The Complainant is Luciano Febbo of Chieti, Italy, represented by Vittorio La Piscopia, Italy.
The Respondent is Marco Graziano of Palo Alto, California, United States of America represented by US IP Services, P.C., United States of America. 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 November 2, 2017. On November 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same date, 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. On November 8, 2017 the Complainant filed an amendment to the Complaint.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2017. On November 22, 2017, the Respondent requested an extension pursuant to paragraph 5(b) of the Rules. On November 23, 2017, the Center notified the Parties that the Response due date was extended until December 3, 2017. The Response was filed with the Center on November 30, 2017.
The Center appointed Nick J. Gardner as the sole panelist in this matter on December 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
The parties are involved in the development of a system or systems allowing for the automated entry of guests to hotel rooms using smartphone technology, thus removing the need for traditional room keys. The term "hoau" is an abbreviation of the words "hotel automation".
The background to this dispute is a joint venture agreement entered into on June 17, 2016 between Visible Energy Inc., a California corporation and HOAU srl, an Italian corporation. The former corporation is controlled by the Respondent and the latter corporation by the Complainant. The material terms of this joint venture agreement are discussed below. It is subject to the law of the State of California. 5. Parties' Contentions Complainant
The Complaint is not very detailed and provides relatively little information. It recites the joint venture agreement described above and then says:
"Two days after the agreement subscription, the Respondent registered the domain name 'www.' for marketing in USA. In a first moment the Respondent uploaded on the website all the informations about the Joint Venture, included the logo "HOAU", received by e.-mail from HOAU on may 31st 2016 (Annex n° 6). On May 2nd 2016 HOAU sent to Respondent a notice of breach of contract. After that, the Respondent has modified all the contents of the website www.. The new contents of the website make confusion about the business once managed together. The Respondent's behavior must be regarded as unfaithful competition because he represents the Hoau America as of its exclusive property and not as a JV with Hoau S.r.l.. Indeed the Respondent through the website www. is publicizing the key-less system as if it were its property and HOAU AMERICA were one of its divisions trying to exclude the partner from ASA Market. The Respondent is misusing the website 'www.' in breach of contractual obligations". The remainder of the Complaint continues in a similar manner.
Although the point does not matter so far as the Panel's reasoning below is concerned, the Panel infers that the reference to notice of breach of contract being sent on May 2, 2016 is likely in error as the agreement was not entered into until June 17, 2016. It appears probable that the date intended to be stated is August 2, 2017 as the Complainant has exhibited correspondence (this is the only correspondence the Panel has been provided with) which is in the form of a letter from Italian lawyers to the Respondent's company dated August 2, 2017 and which reads as follows:
"August 2nd, 2017
Oggetto: Demand to Cease and desist use Trademark HOAU
In the name and on behalf of HOAU S.r.l., with headquarters in Torre De Passeri (Pescara), via S, Rocco n. 40, I write the present letter to mean the following:
Visible Energy its forbidden to use the trademark HOAU (US Registration N. 4899806).
Please remove immediately the trademark HOAU from every website related to Visible Energy and shut down the website 'www.'.
In the absence of immediate adherence to the resolution, within 24 hours of receipt of the present, the competent authority shall be used for the verification of any appeal at civil and criminal level." Respondent
The Response is also lacking in detail and in large measure fails to clarify the factual background as to the dispute between the parties. It records the fact that the Respondent (or his company) owns various trademark registrations, and relies on these in response to the Complaint. The Response also refers to the joint venture agreement described above and says this provided the Respondent with a legitimate interest in registering the Disputed Domain Name. 6. Discussion and Findings
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in that:
(i) The Disputed Domain Name is identical with or confusingly similar to a trademark 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;
(iii) The Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
In the light of the Panel's finding as to bad faith (below) the Panel does not consider it necessary to address this issue. B. Rights or Legitimate Interests
In the light of the Panel's finding as to bad faith (below) the Panel does not consider it necessary to address this issue. C. Registered and Used in Bad Faith
In order to succeed the Complainant has to show the Disputed Domain Name was registered and used in bad faith (emphasis added). It is well established that these requirements are conjunctive and both must apply. Accordingly if the Disputed Domain Name was not registered in bad faith then the Complaint cannot succeed irrespective of what has happened since registration.
In the present case there is no evidence at all supporting a finding of bad faith registration. Indeed it is not even clear to the Panel that the Complainant alleges registration in bad faith – as discussed further below it seems likely the Complainant has misunderstood the scope of the Policy. The substance of the Complaint appears to be directed at what the Respondent has done with the Disputed Domain Name after the joint venture agreement was (according to the Complainant) terminated. Such matters are not however relevant to the question of whether the Disputed Domain Name was registered in bad faith - given that registration was before the date that the joint venture agreement was apparently terminated. There appears to be no dispute that a joint venture agreement was entered into between the parties (through companies they controlled). So far as material for present purposes that agreement provided (amongst many other provisions) that:
- The joint venture was to trade as HOAU America and was to be established as a division of the Respondent's company.
- The Complainant through his company was to provide the joint venture with the "rights to use the name HOAU".
- The Management Team of the joint venture was to comprise the Respondent whose title was to be General Manager and the Complainant whose title was to be General Manager Europe.
- The Respondent's company's responsibilities within the joint venture included "to negotiate and establish service and sales contracts with customers".
The joint venture agreement contains no provisions dealing with domain name registrations nor as to trademark rights (beyond the provision described above). The Panel notes that the Complaint states that "According to Joint Venture Agreement entered into force on June 17th 2016 the Respondent shall be considered as having no rights and legitimate interests in respect of the domain name that is the subject of the Complaint". The Complaint does not explain which specific provision it is referring to in this regard and the Panel has been unable to find any provision in the joint venture agreement that corresponds to, or provides any foundation for, this allegation.
Absent any express provisions to the contrary (and none exist), and absent any more detailed explanation from the Complainant, it seems to the Panel impossible to infer the Disputed Domain Name was registered in bad faith when it was registered by the newly appointed general manager of the joint venture, which had expressly been granted the rights to use the name HOAU by the Complainant, and where the agreement contemplated the joint venture would be called HOAU America, and would seek to develop contracts with customers for the technology it was intended to exploit.
It would appear that the Parties to the joint venture fell out. It is unclear to the Panel when or why that was but there is no evidence before the Panel to suggest that the original registration of the Disputed Domain Name was not permitted by the joint venture agreement or was otherwise in bad faith. The Panel concludes that the Respondent's actions, through his company, were (on the balance of probabilities) consistent with the joint venture agreement and as such were also within paragraph 4(c)(i) of the Policy - "before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services" - and thereby establish that the Respondent had a legitimate interest in the Disputed Domain Name when he registered it.
It seems to the Panel that the Complainant may well have misunderstood the scope of the Policy. The Policy does not contemplate this Panel serving as a tribunal of general jurisdiction over any and all disputes which are somehow related to domain names. This Panel finds that the issues raised in this proceeding (i.e., as to the alleged termination of the joint venture agreement and the consequences of subsequent events) are outside the scope of proceedings under the Policy and are properly to be decided by appropriate judicial means. Therefore the Complaint should be dismissed. See, e.g., Clinomics Biosciences, Inc. v. Simplicity Software, Inc.,WIPO Case No. D2001-0823. 8. Decision
For the foregoing reasons, the Complaint is denied.
Nick J. Gardner
Sole Panelist
Date: December 20, 2017
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