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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ITMetrixx, Inc. v. Kuzma Productions
Case No. D2001-0668
1. The Parties
1.1 The Complainant is ITMetrixx, Inc., a corporation organized and existing under the laws of the State of Washington, United States of America, having its principal place of business at 1424 Fourth Avenue, Suite 400, Seattle, Washington, United States of America.
1.2 The Respondent is Kuzma Productions, an entity having an address at 545 Campus Street, Celebration, Florida, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <itmetrixx.com>, which domain name is registered with BulkRegister.com, Inc., based in Baltimore, Maryland, United State of America ("BulkRegister").
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on May 18, 2001, and the signed original together with four copies forwarded by express courier was received on June 5, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated May 22, 2001.
3.2 On May 22, 2001, a Request for Registrar Verification was transmitted to the registrar, BulkRegister requesting it to: (1) confirm that the domain name at in issue is registered with BulkRegister; (2) confirm that the entity identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
3.3 On May 25, 2001, BulkRegister confirmed by reply e-mail that the domain name at issue is registered with BulkRegister, is currently in active status, and that the Respondent is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on June 7, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, BulkRegister and ICANN), setting a deadline of June 26, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent’s participation in these proceedings.
3.6 On June 22, 2001, the WIPO Center received from Respondent's counsel a request for a 45-day extension of time to respond to the Complaint. The WIPO Center granted a 10-day extension until July 5, 2001.
3.7 A Response in electronic format was received on July 5, 2001, followed by a hard copy on July 10, 2001. An Acknowledgment of Receipt (Response) was sent by the WIPO Center on July 9, 2001.
3.8 On July 20, 2001, having received M. Scott Donahey’s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was August 3, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.
4. Factual Background
4.1 Peter Vander Meulen, one of the founding members of Complainant, began using the mark ITMetrixx in connection with a sole proprietorship in August 1997. Response, Annex A. Vander Meulen applied for registration of the service mark ITMETRIXX in connection with the development and delivery of technology device services for business with the United States Patent Office ("USPTO") on February 7, 2001 in his own name as an individual. Response, Annex C. That application is still pending.
4.2 Complainant filed for registration of the service mark ITMETRIXX in connection with installation configuration, maintenance, consulting engineering, project management, and related services for technology equipment including computers and peripherals with the USPTO on March 13, 2001. That application is still pending. The application, which was not attached to the Complaint as an Annex, claims a first use date of June 19, 2000.
4.3 Complainant claims that Darren Plater and Vander Meulen were the two founding members of Complainant and that Respondent's principal, Michael Kuzma, was employed through an employee leasing company.
4.4 Respondent contends that Kuzma was one of the founders of Complainant, and that Kuzma, Plater, and Vander Meulen, were to be partners in the business conducted by Complainant. Respondent asserts that the three were all former employees of Inacom Corporation, which corporation filed for bankruptcy and ceased operations on June 16, 2000. Respondent contends that Complainant was conceived as a vehicle by which the three and other former employees were to continue to service the account of the Sun Health Group, a major client of their former employer.
4.5 Complainant contends that Respondent was directed by Plater to register the domain name at issue in Complainant's name, and, if that was not possible, since Complainant had not at that time been incorporated, then in Plater's name.
4.6 Respondent registered the domain name at issue on June 26, 2000. Respondent contends that he informed Vander Meulen that he would secure the domain name for the use of the partnership. The domain name currently resolves to a web site maintained by Complainant.
4.7 According to Respondent, in July 2000, a corporation was formed without Kuzma's knowledge, giving Plater 2/3 stock ownership and Vander Meulen 1/3 stock ownership. Response, Annex B. Kuzma did not discover the existence of the corporation until December 2000.
4.8 Respondent alleges that he advanced substantial sums on behalf of the partnership.
4.9 According to Respondent, in early February 2001, Vander Meulen resigned from the company owing to a dispute with Plater over profit sharing, ownership, and the business direction of Complainant. This was at or about the time that Vander Meulen applied for the service mark described in paragraph 4.1, above. Vander Meulen allegedly has filed an application for dissolution of Complainant.
4.10 Respondent alleges that at or about the same time, Plater demanded that the registration of the domain name at issue be transferred to Complainant. Respondent refused, believing that as a founding partner, Kuzma had a legitimate claim to ownership and use of the domain name at issue.
4.11 In March 2001, Complainant terminated Kuzma. According to Complainant the termination was due to the fact that the project Kuzma had been working on had been completed. According to Respondent, Kuzma was terminated because he refused to transfer the registration of the domain name at issue.
4.12 Respondent has filed a complaint for declaratory relief in the Circuit Court for Osceola County, Florida, United States of America.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered a domain name which is identical to the service mark for which Complainant has applied for registration, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent contends that Complainant has no rights in the service mark for which it has applied, and that the rights in the service mark belong to Vander Meulen or to the partnership which was to be formed, that Respondent, as one of the founding partners in the business that is currently conducted by Complainant, has rights and legitimate interests in the domain name at issue, and that the domain name at issue is being used in good faith. Respondent also seeks a finding of reverse domain name hijacking.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has wholly failed to meet its burden. Complainant has not established that it owns the service mark for which it has applied. Rather, the evidence strongly suggests that the rights to that mark belong to Vander Meulen. Moreover, Complainant has failed to establish that Respondent has no rights or legitimate interests in the domain name, nor that the domain name was registered in bad faith. The Thread.com, LLC v. Jeffrey S. Poploff, ICANN Case No. D2000-1470.
This matter appears to be a dispute between business partners over the ownership of the business and its assets. This is not a case limited to cybersquatting, which is the problem that the Policy was designed to address. As the Panel stated in the case of Latent Technology Group, Inc. v. Bryan Fitchie, ICANN Case No. FA95285, "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."
The Panel is troubled by the facts that were withheld from the Panel by Complainant. Complainant failed to disclose that Vander Meulen had applied for a service mark in the name ITMETRIXX prior to Respondent's application. Complainant failed to disclose that Vander Meulen had used the mark in connection with a prior business venture, dating back to 1997. Complainant failed to disclose that Plater, Vander Meulen, Kuzma, and others had all been employed by Inacom Corporation, which had declared bankruptcy immediately before the establishment of the business venture that became Complainant. Complainant failed to disclose that Sun Health Group, the major new client of Complainant, had been a client of Inacom Corporation.
The Panel believes that Complainant is attempting to use the Policy to gain an advantage in what is actually a pure business dispute. This is not proper. For this reason, and for the failures to disclose previously noted, the Panel finds that Complainant has engaged in bad faith reverse domain name hijacking.
For all of the foregoing reasons, the Panel decides that Complainant has failed to establish that it has rights in respect of the mark ITMETRIXX, that the Complainant has failed to establish that Respondent has no rights to or legitimate interests in respect of the domain name at issue, and that Respondent's domain name has been registered in good faith. Accordingly, the Complaint is denied. Further, the Panel finds that Complainant has engaged in bad faith reverse domain name hijacking.
M. Scott Donahey
Dated: August 2, 2001