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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Post.Com Limited v. Peter Neilson
Case No. D2002-0690
1. The Parties
The Complainant is Post.Com Limited, whose registered office is Five Chancery Lane, Clifford’s Inn, London, EC4A 1BU, United Kingdom ("UK"). The Respondent is Peter Neilson of 23 Tonsley Hill, Wandsworth, London, SW18 1BE, UK.
The Complainant is represented by Denton Wilde Sapte, Five Chancery Lane, Clifford’s Inn, London, EC4A 1BU, UK. The Respondent is represented by Harkavys, 13 Harley Street, London, W1G 9QG, UK.
2. The Domain Name and Registrar
2.1 The domain name in issue is <my.net> (the "Domain Name").
2.2 The Registrar is Network Solutions Inc ("NSI"). Confirmation from NSI was received by the WIPO Arbitration and Mediation Center (the "Center") on July 26, 2002, stating that the Respondent is the current registrant of <my.net>.
3. Procedural History
3.1 The Complaint dated July 18, 2002, was received on July 23, 2002, by the Center. The Complaint was deficient in that it referred "to the jurisdiction of the courts in Australia which is the location of the Respondent’s address" which was incorrect as, according to the Registrar Verification, the Respondent is listed with an address in the UK. The Center requested, on July 29, 2002, that the Complaint be amended and this was done by the Complainant’s representative. A letter containing the amendment to the Complaint, dated July 30, 2002, was received by the Center in compliance with paragraph 4(b) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"). The Complaint was filed in accordance with the Rules, and the Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). Payment of USD 1,500 has been made to the Center.
3.2 The Panel agrees with the Center’s assessment that the Complainant has complied (in all material respects) with the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules and the Supplemental Rules. The Complaint was properly notified to the Respondent, in accordance with paragraph 2(a) of the Rules, the notification was dated July 30, 2002, and the formal date for the commencement of the administrative proceeding was set at July 31, 2002. The Response was sent to the Center by email on August 20, 2002, and a hard copy was received by the Center on August 26, 2002. The Response does not contain a statement identifying any other legal proceedings commenced or terminated in connection with or relating to the Domain Name (paragraph 5(b)(vi) of the Rules). The Panel has proceeded on the assumption that the dispute is not the subject of separate legal proceedings.
3.3 The Respondent emailed the Center on July 30, 2002, stating he believed that the Complainant had had an opportunity to on-sell the Domain Name and was seeking to do so without completing its "unfinished business" with the Respondent. He also wrote that, whereas paragraph 18 of the Complaint stated that he had provided no explanation of his ownership and intentions, this is not the case.
3.4 Further email correspondence includes: an email from the Respondent to the Complainant’s representative (apparently attaching a letter to a director of the Complainant – Mr. Brendan Cloustan) dated July 30, 2002, the Complainant’s representative’s response to the Respondent of July 30, 2002, and the Complainant’s representative’s email to the Center of August 16, 2002.
3.5 A Panel was constituted on August 26, 2002, with a single panelist, Nick Gardner. A statement of acceptance and declaration of impartiality and independence has been filed by the panelist.
4. Factual Background
4.1 As appears below the dispute over the Domain Name arises in the context of the insolvency at a company called My.Net International Limited ("MNIL"). The Panel has been provided with a large amount of material in this regard. Much of the material, or its significance, is in dispute. It appears to the Panel that the following matters in section 4 are not in dispute. Matters which are, or may be, in dispute are set out in section 5 below.
4.2 In around February 2000, MNIL paid Ј20,000 to a third party for the Domain Name. The Domain Name was then registered in the name of the Respondent, who was at that time the CEO of MNIL.
4.3 At some stage after this, MNIL became insolvent and ceased trading.
4.4 My.Net Limited (the former name of MNIL) is named as the "owner" on the UK trade mark application No. 2226149 dated March 17, 2000, for the mark MY.NET/MYNET/mynet/my.net in class 38, according to a printout annexed to the Complaint. This does not appear to be disputed.
4.5 At some stage the Respondent ceased employment with MNIL and a formal compromise agreement (the "Compromise Agreement") was entered into. The copy provided to the Panel is undated and unsigned but it does not appear to be in dispute that this is a binding agreement.
5. Parties’ Contentions
5.1 The Complainant asserts the following facts:
a) That it is the successor in title to the intellectual property rights belonging to MNIL (formerly My.Net Limited). Prior to the transfer, the Complainant had a fixed charge over MNIL’s intellectual property and the goodwill attached to such property.
b) The Complainant is in the process of changing the UK Trade Mark Registry’s records to show it is the legal owner of the above trade mark application and of organising the transfer of various <my net> domains (such as <mynetbiz.co.uk>) to the Complainant.
c) In around February 2000, MNIL paid Ј20,000 for the Domain Name and it was transferred to the Respondent (the CEO of MNIL at the time) "for convenience", to be registered on MNIL’s behalf and for MNIL’s, not the Respondent’s own, purposes. The Domain Name was subsequently used by MNIL staff as the primary email address.
d) Around December 2000, (prior to MNIL’s insolvency) the Respondent (who had been CEO of MNIL) resigned from MNIL and the terms of his departure are evidenced by the Compromise Agreement (an unsigned, undated copy of which has been provided). By clause 3.1(a), the Respondent agreed to return "all property belonging or relating to the Company" in his possession and control, which the Complainant says included the Domain Name on the basis that it was MNIL’s property, paid for by MNIL.
e) The Administrative, Technical and Billing contacts at the time of registration of the Domain Name were in MNIL’s control and are now in the Complainant’s; the Respondent does not and did not have the sole use of, or control over, the Domain Name.
f) On June 30, 2001, in the course of its insolvency, MNIL assigned all intellectual property rights, including trade mark registrations and applications, service marks and business names used by it or in or for the purposes of its business, to the Complainant. Consequently, the Complainant owns the UK trade mark application 2226149 for MY.NET/MYNET/mynet/my.net, and the goodwill and reputation in the MY.NET name. MNIL’s <my net> domain names, such as <mynetbiz.co.uk>, were also transferred by means of the June 2001 assignment.
g) The Respondent has refused to transfer ownership of the Domain Name to the Complainant and has provided no explanation, despite the Complainant’s legal representatives putting him on notice of his breach of the Compromise Agreement.
5.2 The Complainant’s contentions can be summarised as follows:
a) The Domain Name is identical to the business name/service mark and the UK trade mark application in which the Complainant has rights following the assignment of those rights to it by MNIL on June 30, 2001.
b) The Respondent has no legitimate registered or unregistered rights in the Domain Name and is not authorised, because of his Compromise Agreement with MNIL, to own the Domain Name, nor does the Respondent trade under the name MY.NET.
c) The Domain Name is registered and being used in bad faith, as the Respondent failed to transfer it, as agreed under the Compromise Agreement. If the Respondent were to use the name he would trade off the goodwill and reputation in the name MY.NET which was assigned to the Complainant.
d) The Respondent’s continued registration of the Domain Name is in bad faith, as it prohibits the Complainant from reflecting its service mark/trade mark in a corresponding domain name, disrupts the Complainant’s business by preventing it from using the Domain Name and, as the Complainant has rights in the business name MY.NET, there is a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website (paragraphs 4(b)(ii), (iii) and (iv) of the Policy).
5.3 The Respondent asserts the following facts:
a) The Domain Name never belonged to MNIL. Even if it had, neither the charge nor assignment of MNIL’s intellectual property rights to the Complainant defined such rights as including the right to become the Registrant of the Domain Name.
b) The Compromise Agreement did not refer to a transfer of the Domain Name.
5.4 The Respondent’s contentions can be summarised as follows:
a) The Respondent became the Registrant and the Administrative Contact of the Domain Name at the time of its transfer to the Respondent. He also arranged for an associated organisation to be registered as Technical Contact. The Complainant’s evidence on this point is false. The Respondent assumes that the subsequent changes of Administrative and Technical Contact details have been brought about by the Complainant in bad faith.
b) The Domain Name is not registered and being used in bad faith. The Respondent owns the Domain Name and did not acquire or register it in bad faith. MNIL had not begun to trade under any trade mark when the Domain Name was acquired and MNIL did not do so prior to liquidation. The Complainant’s actively used domain name is <post.com>.
c) MNIL and the Complainant have not shown any interest in using the Domain Name (until bringing this Complaint). MNIL were reluctant to accept the Respondent’s recommendations to use the Domain Name, save (with his permission) to host email and have not actively pursued the trade mark application.
d) The Respondent agreed to resign from MNIL on the basis that Mr. Clouston (of the Complainant) had assured him he would have an equity interest in MNIL’s business. On the basis of this relationship "in honour" with Mr. Clouston, the Respondent informed him of an interest which Microsoft has in the Domain Name. The Respondent in his letter of July 30, 2002, has offered to transfer the Domain Name in return for confirmation of his 2% shareholding in the Complainant.
e) Contrary to the Complainant’s assertion, the Respondent has provided the Complainant with an explanation for his refusal to transfer the Domain Name.
f) The Complainant devised its claim only after becoming aware that Microsoft had expressed an interest in acquiring the Domain Name from the Respondent, something which Mr. Clouston had been told by the Respondent.
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint, the documents annexed to the Complaint, the Response, the documents annexed to the Response and the email correspondence between the Respondent, Complainant and the Center. In the light of this material this Panel’s findings, in accordance with paragraphs 4(a), (b), and (c) of the Policy, are set out below.
6.2 As appears from the respective contentions described above, at the heart of this dispute is the insolvency of MNIL and a dispute between, on the one hand, a company which claims to be the successor in title to the intellectual property rights of MNIL (the Complainant) and, on the other hand, a former director (the Respondent). There are extensive and complex disputes of fact and the Panel is not able, given the nature of these proceedings, to resolve such disputes. The Panel doubts that the Policy is an appropriate means to resolve disputes of this kind, which are, by their nature, much more likely to require resort to the judicial process.
6.3 However it seems very clear to the Panel that the Complaint cannot succeed under the Policy. The fatal deficiency in the Complainant’s case can readily be identified by considering the applicable requirement (para 4(a)(iii) of the Policy) that it has to show that "the domain name has been registered and is being used in bad faith". So far as registration in bad faith is concerned, the Complainant’s allegation appears to go no further than "[a]ccordingly, the directors of My.Net International Limited agreed to pay Ј20,000 for the Disputed Domain Name. For convenience, as [the Respondent] was CEO of [MNIL] at this time, the Disputed Domain Name was transferred to him… The Respondent registered the Disputed Domain Name on [MNIL’s] behalf and for the company’s, and not his own, purposes."
6.4 The Complainant’s case is that at the time of registration, MNIL consented to a registration which was for its benefit effected by one of its directors in his own name, this arrangement being "for convenience". No explanation is given of why this was "convenient" but it is not suggested, as the Panel understands it, that this was done without MNIL’s knowledge or consent. This does not seem to the Panel to disclose any allegation at all of the registration having been made in bad faith. The Panel therefore concludes that the requirement of paragraph 4(a)(iii) of the Policy is not made out in that the registration was not effected in bad faith.
6.5 In the light of this finding the Panel does not need to consider the requirements at paragraphs 4(a)(i) and 4(a)(ii) of the Policy.
6.6 The Panel therefore concludes the Complainant has not established the necessary requirements under the Policy. This decision does not reflect any view at all by the Panel as to which of the parties may be correct in relation to the various allegations they have made about the ownership of the Domain Name. That is a matter that would have to be resolved (absent any agreement) through a legal action, not via the Policy.
In the light of the above findings, the Panel’s decision is as set out below.
7.1 In this Panel’s view, the Complainant has not established (or even clearly alleged) that the Domain Name was registered by the Respondent in bad faith. (See paragraph 4(a)(iii) of the Policy). In the light of this finding the Panel does not need to consider paragraphs 4(a)(i) and (ii) of the Policy.
7.2 This Panel directs that the Domain Name remain registered to the Respondent.
Dated: September 17, 2002