The Complainants are NH Resources LLC and Vaughn Crowe of Southlake, Texas, United States of America (the “US”), represented by Charhon Callahan Robson & Garza, PLLC, US.
The Respondent is Andrew Holmes of Dubai, United Arab Emirates, represented by Vinson & Elkins LLP, US. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2015. On January 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 16, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent (a privacy shield). The Center sent an email communication to the Complainants on January 20, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on January 23, 2015 replacing the privacy shield with the Respondent.
The Center verified that the Complaint as amended by the amended 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 January 29, 2015. In accordance with the Rules, paragraph 5(a), the due date for a Response was February 18, 2015. The Response was filed with the Center on February 18, 2015.
The Center appointed John Swinson, Gaynell Methvin and David H. Bernstein as panelists in this matter on March 20, 2015. The Panel finds that it was properly constituted. Each member of 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 factual background to this dispute is complex. The Respondent at one time worked with the Complainants. They are now competitors. There have been disputes and lawsuits over a range of issues.
The First Complainant is NH Resources LLC, a US company, registered in 2013. The Second Complainant is a director and shareholder of the First Complainant.
The Complainants claim common law trade mark rights in “”. The Complainants registered the domain name on October 21, 2004. The First Complainant is currently listed as registrant of this domain name.
The Respondent is Andrew Holmes of the United Arab Emirates. The Respondent is the legal representative for No Heat Resources DMCC, an entity affiliated with the Complainants. The Second Complainant, his brother (Ryan Crowe) and David Snodgrass are the directors of No Heat Resources DMCC, and they each own one third of the shares in the company.
The Respondent registered the Disputed Domain Name on July 27, 2014.
The website at the Disputed Domain Name is headed “No Heat Chemicals”. It advertises production and decontamination chemical products and services for the oil and gas industry. The copyright notice identifies No Heat Chemicals LLC FZ as the copyright owner. The contact page shows that “No Heat Chemicals” is situated in Dubai, United Arab Emirates. The contact page also provides the email addresses of the Respondent and Mr. Snodgrass.
In short, this domain name dispute is part of a larger dispute between the Crowe brothers and their associated interests on the one hand and Mr. Holmes and Mr. Snodgrass and their associated interests on the other. 5. Parties’ Contentions A. Complainants
The Complainants’ contentions are as follows.
Background
In 2005, the Second Complainant, Mr. R. Crowe and Mr. Snodgrass registered No Heat Resources Pte. Ltd., an oilfield services company based in Singapore, to manufacture and sell chemicals. Each individual was a director and owned one third of the shares in the company.
In 2012, the same individuals registered a company in the United Arab Emirates, No Heat Resources DMCC. Once again, each individual was a director and owned one third of the shares in the company. Mr. Snodgrass was appointed Managing Director and the Respondent was appointed legal representative.
In 2013, the same individuals registered a company in Texas, US (that is, the First Complainant), with the same directorships and shareholdings.
On August 12, 2014, the First Complainant brought proceedings against Mr. Snodgrass in Tarrant County Court, Texas, US. The Court issued a temporary restraining order (“TRO”) prohibiting Mr. Snodgrass from engaging in any activities that competed with the First Complainant’s business activities.
On August 27, 2014, the First Complainant, the Second Complainant, Mr. R. Crowe, and Mr. Snodgrass entered into a Term Sheet. It provided, among other things, that the above lawsuit was dismissed, that Mr. Snodgrass sold his interest in the First Complainant to the Second Complainant and that Mr. Snodgrass was not to compete with the First Complainant’s business in North or Central America for two years.
The Complainants also outlined other proceedings involving the parties to this dispute. In the interests of brevity, the Panel has consolidated the Complainants’ and the Respondent’s submissions in relation to other legal proceedings in section 6B below.
Identical or Confusingly Similar
The Complainants are the owners of common law trade mark rights in “”. The Complainants have been using “” in commerce since October 21, 2004.
The Disputed Domain Name is identical or confusingly similar to the “” mark.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the Disputed Domain Name for the following reasons:
- The Complainants have not granted the Respondent permission to use the Disputed Domain Name.
- The Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services. Mr. Snodgrass has contracted not to compete with the First Complainant.
- The Respondent is not commonly known by the Disputed Domain Name.
- The Disputed Domain Name is being used for commercial purposes.
Registered and Used in Bad Faith
The Respondent has registered the Disputed Domain Name primarily to disrupt the First Complainant’s business. The Respondent has breached the Term Sheet. B. Respondent
The Respondent’s contentions are as follows.
Background
The Respondent adds the following to the background information provided by the Complainants.
The Second Complainant, Mr. R. Crowe, Mr. Snodgrass and the Respondent all had email addresses that they used for business activities.
In 2011, Mr. R. Crowe confessed to Mr. Snodgrass that he paid bribes to secure orders for No Heat Resources Pte. Ltd. This confession resulted in the registration of No Heat Resources DMCC, as Mr. Snodgrass wanted to distance himself from the Crowe brothers’ activities in Singapore.
In 2012, the parties “effectively stopped” doing business through No Heat Resources Pte. Ltd. and began running all business through No Heat Resources DMCC. Mr. Snodgrass was the Managing Director of No Heat Resources DMCC and had a power of attorney in his favour. During this time, the “” website was used to carry out business for No Heat Resources DMCC, and Mr. Snodgrass and the Respondent used their email addresses as part of those business activities.
In 2013, the Crowe brothers requested that a third company (the First Complainant) be set up, in order for Mr. R. Crowe to gain legal residency in the US. The company was not intended to trade chemicals, and the Crowe brothers and Mr. Snodgrass agreed that sales were to be directed through No Heat Resources DMCC. This arrangement did not last, and as the business developed, the Crowe brothers were selling in the US through the First Complainant and Mr. Snodgrass and the Respondent were selling in the Middle East and Africa through No Heat Resources DMCC. All of the companies used the website and all of the individuals used email addresses to conduct business.
On October 15, 2014, the Second Complainant deleted Mr. Snodgrass and the Respondent’s email addresses and removed all reference to Mr. Snodgrass and No Heat Resources DMCC from the website at . (Mr. Snodgrass had anticipated this may happen and had instructed the Respondent to register the Disputed Domain Name in July 2014.)
At this time, Mr. Snodgrass and the Respondent started using their email addresses to conduct business for No Heat Resources DMCC, as they could no longer use their email addresses.
Mr. Snodgrass and the Respondent are prepared to start doing business as No Heat Chemicals LLC FZ once No Heat Resources DMCC’s business is concluded. This business of this new company will be distinct from the First Complainant’s business.
Other Legal Proceedings
The Respondent also outlined other proceedings involving the parties to this dispute, in addition to the proceedings disclosed by the Complainants. As explained above, a consolidated summary of the legal proceedings involving the parties is set out in section 6B below.
The Respondent submits that this is not the appropriate forum for this matter, as the Policy does not provide a means for resolving complex business disputes.
Identical or Confusingly Similar
The Complainants lack common law trade mark rights in “”. The Complainants have provided no evidence that the alleged trade mark has acquired a secondary meaning. Another unrelated company has been trading under the name “No Heat” since at least 2005.
Rights or Legitimate Interests
The Respondent, as an agent for No Heat Resources DMCC, has legitimate interests in the Disputed Domain Name. The Respondent (along with Mr. Snodgrass) is using the Disputed Domain Name to further the business of No Heat Resources DMCC.
In relation to the Complainants’ submissions regarding the Term Sheet, the Policy is not designed to deal with contractual claims. In any event, the registration of the Disputed Domain Name predates the execution of the Term Sheet.
Registered and Used in Bad Faith
The registration of the Disputed Domain Name predates the execution of the Term Sheet. The Respondent cannot have aided or abetted the breach of a non-existent contract. In any event, the First Complainant and No Heat Resources DMCC are not competitors.
The Disputed Domain Name was registered to continue the business of No Heat Resources DMCC, following the deletion of the email addresses. 6. Discussion and Findings
To succeed, the Complainants must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainants. A. Multiple Complainants
In light of the business arrangements outlined above, the Panel finds that the First and Second Complainants have common interests in the alleged “” common law trade mark. As such, the Panel permits both parties to be joint Complainants in this dispute. B. Other Legal Proceedings
The other legal proceedings involving the parties are outlined below. The Panel notes that the Complainants did not disclose all of these proceedings in the Complaint.
- August 12, 2014: the First Complainant commenced proceedings in Tarrant County Court against Mr. Snodgrass. The Court issued a TRO prohibiting Mr. Snodgrass from engaging in business activities in competition with the First Complainant.
- August 27, 2014: the Term Sheet was executed, ending the August 12 proceedings.
- October 21, 2014: No Heat Resources DMCC filed suit against the Crowe brothers in Tarrant County Court, in relation to the deletion of the email addresses. The Court issued a TRO, requiring the reactivation of the email addresses and the restoration of deleted emails. The TRO expired on November 19, 2014. No Heat Resources DMCC withdrew this suit.
- October 2014: Mr. Snodgrass sued the Crowe brothers and No Heat Resources Pte. Ltd. in Singapore, alleging that Mr. R. Crowe committed fraud in operating No Heat Resources Pte. Ltd. and seeking winding up of the company. This lawsuit is pending.
- December 10, 2014: the Crowe brothers sued Mr. Snodgrass, the Respondent and No Heat Resources DMCC in Dallas County Court, Texas. The Crowe brothers have not served the lawsuit on any defendant.
The parties’ submissions tell the story of a complex and ongoing commercial dispute, involving allegations of breach of contract, breach of fiduciary duty, conspiracy, bribery and corruption. Clearly, this dispute goes much further than a claim of cybersquatting in respect of the Disputed Domain Name. It is well established that the Policy is not well designed to address complex business disputes (see, e.g., Ruff Roofers, Inc., Ruff Roofing Inc. and Roofing by Ruff, Inc. v. Jean Ruff,WIPO Case No. D2014-1755 and UTVG Europe Holding B.V. v. Vitali S,WIPO Case No. D2014-1345).
The following frequently-cited passage from The T, LLC v. Jeffrey S. Poploff,WIPO Case No. D2000-1470, is relevant here:
“This Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting. To invoke the Policy, a Complainant must show that the domain name at issue is identical or confusingly similar to a mark in which the Complainant has rights, that the Respondent lacks rights or a legitimate interest in the domain name, and that the Respondent registered and used the name in bad faith. Policy 4(a). To attempt to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy. Latent Technology Group, Inc. v. Bryan Fitchie, File No. FA0007000095285 (NAF Sept. 1, 2000) (dispute concerning employee’s registration of domain name in his own name and subsequent refusal to transfer it to employer raises issues of breach of contract and breach of fiduciary duty that are more appropriately decided in court, not before a UDRP panel).”
While the above by itself is sufficient reason for a denial of the Complaint, the Panel in any event reaches the same conclusion on the following analysis under each element of the Policy. C. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainants must establish that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainants have rights.
The Complainants do not have any registered trade or service marks.
The Complainants have claimed common law trade mark rights in “” – and not in “No Heat” per se.
In order to establish common law or unregistered trade mark rights, a complainant must show that an alleged trade mark has become a distinctive identifier associated with the complainant or its goods or services (i.e., that the trade mark has acquired a “secondary meaning”).
Previous UDRP panels have held that “a conclusory allegation of common law or unregistered trade mark rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required” (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), at paragraph 1.7).
The Complainants have not submitted that “” has acquired a secondary meaning. Nor have the Complainants provided any evidence to support their claim of common law trade mark rights (e.g., evidence of the length and amount of sales under the trade mark, advertising, consumer surveys and media recognition).
In light of the above, the Panel finds that the Complainants have failed to establish common law or unregistered trade mark rights in “” under the Policy.
The record in this dispute shows that “No Heat” is being used by various entities, some of which are affiliated. It is not clear from the evidence before the Panel whether either of the Complainants have trade mark rights in “No Heat”. It is equally unclear whether the use of “No Heat” by these disparate parties constitutes naked licensing which means that none of the parties owns any trade mark rights in the term. The Second Complainant (personally) almost certainly does not. There has been an inadequate showing of whether the First Complainant owns common law rights based on use of “No Heat” in any jurisdiction. In any event, the Complainants have not asserted that they have trade mark rights in respect of “No Heat”. This is not to say that the Panel concludes that the Complainants lack any trade mark rights in “No Heat” or “”; the Panel simply concludes that Complainants have failed adequately to prove such rights in this proceeding.
Accordingly, the Complainants do not succeed in meeting the requirements of paragraph 4(a)(i) of the Policy. D. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainants must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainants are required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Respondent is, and was at the relevant time, the legal representative for No Heat Resources DMCC, and it is asserted by the Respondent that the Respondent as agent for No Heat Resources DMCC registered the Disputed Domain Name at the direction of Mr. Snodgrass (the managing director of No Heat Resources DMCC), and that the Respondent and Mr. Snodgrass are using the Disputed Domain Name to further the business of No Heat Resources DMCC.
Currently, the content on the website at the Disputed Domain Name gives the impression that the Disputed Domain Name is being used by No Heat Chemicals, not No Heat Resources DMCC. However, the Respondent submits that No Heat Chemicals is not transacting business yet, and that he and Mr. Snodgrass are using the Disputed Domain Name to conduct business for No Heat Resources DMCC. As evidence of this, the Respondent annexed an advertisement for No Heat Resources in Middle East Oil & Gas magazine (dated January 2015), which lists both his and Mr. Snodgrass’ email addresses.
The Respondent is involved in various ways in various No Heat entities, and is using the Disputed Domain Name to further the business of one or more of those entities. A court in Texas issued a TRO in October 2014 restraining the Second Complainant and his brother from preventing the Respondent and Mr. Snodgrass from accessing their No Heat Resources DMCC email accounts (i.e., email accounts that included @ as part of the email address).
In light of the above, the Panel finds that the Complainants have failed to establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. To the contrary, the court decision in Texas strongly supports the conclusion that the Respondent has rights in the Disputed Domain Name.
Accordingly, the Panel decides that the Respondent has rights or legitimate interests in respect of the Disputed Domain Name as a representative of No Heat Resources DMCC. E. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainants must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Panel finds that, because the Respondent has rights in the Disputed Domain Name, including through the Respondent’s affiliation with No Heat Resources DMCC and its associated right to use the email addresses, the Respondent has not registered and used the Disputed Domain Name in bad faith.
The Complainants assert that the existence of the Term Sheet means that the Disputed Domain Name was registered in bad faith. However, the Term Sheet post-dates the registration of the Disputed Domain Name. Further, the Term Sheet does not relate to the Disputed Domain Name, and it does not prohibit the Respondent or No Heat Resources DMCC from using the “No Heat” name in all jurisdictions and for all goods and services. The Term Sheet does not assist the Complainants in relation to bad faith registration of the Disputed Domain Name.
In light of the above, the Panel finds that the Complainants have failed to establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith. F. Reverse Domain Name Hijacking
Reverse Domain Name Hijacking (“RDNH”) is defined as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name” (see paragraph 1 of the Rules).
Although the Respondent has not made any submissions in relation to RDNH, the Panel believes it has a responsibility to independently consider whether the Complaint was brought in bad faith (see, e.g., Chuan Sin Sdn. Bhd. v. Internet Admin (not for sale), Reflex Publishing Inc.,WIPO Case No. D2014-0557 and cases cited therein and paragraph 15(e) of the Rules).
In proceedings under the Policy, there is no discovery, no live hearing and no cross-examination of witnesses. As such, panels rely on the parties to provide all of the material facts in the parties’ written submissions. To this end, the standard form complaint concludes with the following certification:
“The Complainant certifies that the information contained in this Complaint is to the best of the Complainant’s knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under the Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.”
The Complainants submitted a Complaint which told a selective and incomplete story. The Complainants did not disclose the legal proceedings initiated by No Heat Resources DMCC in Tarrant County and by Mr. Snodgrass in Singapore. The deletion of the Respondent’s and Mr. Snodgrass’ email addresses was not disclosed. These facts are of central relevance to the questions of whether the Respondent has rights or legitimate interests and whether the Respondent registered and used the Disputed Domain Name in bad faith.
As discussed above, on the record before the Panel, the Respondent has a right or legitimate interest in the Disputed Domain Name and the registration was not in bad faith. The Complainants knew that there was no proper basis for the Complaint, but they filed it anyway.
For the reasons set out above, the Panel finds that the Complainants have engaged in RDNH. 7. Decision
For the foregoing reasons, the Complaint is denied.
John Swinson
Presiding Panelist
Gaynell Methvin
Panelist
David H. Bernstein
Panelist
Date: April 6, 2015
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