The Complainant is Roger Martin of Oakville, Ontario, Canada, represented by Torys LLP, United States of America ("United States").
The Respondent is Sandra Blevins, Social Design of New York, New York, United States, represented by Gottlieb, Rackman & Reisman, P.C., United States. 2. The Domain Name and Registrar
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 28, 2016. On January 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 30, 2016, 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 verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 23, 2016. The Center received communications from the Respondent on February 10, 2016, and February 18, 2016. The due date for filing a Response was extended to March 1, 2016. The Response was filed with the Center on March 1, 2016.
The Center appointed Andrew D. S. Lothian, Robert A. Badgley and D. Brian King as panelists in this matter on April 1, 2016. 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 Complainant is former Dean of the Rotman School of Management at the University of Toronto and carries on a management consulting business named "Strategic Choice Architecture". The Complainant affirms that he registered the business under this trade name with the Province of Ontario, Canada in 2001 under registration number 220594337. The Complainant produces seven invoices in the name of Strategic Choice Architecture dating from between March 31, 2000 and December 16, 2015, addressed to a variety of corporations in the total sum of CAD 128,400 (for those presented in Canadian Dollars) and USD 376,046.70 (for those presented in United States Dollars).
The Respondent is a resident of New York, New York, United States and operates a consulting firm named "Institute of Social Design". The Complainant and the Respondent were in a personal and professional relationship between about 2009 and 2013, were engaged to be married in 2009 and were married in late 2010. The Parties dispute the extent of their professional relationship. The Complainant says that he retained the Respondent to provide marketing and business development services, including website design and domain name registration. The Respondent says that she arranged speaking engagements and promotions for the Complainant and that during their personal relationship the Parties treated one another as business partners.
The disputed domain name was created by the Respondent on October 29, 2009. The Respondent says that she also created the domain name on March 27, 2009, and adds that both these domain names were registered in her personal name with the Complainant's full knowledge due to the nature of the Parties' relationship.
The Parties entered into a separation agreement dated April 24, 2013, which inter alia confirmed that the Parties had a business relationship, noted that the Respondent had been arranging the Complainant's speaking engagements and promotions through the Institute of Social Design, and required the Respondent to transfer the domain name to the Complainant. The said agreement made no reference to the disputed domain name. The said agreement stated that it settled all issues between the Parties.
The Respondent produces a screenshot of the website associated with the disputed domain name dated February 26, 2016. This shows a parking page containing sponsored listings provided by the Registrar containing links to marketing, information technology, senior management and organizational consulting services. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical to a trade mark in which he has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name has been registered and is being used in bad faith.
The Complainant asserts that he has an unregistered common law service mark in the name "Strategic Choice Architecture" on the basis that this has become a distinctive identifier associated with the Complainant and his management consulting services. The Complainant submits that he has used such service mark since 1998, has registered it in Ontario, Canada as the name of his business and has contracted with, invoiced and received payment for services under such mark with clients such as Proctor & Gamble, Verizon, American Express, Lego, VF Corporation and the Government of Canada. The Complainant indicates that he has participated in business conferences and has been recognized in business publications under such service mark, thus building significant goodwill therein and that the revenue of his said business has exceeded 18 million dollars (it is not clear whether this amount is Canadian or United States Dollars).
The Complainant submits that the Respondent registered the disputed domain name "ostensibly on Complainant's behalf but instead listed herself as the registrant". The Complainant states that the Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, has no business or organization commonly known by the disputed domain name and is not making a legitimate noncommercial or fair use thereof. The Complainant asserts that the Respondent's sole purpose in maintaining the disputed domain name is to block the Complainant from using it and that this does not confer rights or legitimate interests in such domain name.
The Complainant asserts that the disputed domain name was registered in bad faith because the Respondent registered it as part of the Respondent's consulting for the Complainant's business, was aware of the Complainant's service mark through such consulting work and yet knowingly registered the disputed domain name for herself. The Complainant asserts that the disputed domain name is being used in bad faith because it is parked featuring pay-per-click advertising links as a classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy and in consequence of its being passively held in the sense described in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and subsequent UDRP cases. B. Respondent
The Respondent contends that the Complaint should be denied.
The Respondent submits that the present dispute is beyond the scope of the Policy because it involves the Parties' divorce and corresponding settlement agreement. The Respondent asserts that correspondence from the Complainant's counsel to the Respondent serves as an admission by the Complainant that the disputed domain name is governed by such agreement. The Respondent notes that the settlement agreement specifically contemplated and encompassed domain names, that it provided for the transfer of by the Respondent to the Complainant and that the Respondent duly complied with such provision. The Respondent adds that panels constituted under the Policy have often refused to hear disputes concerning contractual matters on the grounds that these also fall outside the scope of the Policy. The Respondent makes reference to several cases under the Policy relating to the rights of divorced parties to domain names which are supportive of the contention that such disputes are not within the purview of the Policy.
The Respondent argues that the Complainant's claimed common law mark is at best highly descriptive, submitting that "Choice Architecture" is a common industry term for the design of different ways in which choices can be presented to consumers and that the addition of the term "Strategic" does not render the alleged mark any less descriptive. The Respondent contends that the evidence provided by the Complainant is insufficient to establish a common law mark by way of secondary meaning in the term and asserts that neither the home page of the Complainant's website nor the page at "" relative to the Complainant mentions "Strategic Choice Architecture".
The Respondent submits that she has a right or legitimate interests in the disputed domain name because she has offered consulting services in the relative field since at least 2013, including on her website home page, and that the Complainant implicitly ceded any ownership claims to the disputed domain name after the Parties' divorce through the marital settlement agreement. The Respondent contends that even if the Complainant has any rights in the STRATEGIC CHOICE ARCHITECTURE mark the Panel should conclude that the Respondent likewise has rights and that the Complainant relinquished his rights in the disputed domain name via the marital settlement agreement.
The Respondent asserts that the Complainant must show both registration and use in bad faith but has proved neither of these. The Respondent submits that if it is accepted that the Respondent registered the disputed domain name on the Complainant's behalf but in her own name, such action would not constitute bad faith registration in and of itself.
The Respondent notes that she did not offer to sell the disputed domain name to the Complainant although the Complainant has offered to purchase it. The Respondent submits that the Complainant has produced no facts to support an allegation that the Respondent registered the disputed domain name to block the Complainant. With regard to the use of the disputed domain name in connection with pay-per-click links, the Respondent asserts that she was unaware of this use, which she notes was implemented by the Registrar, adding that she has not profited thereby and that such use does not automatically demonstrate bad faith. Finally, the Respondent submits that the dispute does not meet the factors typically found to demonstrate bad faith resulting from "passive holding". 6. Discussion and Findings
To succeed in this proceeding, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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. A. Identical or Confusingly Similar
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel's finding below on registration and use in bad faith, it is unnecessary for the Panel to address the issue of the Complainant's rights in the mark STRATEGIC CHOICE ARCHITECTURE. B. Rights or Legitimate Interests
Likewise, in light of the Panel's finding below it is unnecessary for the Panel to address the topic of the Respondent's rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel notes that this case arises out of a personal and professional relationship between the Parties which involved the Respondent working to promote the Complainant's business activities both before and during their marriage. The disputed domain name was created as a consequence of these intertwined relationships. It was registered in the Respondent's name. This fact on its own, in the context of the Parties' relationship, does not necessarily demonstrate that the Respondent was acting with bad faith intent at the point when the disputed domain name was registered. There are no other facts in the record pointing in the direction of registration in bad faith.
In any event, there are far wider issues which have been placed before the Panel in the present case. First, there are questions regarding the nature of the Parties' business relationship and the extent to which this was or became one of joint adventure or was more of an agency or subcontracting arrangement when the disputed domain name was registered. Secondly, there is the existence of the settlement agreement preceding the Parties' divorce and questions arise regarding its meaning and effect, given that it states that it is in full and final settlement of all issues between the Parties and clearly contemplates the transfer of a different domain name which had also been registered by the Respondent in her own name. These issues, whether characterized as being of a commercial or a family law nature, are not suited for resolution under the Policy, which is designed to address clear cases of abusive cybersquatting (see, for example, the observations of the UDRP panels in The T, LLC v. Jeffrey S. Poploff,WIPO Case No. D2000-1470, Kurt Garmaker d/b/a "Repitition Miniature Schnauzers" v. Hilde Haakensen, Axcium Design,WIPO Case No. D2015-0993 and IL Makiage Cosmetics (2013) Ltd. v. Mark Rumpler / Mordechai Rumpler / Domains By Proxy, LLC,WIPO Case No. D2015-2311).
In these circumstances, the Complaint under the Policy must fail. In reaching that conclusion, the Panel takes no position on the merits of any wider dispute between the Parties. The Complainant remains free to seek remedies in other fora and the Panel notes for completeness that the present finding is confined to the Policy and that it does not seek to influence any such subsequent proceedings, should they be raised. 7. Decision
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Presiding Panelist
Robert A. Badgley
Panelist
D. Brian King
Panelist
Date: April 7, 2016
Full & Egal Universal Law Academy