WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Splash Bubble Limited v. Domains by Proxy, LLC, DomainsbyProxy.com / Paul Ryan
Case No. D2012-0257
1. The Parties
The Complainant is Splash Bubble Limited of Oxford, United Kingdom of Great Britain and Northern Ireland, represented by Veale Wasbrough Vizards, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Domains by Proxy, LLC, DomainsbyProxy.com of Arizona, United States of America / Paul Ryan of Ramsgate, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrars
The disputed domain name <acegamez.biz> is registered with Melbourne IT Ltd.
The disputed domain name <acegamez.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2012. On February 10, 2012, the Center transmitted by email to Melbourne IT Ltd and GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain names. On February 11, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <acegamez.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 15, 2012 providing the registrant and contact information disclosed by the Registrar GoDaddy.com, LLC, and inviting the Complainant to submit an amendment to the Complaint.
On February 15, 2012, Melbourne IT Ltd transmitted by email to the Center its verification response in relation to the disputed domain name <acegamez.biz> confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amended Complaint on February 16, 2012 consolidating its two Complaints which had originally been separately filed for each of the disputed domain names. The Respondent transmitted an email communication to the Center on February 16, 2012.
The Center verified that the Complaint together with the amended 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2012. The Respondent transmitted to the Center email communications on February 17, 2012, on February 18, 2012 and on March 12, 2012. The Complainant transmitted to the Center an email communication on March 6, 2012 and filed a Supplemental Filing on March 13, 2012 by email to the Center.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on March 15, 2012. 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.
On the subject of the Complainant’s Supplemental Filing, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2, provides the following consensus view:
“[…] Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of “exceptional” circumstances. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing. In either scenario, or on its own initiative, a panel may in its discretion request further evidence, information or statements from one or other of the parties by way of administrative panel order.”
The Panel has decided in its discretion to admit the Complainant’s supplemental submission for the following reasons: In its supplemental submission, the Complainant addresses matters of detail arising from the emails submitted to the Center by the Respondent which may not have been in the Complainant’s reasonable contemplation when the Complaint was filed, namely the Respondent’s various allegations arising from the conclusion of the “Website Assignment Agreement” described in the Factual Background section below. The Panel did not consider it necessary to invite the Respondent to reply to the terms of the Complainant’s supplemental submission as that submission was confined to addressing the points already raised by the Respondent in its said emails.
4. Factual Background
The Complainant is a private limited company incorporated in England and Wales, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). The Respondent is an individual based in Ramsgate, United Kingdom. Until approximately May 2010, the Respondent published a website entitled “Acegamez”, accessed via the disputed domain names and via the domain name <acegamez.co.uk>, the subject of which was computer games and computer gaming.
Between approximately December 2009 and May 2010 the Complainant and the Respondent negotiated the terms of an agreement whereby the Complainant sought to purchase inter alia the Respondent’s “Acegamez” website. A contractual document was ultimately prepared by the Complainant’s legal advisers entitled “Website Assignment Agreement” (hereinafter “the Agreement”). By email dated May 11, 2010, the Respondent (or a person using the Respondent’s email account) returned a copy of the Agreement to the Complainant’s legal advisers which appeared to bear the Respondent’s signature. By email dated May 13, 2010, the Complainant’s legal advisers returned a copy of the Agreement to the Respondent countersigned by an authorized signatory of the Complainant.
Clause 3.1 of the Agreement provided for an assignment by the Respondent to the Complainant of various assets with effect from May 5, 2010. Schedule 1 of the Agreement defined such assets inter alia as the disputed domain names and <acegamez.co.uk> together with any right to use those domain names. Clause 2 of the Agreement provided for payment of the sum of GBP 8,073.52 by the Complainant to the Respondent on the date of execution of the contract by the Complainant.
On May 18, 2010, the Complainant paid the sum of GBP 8,073.52 to the Respondent by bank transfer. By email of May 24, 2010 to the Complainant’s legal adviser, the Respondent confirmed that he had changed the registrant name on the disputed domain names and <acegamez.co.uk> into the name of the Complainant. At some time thereafter a dispute arose between the Respondent and the Complainant. While the dispute is multi-faceted, the essence appears to relate to the Complainant’s decision to employ a former employee of the Respondent following the execution of the Agreement. After this dispute arose, the Complainant discovered that its administrative access to the disputed domain names had been blocked and subsequently that the registrant name on the disputed domain names showed the Respondent’s name in the case of <acegamez.biz> and that of a proxy registrant service, Domains by Proxy, LLC in the case of <acegamez.com>. During registrar verification in the present administrative proceeding, the registrar of <acegamez.com> revealed that the underlying registrant thereof was the Respondent and the Respondent is therefore now listed as the registrant of both of the disputed domain names.
On February 23, 2011, the UK Internet Naming Authority, Nominet, wrote to an officer of the Complainant indicating that it had received a claim that the domain name <acegamez.co.uk> had been transferred without the correct authority from the Respondent. By email of February 23, 2011 the Complainant provided a copy of the Agreement to Nominet and by email of the same date, Nominet noted that it was satisfied that the correct authority had been gained for the said transfer and the Complainant is therefore now listed as the legal registrant of the domain name <acegamez.co.uk>.
On August 31, 2011, the Complainant’s legal advisers wrote to the Respondent narrating certain terms of the Agreement and requiring the Respondent to transfer the disputed domain names to the Complainant in terms of the Agreement, failing which the Complainant would take further action including seeking compensation and legal costs. As at the date of this Decision, the disputed domain names point to a website containing pornographic content.
5. Parties’ Contentions
In summary, the Complainant contends as follows in the Complaint: The disputed domain names are confusingly similar to a trademark in which the Complainant owns rights; the Respondent has no rights or legitimate interests in the disputed domain names; and the disputed domain names were registered and are being used in bad faith.
The Complainant states that the trademark in which it claims rights is ACEGAMEZ and it asserts that this trademark, which is identical to the disputed domain names, has been used successfully for many years in connection with an online magazine relating to computer games and computer gaming. The Complainant narrates the terms of the Agreement and states that the Agreement provided inter alia for a transfer of the disputed domain names from the Respondent to the Complainant.
The Complainant states that it cannot provide evidence of the use of the trademark in which it claims rights, as such use was exclusively online at the disputed domain names and at <acegamez.co.uk> and the Respondent has, in breach of the Agreement, removed the content from the websites. The Complainant notes that the definition of the websites in the Agreement included “editorial content, news content, game previews and reviews, guides, cheats, blogs, forums and archives”.
The Complainant submits that the Respondent lacks rights or legitimate interests in the disputed domain names because the Respondent transferred any such rights therein to the Complainant in terms of the Agreement. The Complainant asserts that it paid to the Respondent the agreed consideration monies in terms of the Agreement, which funds have not been returned to the Complainant by the Respondent.
By way of explanation of the background to the dispute, the Complainant notes that following a disagreement between the Complainant and the Respondent over the Complainant’s decision to employ an individual of whom the Respondent disapproved, the Respondent, in breach of the Agreement, (i) changed the administrative access details of the disputed domain names to block the Complainant’s administrative access, (ii) changed the Registrant details for the disputed domain names back to his own personal details (evidence of current WhoIs reports provided), and (iii) disabled the Complainant’s access to control the content of the websites at the disputed domain names.
The Complainant asserts that the Respondent registered and used the disputed domain names in bad faith because, following the completion of the Agreement, the Respondent re-registered itself as the registrant of the disputed domain names. The Complainant states that it appears that this action was a retaliation by the Respondent against the Complainant arising from the employment by the Complainant of a particular individual. The Complainant notes that the disputed domain names now resolve to pornographic content, that it believes that such redirection is calculated to damage the business of the Complainant and that it demonstrates bad faith on the part of the Respondent. The Complainant adds that the appeal of the website formerly associated with the disputed domain names was principally for individuals under the age of 18 and expresses its concern that the pornographic material at the disputed domain names may be visited by children. The Complainant notes that the Respondent is aware of the said appeal of the former website and thus of the effect of the pornographic content. The Complainant states that this demonstrates bad faith on the part of the Respondent. Finally, the Complainant notes that the Respondent did not reply to the Complainant’s legal advisers’ letter of August 31, 2011 and that this is a further indicator of bad faith on the Respondent’s part.
The Respondent submitted a range of emails to the Center in which he sought to provide a response to the Complaint. While these emails do not comply fully with the terms of paragraph 5 of the Rules they provide a series of contentions in answer to the Complaint and, insofar as they appear to the Panel as relevant to the Complaint itself, are summarised as follows:
The Respondent states that he is the sole owner of the disputed domain name <acegamez.com>, has owned it for 12 years and has recently renewed it. The Respondent asserts that he is the sole owner of the trademark ACEGAMEZ having invented this name 15 years ago. The Respondent alleges that a person connected with the Complainant obtained unauthorized access to the Respondent’s management account regarding the website to which the disputed domain names originally pointed and took steps to entice one of the Respondent’s former employees to devalue the said website. The Respondent alleges that the said former employee deliberately mismanaged the business surrounding the said website in various ways. The Respondent claims that he received an assurance from an individual connected with the Complainant that the said former employee would not be involved in the Complainant’s venture and that the Complainant has reneged on this commitment. The Respondent alleges that the Complainant employed many of the staff formerly employed by the Respondent despite being prohibited from so doing under the Agreement. The Respondent notes that the Agreement does not bear the Respondent’s signature as the Agreement was signed for by the Respondent’s wife however the Respondent adds that he was aware of the Agreement.
The Respondent states that the Agreement produced to the Panel contains additional pages from that submitted by the Complainant’s legal advisers to the Respondent. The Respondent alleges that the additional pages are those relating to the transfer of the disputed domain names. The Respondent alleges that the Agreement was intended to cover website content only and not the disputed domain names.
C. Complainant’s Supplemental Submission
In summary, the Complainant’s further contentions in terms of its supplemental submission are as follows:
The Complainant notes that it does not intend to respond to all of the Respondent’s allegations but only those which it believes to be fundamental to the dispute. With regard to the Respondent’s allegation that he did not sign the Agreement, the Complainant states that under English law the Agreement is enforceable even if not signed. The Complainant produces various emails between its legal advisers and the Respondent which it asserts demonstrate the Respondent’s consent to the terms of the Agreement.
With regard to the Respondent’s allegation that the Agreement produced to the Panel contains additional pages from that submitted by the Complainant’s legal advisers to the Respondent, the Complainant notes that there are references in the said email correspondence to “the full 10 page contract” which demonstrate that no pages have been added. With regard to the Respondent’s allegation that the Agreement was intended to cover website content only and not the disputed domain names, the Complainant notes that the disputed domain names were integral to the Agreement and moreover that the Respondent emailed the Complainant’s legal adviser stating that the Respondent had transferred the disputed domain names into the name of the Complainant. The Complainant also notes that the said email correspondence demonstrates that the Respondent enquired of the Complainant’s legal adviser as to whether the disputed domain names were included in the Complainant’s offer to purchase the Respondent’s website and the Complainant’s legal adviser confirmed that this was indeed the case.
6. Discussion and Findings
The Panel has set out the factual circumstances and indeed the contentions of the Parties in some detail by way of illustrating the fact that this is a complex dispute, central to which is the Agreement and disputed surrounding circumstances. The Panel notes that pure contractual disputes are beyond the scope of the Policy, see for example Summit Industries, Inc. v. Jardine Performance Exhaust Inc., WIPO Case No. D2001-1001 in which the panel stated:
“The UDRP is designed to deal with simple cases of cybersquatting. As it was stated in The Management of Internet Names and Addresses: Intellectual Property Issues, the Final Report of the WIPO Internet Domain Name Process, dated April 30, 1999, at paragraph 169, “It is recommended that the scope of the administrative procedure be limited to the abusive registration of domain names . . . .” This is not such a case. This case involves contractual interpretation issues, and really depends on a determination of precisely which rights were conveyed in a written stock transfer agreement, and which acts were prohibited under the written transfer agreement. It is not an appropriate situation for the application of the UDRP.”
See also Rudolf Hensel GmbH v. Hensotherm AB, WIPO Case No. D2002-0634, in which the panel stated:
“The Policy is designed to deal with cybersquatting and not the resolution of factually complex and legally complex contractual and/or trade mark disputes.”
In the present case the Complainant makes extensive reliance upon the terms of the Agreement such that, on one reading of the amended Complaint, it may be considered that the Complainant is asking the Panel to give effect to that Agreement so far as unperformed by the Respondent. This is something that a panel cannot do under the Policy. On another reading, it may be considered that there are some features of the case as pled by the Complainant which are more akin to abusive cybersquatting, such as, for example, the alleged pointing of the disputed domain names by or on behalf of the Respondent to pornographic content.
The Panel has however reached the view that it is not possible to deal with the present matter, and in particular with the question of the Respondent’s rights and legitimate interests (if any) in the disputed domain names, without embarking upon an interpretation of the terms and effect of the Agreement and making determinations of multiple disputed factual and legal assertions. These are matters which, in the Panel’s assessment, are clearly beyond the scope of an administrative proceeding under the Policy.
Even if the Panel would have found it appropriate to deal with the present matter under the Policy, for example if all features of the Parties’ contractual dispute could have been excluded from consideration, the Panel would nevertheless have denied the Complaint. The Panel’s reasoning is as follows. Under paragraph 4(a)(i) of the Policy the Complainant is required to prove that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant submits that it is the owner of a common law trademark in the mark ACEGAMEZ. According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the consensus view of panels under section 1.7 (entitled “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?”) states as follows:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant’s claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
The Panel respectfully adopts the consensus view. In the present case, the Complainant has provided little more than a conclusory allegation of common law rights. Indeed, the Complainant expressly states that it cannot provide evidence of the use of the ACEGAMEZ mark as such use was exclusively online and the Respondent has removed the content. As to evidence of what this content might have been, the Complainant merely refers to the terms of the Agreement, which indicates that it may have contained “editorial content, news content, game previews and reviews, guides, cheats, blogs, forums and archives”. The only other information available to the Panel is the Complainant’s assertion that the disputed domain names have been used in relation to, and have built up goodwill in connection with, an online magazine relating to computer games and computer gaming, which magazine is of appeal to individuals under the age of 18. The Panel considers that these averments, unsupported as they are by any evidence whatsoever, would inevitably lead to a finding that the Complainant has not carried its burden of demonstrating that it has rights in a trademark which is identical or confusingly similar to the disputed domain names. The Complaint would therefore have failed.
It should be stressed that, as was stated in Intertek Group Plc. v. ADFA Co., WIPO Case No. D2010-2128, the Panel takes no position on the merits of any contractual dispute that may exist between the Parties, and the finding in the present proceedings will in no way prevent the Complainant (or indeed either party) from seeking to pursue the matter through the courts, should it so choose. Furthermore, the Panel notes that its decision should not be taken as condoning or indicating the Panel’s approval of any actions of either of the Parties as alleged by the other.
For all the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Dated: March 28, 2012