Complainant is HonorV of New York, New York, United States of America ("United States"), represented by Greenberg Traurig, LLP, United States.
Respondent is Adam Kandil, Kandilit, LLC of Mountain Lakes, New Jersey, United States, self-represented. 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 August 1, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 2, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on August 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2017. On August 28, 2017, Respondent requested an extension of 30 calendar days to submit the Response. On August 29, 2017, Complainant requested the Center to deny any extension of time. On August 29, 2017, Respondent sent an email communication in reply to the Complainant's request to deny any possible extension of time. Under the circumstances of this case, the Center extended the Response due date until September 4, 2017. The Response was filed on September 4, 2017.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on September 8, 2017. 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
Complainant is a charity organization which provides health and wellness support and employment services to returning veterans. Complainant registered the trademark HONORVET with the United States Patent and Trademark Office on October 9, 2012 (Registration No. 4,220,440). The mark has been used in commerce since March 2011.
The disputed domain name was registered on March 29, 2010, and, according to the information shown in the WhoIs and confirmed by the Registrar, its information was updated on July 11, 2016. Respondent is listed as the current registrant of the disputed domain name.
On June 12, 2017, in response to a trade mark infringement complaint by Complainant to the Registrar of the disputed domain name, the Registrar suspended the website at the disputed domain name. Currently, the disputed domain name resolves to a "Hello World" website hosted by Wordpress. 5. Parties' Contentions A. Complainant
Complainant asserts that the disputed domain name is identical or confusingly similar to its trademark because the disputed domain name incorporates HONORVET in its entirety. Moreover, Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because Respondent misappropriated the disputed domain name from Complainant. According to the declaration submitted by Complainant's CEO, Complainant's CEO registered the disputed domain name and the domain name on March 29, 2010, in conjunction with a non-profit veterans' services organization. In 2015, Complainant's CEO, and Respondent KandilIT, LLC co-founded a for-profit company (HonorVet Services, LLC) to provide staffing and IT consulting for disabled veterans. In February 2015, Complainant's CEO decided to allow HonorVet Services, LLC to use the disputed domain name as long as he remained involved in HonorVet Services, LLC and shared the domain name registrar login information for the disputed domain name with an employee of HonorVet Services, LLC for the purpose of creating a website. Following a dispute in the fall of 2015, Complainant's CEO stopped working with HonorVet Services, LLC and withdrew his authorization to HonorVet Services, LLC for the use of the name "HonorVet Services." Thereafter, Complainant's CEO discovered that after he stopped working with HonorVet Services, LLC, Respondent accessed the domain registration records for the disputed domain name and changed the ownership of the disputed domain name to himself. Complainant's CEO asked Respondent to restore ownership of the disputed domain name but Respondent refused. According to Complainant's CEO, Respondent also changed the password to the email account belonging to Complainant's CEO and associated with the disputed domain name so that Complainant's CEO could no longer access customer communications through that email address. In view of the foregoing, on June 1, 2017, Complainant filed a trademark infringement complaint against Respondent with the Registrar of the disputed domain name, alleging that Respondent was using Complainant's registered HONORVET trademark in the disputed domain name and throughout its website without authorization and was thus infringing on Complainant's trademark. On or about June 12, 2017, in response to Complainant's trademark infringement complaint, the Registrar suspended the website at the disputed domain name and such suspension is still in effect.
Complainant argues that this is a case of bad faith registration and use of the disputed domain name because Respondent made an unauthorized change to the ownership of the disputed domain name and to the password of Complainant's CEO's email account. According to Complainant, these actions show that Respondent intentionally attempted to attract Internet users to Respondent's website for commercial gain by creating a likelihood of confusion as to the affiliation, sponsorship, and source of the website. The disputed domain name is so obviously connected with Complainant and its CEO, personally and in connection with the non-profit charity, HonorV with the domain name, that its very use by someone with no connection to the Complainant suggests opportunistic bad faith. Complainant also contends that Respondent's change to the ownership of the disputed domain name and its use of Complainant's CEO's email address show that the disputed domain name was registered in bad faith and for the purpose of disrupting the business of a competitor, i.e., Complainant. Finally, Complainant argues that Respondent's awareness of Complainant's trademark rights in HONORVET and its use of the disputed domain name connected with Complainant in and of themselves evidence bad faith registration and use. B. Respondent
Respondent does not dispute that the is identical or confusingly similar to HONORVET. Rather, Respondent contends that under its partnership agreement with Complainant's CEO, which resulted in the creation of HonorVet Services, LLC, it has a legitimate right to the disputed domain name and that it has not registered or used the disputed domain name in bad faith.
Respondent argues that it did not make a change to the ownership of the domain and that it already had full rights to the disputed domain at the time it was transferred to the current Registrar. According to Respondent, the only change it made to the registration information of the disputed domain name was to update the email address from that belonging to an employee who no longer worked for HonorVet Services, LLC to that belonging to Respondent. Respondent also asserts that it made no changes to the content of the website associated with the disputed domain name from the time of its creation to the point when it was inactivated by the Registrar. Moreover, Respondent argues that Complainant's CEO transferred all rights to the disputed domain name and the associated website when he provided a HonorVet Service, LLC's employee with the login information for the disputed domain name. According to Respondent, Complainant has failed to provide proof that this transfer of rights was contingent on Complainant's CEO remaining with HonorVet Services, LLC. Respondent argues that there was no such limitation and that it remains authorized to use the disputed domain name as, under the agreement between the parties, the joint venture remains in force as Complainant remains a member – even following the withdrawal of Complainant's CEO from HonorVet Services, LLC. 6. Discussion and Findings A. Identical or Confusingly Similar
Respondent does not dispute that the disputed domain name is confusingly similar to Complainant's trademark. Accordingly, Complainant has satisfied paragraph 4(a)(i) of the Policy with respect to the disputed domain name. B. Rights or Legitimate Interests
Based on the limited evidence on record, Complainant has failed to prove by a preponderance of the evidence that Respondent has no colorable claim to the disputed domain name. The record evidence shows that Complainant and Respondent entered into a partnership agreement and formed a company named HonorVet Services, LLC to offer bona fide services to war veterans. Complainant's CEO authorized HonorVet Services, LLC to use the disputed domain name.
Complainant concedes that Respondent previously had rights to use the disputed domain name by virtue of a business relationship that has since deteriorated into litigation pending in the New Jersey courts. Complainant contends that Respondent no longer has rights because the business relationship ended. Respondent disputes this.
UDRP proceedings are not appropriate for the resolution of contested business disputes that are the subject pending litigation. Complainant acknowledges the pendency of the New Jersey litigation "relating to a business dispute between the parties," but asserts that the litigation "was not 'commenced or terminated in connection with or relating to the Disputed Domain Name …'". The Panel disagrees based on Respondent's submission of pleadings filed in that litigation, including a request for an injunction "returning my access to the Go daddy account to control the HVS website and domain, and my @ email address." Respondent's Annex 5. The Panels considers that the overlap between the pending New Jersey litigation and the court proceedings is greater than Complainant acknowledges.
Accordingly, the Panel finds that Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Assuming that the update to the disputed domain name contact information in 2016 affected a transfer of the disputed domain name from Complainant's CEO to Respondent, the update qualifies as a new registration. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 3.9. However, Complainant has failed to show that the Respondent registered and used the disputed domain name in bad faith. On the record before the Panel, and as stated by Complainant, Respondent was authorized by Complainant's CEO to use the disputed domain name in association with HonorVet Services, LLC and Complainant provides no evidence to indicate that Respondent used the disputed domain name outside of the services provided by HonorVet Services, LLC. At its core, this is a contract dispute between former business partners, which raises genuine questions as who has the rights to the disputed domain name. On the limited record here, the Panel cannot find that Respondent registered and used the disputed domain in bad faith.
Complainant has failed to prove by a preponderance of evidence that Respondent registered the disputed domain name in bad faith. Complainant asserts that, although it gave Respondent the access codes for the disputed domain name during the tenure of their business relationship, Respondent surreptitiously changed ownership of the disputed domain name without authority. Respondent denies this and asserts that the change was made pursuant to an agreement. The assertions, which on their face do not appear unreasonable in the context of the matter, are the subject of a pending court dispute with greater fact-finding capacity than is available under the Policy. The Policy is not a suitable mechanism to resolve the present dispute and Complainant's effort fails for failure to satisfy its burden to prevail by a preponderance of the evidence.
Complainant has failed to satisfy paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Lawrence K. Nodine
Sole Panelist
Date: September 22, 2017
Full & Egal Universal Law Academy