Mitchell Madison Group v. Jim Quallen
Claim Number: FA1004001317575
Complainant is Mitchell Madison Group (“Complainant”), represented by Hans
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mitchellmadison.com>, registered with Network Solutions, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hugues G. Richard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On April 7, 2010, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <mitchellmadison.com> domain name is registered with Network Solutions, LLC and that the Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 12, 2010, the Forum
served the Complaint and all Annexes, including a Written Notice of the
Complaint, setting a deadline of May 3, 2010 by which Respondent could file a
Response to the Complaint, via e-mail to all entities and persons listed on
Respondent’s registration as technical, administrative, and billing contacts,
and to email@example.com by
email. Also on
A timely Response was received and determined to be complete on
Complainant’s Additional Submission was received on
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Mitchell Madison Group
is a global management consulting firm headquartered in
The service mark was
acquired by the Alexander James Group LLC in 2003. The "Last Listed
Owner" of the mark is The Alexander James Group LLC with address at
In April 2003, Jim Quallen, an employee of the Alexander James Group LLC, the owner of the Mitchell Madison Group trade mark, was tasked by the company to register the domain name mitchellmadison.com. Jim Quallen did so on April 30th, 2003, but used his residential address as the Registrant and Administrative Contact addresses and failed to show Mitchell Madison Group as the Registrant Organization Name., which is a violation of the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d)(1)(B)(i)(VII).
Jim Quallen is not using the Mitchellmadison.com domain name. Since its registration, it has been exclusively used by Mitchell Madison Group LLC and its predecessor companies. Since 2003, the name servers (NS records) of mitchellmadison.com were pointed to A.NS.INTERLAND.NET and B.NS.INTERLAND.NET. Complainant has full control of its name server entries and has been continuing to pay Interland (now Web.com) for this service. It is possible for it to show proof of control.
Jim Quallen is currently working for a direct competitor of Mitchell Madison Group LLC and has stated his intention to harm Mitchell Madison Group on several occasions.
Jim Quallen misrepresented
material facts in registration and his
In the same
Other than Mr. Dau, there are no known employees of Mitchell Madison
Group in the
The domain name is not identical to the service mark. The original
holder of the service mark (Mitchell Madison Group L.L.C. Limited Liability Company
Several firms are operating under similar names (e.g., MMG Partners, MMG Consulting, etc.) as well as using similar domain name (e.g., <mmgpartners.com>) and have not been the subject of past litigation regarding their usage of domain name or trademarks.
Other domain names owned by Respondent (including, but not limited to, <mitchellmadisongroup.com> and <mitchellmadison.eu>, etc.) are not being disputed by the Complainant.
It is not clear that the Complainant is a going concern and is in default on debt owed to third parties, including the Respondent.
Complainant provides no documentation that Jim Quallen was tasked to register the domain name by the company or that the associated fees were reimbursed to Respondent.
Mitchell Madison Group had not been formed as of the
Mitchell Madison Group has never competed directly with Alix Partners for even a single client account and does not plan to offer competitive services. No documentation of any alleged past competition has been provided by Complainant.
Complainant redacted portions of an email exchange to make it look more incriminating than the actual text (+ copy of the complete text of the email).
Respondent allowed Mitchell Madison Group to use the domain name rather than using it for its own purposes. This does not preclude Respondent using it in the future for valid purposes. All proofs of control that Complainant has asserted were only possible because Complainant was allowed by Respondent to use the domain name.
Complainant has not produced documentation of even one threat of the several alleged.
The full text of the email shows that unless the right to the domain name is not covered by the general release, some form of compensation is due in exchange for the transfer. Given that the initial purchase and subsequent renewal have been paid for by Respondent, this is fair. No exorbitant demands/requests have been made and the suggestion for compensation referenced in the email is that Mitchell Madison fulfills its obligations under the Arbitration Settlement sooner-which would result in Respondent receiving LESS compensation than envisioned by the Arbitration Settlement.
Respondent left Mitchell Madison two years ago. The domain was
registered more than seven years ago, all of which was well known by
Complainant. Because of this delay and prejudice created by this delay
(un-availability of old documentation, departure of employees with relevant
information, etc.) Complainant is barred by laches
from pursuing this claim (See, e.g.,
Shoe Land Group LLC v. Dev. Servs. c/o Telepathy Inc., FA 1255365 (Nat. Arb.
It is unclear what “harm” could be done to the business in any event and it is Respondent’s belief that the purpose of this action is to acquire a domain name that can be packaged and sold with the trademark, rather than to be used by a going concern.
The General Release of the Arbitration Settlement between Complainant and Respondent clearly states that no actions will be brought for “claims which were raised or which could have been raised in the Arbitration.” Respondent ownership of the domain name was established well before the arbitration proceedings even began and Complainant is in breach of the Arbitration Settlement by raising this claim.
Other former members of the original Mitchell Madison Group LLC (which was bought by USWeb/CKS in 1999 and subsequently went bankrupt in 2001 as part of March First) are using similar company names, domain names, and offering similar services without interference from complainant.
C. Additional Submissions by Complainant
On December 12, 2006 Jim Quallen used his Mitchell Madison Group Corporate American Express Card to renew the registration of Mitchellmadison.com with Network Solutions Inc. and claimed the expense on his expense report and was reimbursed. When we audited the expense report and contacted Network Solutions Inc (NSI) about the transaction(s), we were provided the following information by Michelle of NSI. Complainant provides a table listing the renewal/registration of 10 domain names with NSI, including <mitchellmadisongroup.com> and <mitchellmadison.com>, as well as eight domain names not related to The Mitchell Madison Group, a website package, and a web hosting package, for a total of US$915.18.
A copy of the Statement of Jim Quallen’s Mitchell Madison Group Corporate American Express Card (Exhibit A) and a copy of Jim Quallen’s Expense Report (Exhibit B) are provided. Jim Quallen clearly renew 3 Mitchell Madison related domain names, he also violated Mitchell Madison Group expense policy by charging domain names that were clearly non-business related to the company, for which we will seek compensation separately. Furthermore, we were unaware until this audit that Mr. Quallen had also registered MitchellMadisonGroup.com, which we herewith also demand to be transfer to us.
MMG Partners is owned by Dr. Moses Ma and the Name refers to the “Moses Ma Group”, which incidentally abbreviates to MMG. They were unaware of anyone else using their Mitchell Madison Group trademark and would vigorously enforce their rights if that were the case.
They provided the “Mitchell Madison Group Amended and Restated Operating Agreement” in the original Annex as an Exhibit in support of 5.b.3 which was signed by Jim Quallen in May 2007. On page one it states:
THIS AMENDED AND RESTATED OPERATING AGREEMENT(“Agreement”) of Mitchell Madison Group LLC (the “Company”) is entered into as of DATE (the “Effective Date”), by and between each of the individuals listed on Schedule A (altogether, the “Members”, and each a “Member”).
The principals of Alexander
James Group, LLC acquired the “Mitchell Madison” name, and formed the Company
The first page of the
“Mitchell Madison Group Amended and Restated Operating Agreement” is provided
again in Exhibit C for convenience. The
Alexander James Group had a verbal agreement to acquire the Mitchell Madison Trademark at the time when we tasked Jim Quallen with registering the Mitchellmadison.com domain name. Jim Quallen acted in direct violation of his duties.
Alix Partners had initiated
merger conversations with Mitchell Madison Group and executed a Non-Disclosure
and Non-Solicitation of Employees agreement on
The respondent’s other statements not addressed herein are factually incorrect or irrelevant to this proceeding.
The Panel finds that the Complaint is outside the scope of the UDRP. The Panel finds it has no jurisdiction to decide on the current dispute, as it finds the existence of contractual issues that are central to the dispute. Thus, the Panel dismisses the Complaint in its entirety.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
Respondent argues that Complainant and Respondent had agreed through a prior arbitration settlement agreement from their employment dispute that any and all claims that were available at the time of arbitration would later be barred from legal proceedings. Respondent contends that the language contained in the arbitration settlement effectively bars Complainant from bringing this action because Complainant had known about the disputed domain name prior to the settlement agreement and chose not to deal with it in that proceeding. Respondent further contends that it was not paid for the registration and renewal fees by Complainant.
Complainant contends that Respondent violated its employment duties while working for Complainant. Complainant argues that Respondent was put in charge of registering the disputed domain name to Complainant as a business entity and instead registered the disputed domain name to Respondent personally. Complainant, through its Additional Submission, also contends that Respondent abused its corporate credit card usage agreement when Respondent registered several personal domain names along with the disputed domain name. Complainant has further supplied Respondent’s corporate credit card statement showing that it was reimbursed for the registration of the disputed domain name and many others.
The Panel finds that this is a business and contractual dispute between two
parties that falls outside the scope of the UDRP. In Love v. Barnett, FA 944826 (Nat. Arb.
A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.
According to the panel in Love, complex cases such as the one presented here may be better decided by the courts than by a UDRP panel:
When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.
The panel in Luvilon
Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO
[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes .… The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.
Since the existence of a settlement
agreement has not been contested by Complainant, the Panel has no choice but to
assume its existence. Moreover, the settlement includes a Choice of law and
Enforcement clause: « This Agreement
shall be governed by and construed in accordance with the laws of the State of
Based upon the reasoning
outlined in the aforementioned cases and the record, the Panel concludes that
the instant dispute contains a question of contractual interpretation, and thus
falls outside the scope of the UDRP. See
Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum
Having found that this contractual dispute is outside the scope of the UDRP, the Panel concludes that relief shall be DENIED.
Accordingly, the Complaint is DISMISSED.
Hugues G. Richard Panelist
Dated: May 21, 2010
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