WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
David Cruz Hernandez Mendoza v. Registration Private, Domains By Proxy, LLC / Amado Kinjiro Yamasaki Hernandez, Amado Yamasaki
Case No. D2019-0437
1. The Parties
The Complainant is David Cruz Hernandez Mendoza of Ciudad de Mexico, Mexico, represented by Rebeca Rosas, Mexico.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (the “United States”) / Amado Kinjiro Yamasaki Hernandez, Amado Yamasaki of Coral Springs, Florida, United States, represented by Jose Ignacio Jaime Garcia, Mexico.
2. The Domain Name and Registrar
The disputed domain name <sttaton.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2019. On February 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2019, 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.
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 the Respondent of the Complaint, and the proceedings commenced on March 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 21, 2019. The Response was filed with the Center on March 20, 2019.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on March 27, 2019. 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 Complainant appears to be a natural person and states that it owns a company named “Sttaton” which provides corporate and insurance services including consulting services, and risk assessment services. The Complainant claims to be the owner of a variety of registered trademarks in Mexico and the United States for the mark STTATON, the earliest of which appears to be Mexican mixed trademark no. 1848807 for the mark STTATON and design; the design element being simply the reproduction of this word in a stylized typeface which combines the crossbar of the first two ‘t’ letters into a single line, filed on October 9, 2017 and registered on February 21, 2018 in respect of computer applications and electronic publications. The Respondent correctly points out that said trademarks are in the name “David Cruz Hernández Munguía” rather than in the name which the Complainant uses in this proceeding.
The disputed domain name was created on September 20, 2017. The Respondent also appears to be a natural person and states that he is married to the Complainant’s sister. The Respondent states that he specializes in the creation of new brands, websites and software related jobs.
The dispute between the Parties arises because the Complainant asserts that the disputed domain name was registered by the Respondent on its behalf while the Respondent was an employee of the Complainant. The Respondent denies this and states that he created the “Sttaton” brand name and registered the disputed domain name in terms of a personal agreement with the Complainant “on paying the rights and research for the creation of the brand and domain”.
The Complainant produces a print of an email dated February 24, 2019 from the email address “email@example.com” which states that the unspecified writer has received multiple offers for “some of the domains we own” and indicating that it would list these for public sale through the Registrar “on Tuesday”, which the Panel assumes indicates an intended date of February 26, 2019. This is followed by a listing of domain names headed by the disputed domain name, together with <sttaton.mx>, <sttaton.uk>, <sttaton.us>, <sttaton.fr>, <sttaton.it>, <sttratton.com> and <sttraton.mx>. The email concludes “Please be advice [sic] that your hosting will be disconnected as soon as the domain goes on sale. / Have a wonderful day!”
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant asserts that the disputed domain name is identical to the Complainant’s STTATON trademarks. The Complainant asserts that it has been consistently using the STTATON mark in commerce since September 2017, adding that it employed the Respondent in September 2017 and directed him to register and maintain the Complainant’s company domain names as part of the Respondent’s duties. The Complainant states that the disputed domain name was created at its direction and submits that it also directed the Respondent to register several other domain names incorporating the STTATON mark and several trademarks as part of the Respondent’s duties as an employee. The Complainant describes the various trademarks and the services in respect of which these were registered.
The Complainant states that the disputed domain name was registered under the Complainant’s name but using the Respondent’s contact information, adding that the Respondent failed to provide the Complainant with login details for this or other domain names which were registered by him. The Complainant submits that the Respondent’s employment was terminated in September 2018, at which point the Complainant requested said login information from the Respondent but was refused this. The Complainant states that the disputed domain name continues to point to the Complainant’s website as it did when the Respondent was the Complainant’s employee.
The Complainant submits that the Respondent cannot show any rights or legitimate interests in the disputed domain name and that his only action has been to withhold the Complainant’s right to use this. The Complainant submits that there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The Complainant asserts that the Respondent is holding the disputed domain name hostage to force the Complainant to purchase it before a competitor acquires it, thus allowing the Respondent to profit unlawfully from his control over the disputed domain name.
The Complainant submits that the disputed domain name was registered and is being used in bad faith due to the Respondent’s registration of the disputed domain name using his own contact information, his failure to relinquish control of the disputed domain name and his threat to offer the disputed domain name for sale by auction. The Complainant describes the email which it received on February 24, 2019 as noted in the factual background section above, argues that this extorts the Complainant to repurchase the disputed domain name on the threat that the website hosting will be cancelled. The Complainant notes that it did not take up the offer to purchase the domain names concerned. The Complainant states that the Respondent has maintained the Complainant’s website since the termination of the Respondent’s employment and thus claims to do business as the Complainant, adding that this misleads the Complainant’s customers into thinking that the Respondent is the rightful owner of the Complainant’s company and causes confusion to such customers. The Complainant asserts that this is doing harm to its established brand and submits that the Respondent has not been authorized to use the Complainant’s trademark, business materials or disputed domain name since the termination of his employment.
The Respondent requests that the Complaint be denied.
The Respondent asserts that he conducted research to create a new brand in respect of which all domain name extensions would be available, explaining that this is his specialty as a computer engineer. The Respondent denies that there was an employer/employee relationship between the Parties but adds that he has allowed the Complainant to use the disputed domain name freely because of the Parties’ family relationship, even though the Respondent has yet to receive payment for his services. The Respondent states that the disputed domain name has been registered under the Respondent’s name since September 20, 2017, that the Respondent paid for its renewal on August 22, 2018 and that he remains the registrant. The Respondent notes that he registered the disputed domain name before the trademark was registered, adding that the Complainant was interested in the brand created by the Respondent and registered the trademark following the creation of the brand and the registration of the disputed domain name.
The Respondent states that the disputed domain name has always been used by the Complainant and that the Complainant controls the relative hosting and email, to which the Respondent has no access and over which he has no control. The Respondent adds that he has never used the disputed domain name for commercial gain or to confuse any client because he is not in the same business as the Complainant. The Respondent explains that he is not interested in keeping the disputed domain name or using the trademark but only in selling the rights in the disputed domain name. The Respondent describes the alleged personal agreement between the Complainant and Respondent, which he says related to rights and research involved in the creation of the “Sttaton” brand and disputed domain name. The Respondent states that no payment has yet been received for these services. The Respondent submits that he has never refused to transfer the disputed domain name provided that the personal agreement between the Parties is performed.
The Respondent admits that he offered the disputed domain name for sale through the Registrar and presumes that the Complainant purchased it, given that only the Complainant was notified that the disputed domain name would be offered for sale. The Respondent produces a screenshot from “www.escrow.com” indicating that an anonymous buyer has selected such website to handle a secure online transaction with the Respondent in respect of the disputed domain name.
The Respondent suggests that the proceeding should be dismissed because the Complainant’s name does not match the name of the holder of the trademark relied upon by the Complainant.
6. Discussion and Findings
It will be noted from a perusal of the Parties’ contentions and the factual background section above that the Panel in the present matter is not faced with a typical case under the Policy. While the Complainant does make allegations relating to abusive cybersquatting and registration and use in bad faith, there are more fundamental issues arising based on the Parties’ alternative and diametrically opposed versions of events.
The present dispute seems to have its roots in either a contract of service or a contract for services between the Parties. There is also an alleged family relationship between the Parties although the significance of this to the matter in hand is not particularly clear. The fundamental question is the nature of the Parties’ contractual relationship relative to the disputed domain name as a matter of law. The Policy is not the correct forum for resolving that issue. In addition, there are various subsidiary matters of disputed evidence which require to be resolved that would be better suited to the mechanisms available in a court action rather than an administrative proceeding under the Policy, such as discovery, oral evidence on oath and cross-examination. In short, this case strikes the Panel as a wider contractual dispute which happens to have a domain name at its heart, rather than necessarily a case of abusive cybersquatting.
Even if the Panel were to accept that it could address the elements of paragraph 4(a) of the Policy, the onus is on the Complainant to prove that each of these elements have been satisfied on the balance of probabilities and in the opinion of the Panel it has failed to do so by a substantial margin, due primarily to the lack of evidence which it has brought forward relative to the Parties’ relationship and its failure to explain the apparent discrepancy between the named owner of the trademarks on which it seeks to rely and the Complainant’s name. As matters stand, however, the Panel has found that the resolution of the primary issue between the Parties does not fall within the scope of the Policy. The panel in the case of The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470 recognized early on in the development of Policy jurisprudence that not every case involving a domain name is ipso facto within the scope of the UDRP, stating:
“This Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting. To invoke the Policy, a Complainant must show that the domain name at issue is identical or confusingly similar to a mark in which the Complainant has rights, that the Respondent lacks rights or a legitimate interest in the domain name, and that the Respondent registered and used the name in bad faith. Policy, paragraph 4(a). To attempt to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy. Latent Technology Group, Inc. v. Bryan Fitchie, File No. FA0007000095285 (NAF Sept. 1, 2000) (dispute concerning employee’s registration of domain name in his own name and subsequent refusal to transfer it to employer raises issues of breach of contract and breach of fiduciary duty that are more appropriately decided in court, not before a UDRP panel).”
Despite the fact that the Panel has decided that this case is not appropriate for determination under the Policy, neither of the Parties should regard this as indicating that the Panel condones, endorses or otherwise supports the conduct of either party in this matter or, in particular, that any conduct of the Respondent regarding the attempted sale of the disputed domain name along with other related domain names is necessarily vindicated by the denial of the present Complaint.
Furthermore, the Panel notes that it does not seek to address this Decision to any particular forum that may ultimately be seized of the matter.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: April 10, 2019