W.M. Barr & Company, Inc. v. New Century Management Ltd.
Claim Number: FA1005001327126
Complainant is W.M. Barr & Company, Inc., represented by Adam
S. Baldridge, (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <goofoff.com>, registered with DirectNIC, LTD.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Anne M. Wallace, Q.C., G. Gervaise Davis and Jeffrey H. Kaufman as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum
On June 1, 2010, the Forum served
the Complaint and all Annexes, including a Written Notice of the Complaint,
setting a deadline of June 21, 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 e-mail. Also on
A timely Response was received and determined to be complete on
Complainant’s Additional Submission was received on
Respondent’s Additional Submission was received on June 29, 2010 in compliance with Supplemental Rule 7.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Because we are declining jurisdiction in this case, the Panel will not set out the full submissions of the parties, but rather only those portions relevant to our determination.
Complainant, W.M. Barr & Company (“Barr”) says it is a national manufacturer of solvents, removers, fuels, cleaning and surface preparation products with a long history of success and traditions dating back to 1946.
Complainant says at least as early as
Each year Barr spends substantial sums to advertise and promote its GOOF OFF mark and the products offered thereunder. As a result, the GOOF OFF mark enjoys strong consumer recognition and is an asset of substantial value to Barr. Barr conducts its business in a manner that brings goodwill to itself and its GOOF OFF mark. Barr’s federal trademark registrations are valid and subsisting in law, were duly and legally issued, are prima facie evidence of the validity of the marks registered, and constitute constructive notice of the ownership of these marks by Barr. One of Barr’s GOOF OFF registrations is incontestable and therefore constitutes conclusive evidence of Barr’s exclusive right to use the mark shown therein.
It recently came to Complainant’s attention that the disputed domain name, <goofoff.com> contained links to Barr’s products as well as links to unrelated sites including online dating services.
Respondent asserts that goofing off is a slang term in the
Respondent points out there have been legal proceedings relevant to
this case. The litigation in the United States District Court for the Southern
District of Florida, West Palm Beach Division, involved Virtual Dates, Inc.
(predecessor in interest to New Century Management, Ltd., the Respondent) and
Lilly Industries, Inc. (predecessor in interest to W.M. Barr & Company,
Inc., the Complainant). It is Case No. 99-8722 (
Virtual Dates, Inc., is the predecessor in
interest and Assignor of ownership and registration of the disputed domain name
pursuant to a general Assignment from Virtual Dates, Inc., to New Century
Management, Ltd. Dated
Richard Schwartz is the sole owner of Virtual Dates, Inc. and New Century Management, Ltd. The disputed domain name had been registered at the time with the sole registrar authorized to register domain names, Network Solutions. Prior to the adoption of the UDRP by ICANN and the passage of the Anticybersquatting Consumers Protection Act (ACPA) by the U.S. Congress, the Complainant, in this case Lilly Industries, Inc., could request the Registrar to freeze the domain so that it could not be used. In order to obtain usage of the domain, the Respondent Registrant was required to file suit in U.S. Federal Court. Virtual Dates, Inc. did so, asserting that the domain name had been purchased in good faith, that it was not being used to trade upon Complainant’s trademark in any way and that it was pointed to rest and leisure travel sites where folks could “goof off.”
Prior to any adjudication, the parties entered into a Settlement whereby Virtual Dates could keep the domain name GOOFOFF.COM provided that Lilly had right of first refusal if the domain name was sold. Since its inception, the domain name has always been parked with an aggregator with instructions to point it to travel and leisure sites to be used in its most generic sense. When it was brought to the Respondent’s attention that Parked.com, the aggregator parking company to which Respondent had entrusted the domain name, had recently pointed the domain to sites involving Complainant’s trademark, Respondent immediately repositioned it back to travel, leisure and dating sites.
The Settlement specifically
prohibits Lilly from preventing Virtual’s use and ownership of the GOOFOFF.COM
domain name provided that it not be pointed to any pornographic site, it not be
auto-forwarded to any site blocked by the Cyberpatrol Internet Monitoring
Program, that it not be hyperlinked to any web site blocked by the Cyberpatrol
Internet Monitoring Program and that Lilly be given the right of first refusal. None of the above conditions have come about
nor are they alleged to have occurred by Complainant in this case. The Settlement continues to state in
Paragraph 4: “All terms and conditions of this Agreement are binding upon and
inure to the benefit of the parties, their agents, affiliates, SUCCESSORS
C. Complainant’s Additional Submission
Complainant submits that Respondent’s use of the disputed domain name has changed since the settlement agreement was entered into by the parties’ predecessors in interest. Complainant says at the time of the settlement agreement, Respondent admits it was using the disputed domain name as a dating and/or travel and leisure website. However, for the last several years, until very recently when Complainant informed Respondent that its website was infringing Complainant’s rights in its GOOF OFF trademarks, Respondent’s website directed visitors to Complainant’s GOOF OFF products. Complainant says this has occurred as recently as March 2010. Complainant says because Respondent’s use of the disputed domain name has changed since the settlement agreement was entered into, the settlement agreement could not address Respondent’s current usage which provided links to stain removing products such as Complainant’s GOOF OFF products.
Complainant says that even if the settlement agreement is relevant to these proceedings, Complainant is not bound by the settlement agreement because of Respondent’s blatant breach of the settlement agreement. According to paragraph 3 of the settlement agreement, Respondent was to include “on any website page displayed in connection with the GOOFOFF.COM domain name appearing in the URL address line” the following statement: “This web site is not affiliated, sported or in any way associated with Lilly Industries, Inc. or its GOOFOFF TRADEMARK.” Respondent’s website has not and does not contain the required disclaimer. Complainant says Respondent cannot use a settlement agreement it continues to breach as a defense to this action. Complainant says Respondent may well also be in breach of other paragraphs of the settlement agreement which were cut off in Respondent’s Response.
D. Respondent’s Additional Submission
Respondent says Complainant has not addressed the fact Respondent’s Assignor had registered the disputed domain name two years before Complainant’s assignor obtained a registered trademark for the generic words GOOF OFF. Therefore, Complainant could never prove the dispute domain name was registered and used in bad faith.
Respondent says its use of the disputed domain name has not changed since the settlement agreement was entered into by the parties’ predecessors in interest.
The Panel finds that because of complicated factual and legal issues, this case is not suited to determination under the UDRP. The Panel therefore declines jurisdiction and dismissed the complaint.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Because the Panel has decided to decline jurisdiction in this case, we will not address each of the elements required by the UDRP.
Respondent claims that its
predecessor-in-interest and assignor of ownership and registration of the
disputed domain name, Virtual Dates, Inc., was previously involved in
litigation with Complainant’s predecessor in interest, Lilly Industries, Inc. See
Virtual Dates, Inc. v. Lilly Indus., Inc., Case
No. 99-8722 (S.D.
Complainant alleges, in its Complaint and Additional Submission that Virtual Dates, Inc. has no known connection to the registrant of the disputed domain name and Respondent. Further, Complainant contends that Lilly Industries, Inc., was the previous owner of some of W.M. Barr’s GOOF OFF marks referenced in the previous court action, and that Complainant was not a party to the settlement agreement reached in that case. Complainant further argues in its Additional Submission that even if it were bound by the Settlement Agreement, Respondent has breached the agreement by displaying content related to Complainant’s GOOF OFF marks, and by not displaying the proper disclaimer on Respondent’s disputed domain name per the Settlement Agreement.
Based on the materials before the Panel, we conclude this is a business and/or contractual dispute between two companies 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.
In Love, the panel was concerned with possible causes of action for breach of contract. 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. Courts are better equipped to take evidence and to evaluate its credibility.
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.
This case involves factual and legal issues, both of which the UDRP is not suited to handle. The parties’ assignors have already been involved in litigation over use of the disputed domain name. There was a purported settlement agreement. Live questions, at a minimum include: What are the terms of the settlement agreement? Does the settlement agreement bind the parties? Are one or both parties in breach of the settlement agreement? What are the consequences of any such breach?
In these circumstances, the Panel
has concluded that the current dispute over the disputed domain name involves
questions of credibility and questions of contractual interpretation that fall
outside the scope of the UDRP. As a result, the appropriate action is for the
Panel to dismiss the Complaint. See Everingham Bros. Bait Co.
v. Contigo Visual, FA 440219 (Nat. Arb. Forum
The Panel concludes that relief shall be DENIED.
Anne M. Wallace, Q.C., G. Gervaise Davis and
Jeffrey H. Kaufman, Panelists
Dated: July 15, 2010
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