Registered and Used in Bad Faith
The Policy, paragraph 4(b), includes a non-exclusive list of circumstances that are considered evidence of bad faith in the registration and use of a domain name:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant cites the last instance, misleading Internet users for commercial gain, but there is no evidence in the record that the Respondent has used the Domain Name for anything other than the Complainant’s website. The Complainant objects to the Respondent selling similar products through other websites, but there is no indication in the record or from a perusal of the website associated with the Domain Name that the Domain Name has been used to point potential customers to a competing website.
Critically, the Policy requires persuasive evidence of bad faith both at the time the Domain Name was registered and in the Respondent’s subsequent use of the Domain Name. See, e.g., Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011. The Complaint must establish that the Respondent registered the Domain Name with the intent of exploiting or damaging the Complainant’s mark. Normally, this is not possible when, as here, neither the Complainant nor the mark was established at the time the Domain Name was registered. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), section 3.1 (and cases cited therein). There are unusual cases where a respondent had prior knowledge of plans to use a mark and was found to have acted in bad faith by preemptively registering a domain name to mislead Internet users (id.), but that does not describe the present circumstances. The record indicates that the Respondent has used the Domain Name from the beginning for the benefit of the Complainant, of which he remains an owner.
Without persuasive evidence that the Respondent intended from the outset to use the Domain Name someday to divert customers from the Complainant, or to sell the Domain Name to the Complainant for an excessive price, the Panel concludes that the Complainant has not established the probability of bad faith in the registration and use of the Domain Name. E. Reverse Domain Name Hijacking
The Respondent requests a finding of reverse domain name hijacking or harassment. This is defined in the Definitions section of the Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Paragraph 15(e) of the Rules provides as follows:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
The Rules do not provide for monetary remedies or specific relief in such a case.
While the Panel finds that the Complainant has not met its burden of proof on the element of bad faith, the Panel recognizes that there is an ongoing, multi-faceted business dispute between the parties, characterized by recent conduct that might lead either of them to suspect the good faith of the other. The Complaint is not plainly impossible, as the Respondent suggests, and the Panel does not agree that it could only have been launched to harass the Respondent. As discussed above, there have been successful UDRP complaints even in some circumstances where the domain name in dispute was registered before the relevant mark was established.
In these circumstances, the Panel declines to make a finding of reverse domain name hijacking or harassment. 7. Decision
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Dated: March 4, 2012
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