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and Mediation Center
Jason Crouch and Virginia McNeill v. Clement Stein
Case No. D2005-1201
1. The Parties
The Complainants are Jason Crouch and Virginia McNeill, Emeryville, United States of America, represented by Akawie & LaPietra, United States of America.
The Respondent is Clement Stein, Desert Gate, Palm Desert, United States of America,
represented by Law Offices of Wayne A. McFadden, United States of America.
2. The Domain Names and Registrar
The disputed domain names <allemeryville.net>, <allemeryvilleproperties.com>,
<allemeryvilleproperties.net> are registered with Schlund + Partner.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2005. On November 22, 2005, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the domain names at issue. On November 22, 2005, Schlund + Partner transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 December 5, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2006. The Response was filed with the Center on January 6, 2006.
The Center appointed M. Scott Donahey as the Sole Panelist in this matter on January 16, 2006. 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.
Complainants filed a Supplemental Reply in Support
of Complaint, to which Respondent objected. Respondent indicated that it might
file a supplemental response thereto by January 20, 2006. No such reply was
ever received. The Panel exercises its discretion to receive and consider Complainants’
Supplemental Reply in Support of Complaint.
4. Factual Background
Respondent is a licensed real estate broker and the operator of a real estate company with its principal place of business in Emeryville, California. Respondent’s business includes real estate sales, property management and leasing of residential real estate condominiums. Response, Annex 8, paragraph 1. On or about October 3, 2000, Complainant Crouch entered into an independent contractor agreement with Respondent’s company to act as a real estate salesperson. Response, Annex 8, paragraph 3. On or about April 15, 1991, Complainant McNeill became an employee of one of Respondent’s former real estate businesses. Complainant McNeill continued to be employed as an independent contractor in one or another of Respondent’s real estate businesses for the next fourteen years. Response, Annex 8, paragraph 4. Complainant McNeill was married to Respondent for a period of ten years. Id. It is unclear from the documents submitted when the marriage began and ended.
On February 7, 2005, Complainants registered the domain name <allemeryville.com> Complaint, paragraph V. On July 26, 2005, Complainants’ closely held company, J.V. Holdings, Inc., registered the fictitious business name “All Emeryville Properties” in Alameda County, California. Complaint, Annex 1. On July 29, 2005, Complainants each delivered a thirty-day notice of termination of their independent contractor agreements with Respondent. Response, Annex 8, paragraph 9.
On August 5, 2005, Clement Stein of Desert Gate, Palm Desert California registered the domain name <allemervyvilleproperties.com>. Complaint, Annex 1. Complainants contend that Respondent is the registrant. Respondent denies that he is the registrant. State of California Real Estate License records show Respondent as having an office at the Palm Desert, California address listed above. Supplemental Reply in Support of Complaint, paragraph 1.
On September 1, 2005, Respondent and one of his companies filed a lawsuit in Alameda County Superior Court against, among others, Complainants and All Emeryville Properties (the “Court Complaint”). Response, Annex 8. Complainants are each 50% shareholders of J.V. Holdings, Inc. and there are no other shareholders of that company. Supplemental Reply in Support of Complaint, paragraph 3. JV Holdings, Inc. is doing business as All Emeryville Properties. Response, paragraph III. The Court Complaint seeks damages for misappropriation of proprietary information and trade secrets, breach of contract, breach of the covenant of good faith and fair dealing, tortuous interference with prospective economic opportunity, and breach of fiduciary duty. Response, Annex 8. A Cross-Complaint was filed in the court action in which Complainants allege that Respondent has used the domain names at issue in improper fashion and pursuant to which Complainants seek monetary and injunctive relief. Complaint, paragraph IX. Complainants indicated that they will seek a stay of the court proceedings pending completion of this administrative procedure. Id.
On September 15, 2005, Clement Stein of Palm Desert, California registered the domain names <allemeryville.net> and <allemeryvilleproperties.net>. Complaint, Annex 1. Complainants contend that Respondent is the registrant. Respondent denies that he is the registrant. On November 7, 2005, Complainant Crouch registered the service mark ALL EMERYVILLE PROPERTIES with the California Secretary of State. Complaint, Annex 3. The registration showed a date of first use as July 26, 2005. Id.
Respondent has recently added a new paragraph to the
home page of Respondent’s website including the phrase “all Emeryville
properties.” Supplemental Reply in Support of Complaint, paragraph 4.
Complainants claim to have recently learned that Respondent has registered at
least six other domain names incorporating some form of “allemeryville.”
Id., at paragraph 7.
5. Parties’ Contentions
Complainants contend that the domain names at issue are identical or confusingly similar to Complainants’ service mark ALL EMERYVILLE PROPERTIES that Respondent has no rights or legitimate interests in respect of the domain names at issue, and that Respondent has registered and is using the domain names in bad faith. Complainants seek transfer of the domain names at issue and an effective prohibitory injunction against the use of any domain names containing the terms “all” and “Emeryville” by Respondent.
Respondent contends that complainants lack standing
to bring the present complaint, that Respondent is not the registrant of the
domain names at issue, and that this matter should be dismissed.
6. Discussion and Findings
The Policy was adopted to deal as is with the problem of cybersquatting, the registration of domain names consisting of, including, or confusingly similar to marks belonging to another for the purpose of profiting from the goodwill associated with said marks. The questions under the Policy to be addressed by the Panel are relatively simple and straightforward. The proceeding is a summary one, without the benefit of confrontation of the witnesses, or even of a hearing. Although the subject of some criticism, the procedure has worked remarkably well in resolving the limited claims for which it was intended.
In the present case, the dispute concerning the domain names is merely ancillary
to much larger, complex disputes between the parties, involving alleged breaches
of contract, breaches of fiduciary duty, and tortious conduct. Indeed, Complainants
seek relief in the nature of prohibitory injunctive relief, a type of relief
far beyond the limited powers granted to the Panel under the Policy. A lawsuit
is currently pending in the courts of California for the resolution of the larger
disputes, disputes which are appropriate to be resolved by a court of law, and
of the parties’ disputes regarding the registration and use of the domain
names. The Panel holds that where the dispute concerning the domain names is
part of and ancillary to much larger disputes involving questions of contractual
obligations, fiduciary duties, and tortuous conduct, it would be inappropriate
to use the Policy to attempt to carve out and resolve the relatively minor,
but interconnected, domain name dispute. See Adaptive Molecular Technologies,
Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More,
WIPO Case No. D2000-0006, and Clinomics
Biosciences, Inc. v. Simplicity Software, Inc., WIPO
Case No. D2001-0823.
For all the foregoing reasons, this matter is dismissed.
M. Scott Donahey
Dated: January 31, 2006