Adam Murphy and Ontario Corporation
2038495 v. Noah Down, Solaris Tint
Case No. D2005-1296
1. The Parties
The Complainants are Adam Murphy and Ontario Corporation 2038495, Niagara Falls, Ontario, Canada, (the “Complainants”), represented by Sullivan Mahoney LLP, St. Catharines, Ontario, Canada.
The Respondent is Noah Down, Solaris Tint, Fort Pierce, Florida, United States of America,
2. The Domain Name and Registrar
The disputed domain name <solaristint.com> (the “Domain Name”)
is registered with BulkRegister.com, (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2005. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name and 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 for the administrative, billing, and technical contact. In response to notifications by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 23, 2005. The Center verified that the Complaint, together with the amendments to 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 29, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2006. The Response was filed with the Center on January 18, 2006.
The Center appointed Tony Willoughby as the Sole Panelist
in this matter on February 10, 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,
4. Factual Background
While the Complaint and the Response together with their exhibits are very substantial, few facts are agreed and very few of the crucial facts surrounding the registration of the Domain Name are supported by any documentary evidence. The following facts appear incontrovertible.
In early May 2003, the first Complainant met and entered into partnership with the Respondent and his wife. The partnership was to engage in window tinting and glass coating.
On September 26, 2003, the Domain Name was registered by the Respondent.
In December 2003, disagreement arose between the partners over financial issues.
On December 31, 2003, the Respondent and his wife incorporated the Second Complainant, Ontario Corporation No. 2038495. The directors and shareholders were the Respondent and his wife.
On January 7, 2004, the Second Complainant, Ontario Inc. 2038495, registered the business name Solaris Tint. The person authorizing the registration was the Respondent’s wife (Exhibit 10 to the Response).
On July 16, 2004, the Respondent and his wife transferred their shares in the Second Complainant to the First Complainant. On the same day they resigned their directorships of the Second Complainant and the First Complainant became the sole director and shareholder of the Second Complainant.
Between July 2004 and September 2005, there were several exchanges between the parties and the Respondent’s Internet consultants over the Domain Name and a domain name, <solaristint.ca>, about which there is dispute, but which the Respondent claims was registered for the Complainants to use.
On September 22, 2005, the Complainants conducted a Whois search on the Domain Name and found it to be registered to Solaris Tint of Niagara Falls, Ontario, Canada.
On September 28, 2005, the Complainants conducted a Whois search on the Domain Name and found it to be registered to Solaris Tint of Fort Pierce, Florida, United States of America.
On December 17, 2005, the Complaint was filed.
The Domain Name is connected to an active website,
which is the Respondent’s trading site.
5. Parties’ Contentions
The bulk of the Parties’ Contentions simply demonstrate that the First Complainant and the Respondent have been in dispute since December 2003.
For the purposes of this administrative proceeding the Panel is only concerned with the circumstances surrounding the registration of the Domain Name. Was it or was it not registered in bad faith?
The Complainants contend that:
(a) The partnership traded as Solaris Tint;
(b) the Domain Name was registered for the benefit of the business carried on by the partnership under the name Solaris Tint;
(c) the Second Complainant was incorporated to take over the business of the partnership and to trade as Solaris Tint;
(d) the Respondent told the First Complainant that his exclusion from the Second Complainant was an oversight and would be rectified;
(e) the Domain Name has been used by the Complainants to connect to a website which gave visitors the Complainants’ contact information;
(f) in September 2005, the Respondent instructed his Internet consultants to remove that information from the website;
(g) the Domain Name has been an asset of the Second Complainant since its incorporation on December 31, 2003; and
(h) the First Complainant is the proprietor of the Second Complainant.
The Complainants contend that they have unregistered trademark rights in respect of the name SOLARIS TINT and that the Domain Name is identical to that trademark.
The Complainants further contend that the Respondent divested himself of all rights to the Domain Name when he and his wife transferred ownership of the Second Complainant to the First Complainant in July 2004.
The Complainants do not dispute that the Respondent is using the Domain Name for legitimate purposes; nor, given geographical locations of their respective businesses, are the Complainants claiming that the Respondent is likely to deprive them of any custom. The Complainants expressly base their claim, not on illegitimate use of the Domain Name, but on the Respondent’s alleged misappropriation of the Second Complainant’s property.
Finally, the Complainants contend that the Domain Name was registered and is being used in bad faith. This section of the Complaint reads as follows:
“The Respondents are aware that the domain name is owned solely by the Corporation and that they transferred all shares of the Corporation to Adam F. Murphy on July 16, 2004. They have, however, convinced DIME Consultants Ltd. to allow them to operate the web-site in clear violation of UDRP. The Respondents have, through their share transfer, sold the domain name to Adam Murphy and now have stolen it back from the Corporation without any notice or compensation.”
“The Respondents have utilized the website to promote their business at the cost of the Corporation. Adam Murphy relied on the Respondents to act in good faith to deliver all of the Corporation’s assets, including the website. Mr. Murphy assumed that these were the intentions of the Respondents as he operated the business and the website for over a year, without any interruption. Unfortunately the Respondents have recently acted in bad faith by illegitimately seizing the domain name solaristint.com.”
The Respondent contends that the Domain Name was never an asset of the partnership or indeed the Second Complainant. The Respondent contends that the Domain Name was registered by the Respondent with his own money on his own account. The Respondent produces invoices from his Internet consultants showing that he personally was billed for the registration of the Domain Name and for website creation and design work conducted in February 2004, and for further work in June 2004, and for web hosting and subsequent work thereafter.
The Respondent does not appear to deny that the Complainants have rights in respect of the name Solaris Tint. He contends, however, that at the time the Respondent registered the Domain Name no business called Solaris Tint existed and that the Complainants’ rights to Solaris Tint (a) post-date the registration of the Domain Name and (b) are restricted to Canada.
The Respondent asserts that he has rights and legitimate interests in respect of the Domain Name. He asserts that the First Complainant and the Respondent agreed that the Respondent “would take the solaristint.com website and would register solaristint.ca for Adam to use”.
The Respondent points out that all expenses in respect of the Domain Name and the websites associated with it have been borne by him.
The Respondent claims that the domain name, <solaristint.ca> was registered at his instigation for the benefit of the Complainants.
Finally, the Respondent contends that the Domain Name was not registered in bad faith and is not being used in bad faith. The Respondent explains that the amendment of the Whois details in September of last year were simply as a result of his Internet consultants realizing that they had failed to record the change of address from his old address to his new one.
The Respondent contends that the Complainants are
guilty of reverse domain name hijacking in that when launching the Complaint
they knew that there was no question of the Respondent having been guilty of
any bad faith.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
If the Complaint fails, the Panel has to have regard to paragraph 15(e) of the Rules and in particular the following sentence, namely:
“If after considering the submissions the Panel finds that the Complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its Decision that the Complaint was brought in bad faith and constitutes and abuse of the Administrative Proceeding.”
Reverse Domain Name Hijacking is defined in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.
A. Identical or Confusingly Similar
It is not in dispute that the Complainants have unregistered trademark rights in respect of the name SOLARIS TINT in Canada.
That being so, the Domain Name is clearly identical to a trademark in which the Complainants have rights.
B. Rights or Legitimate Interests
In the Complaint, the Complainants expressly state “The Complainants do not dispute that the Respondents are using the Domain Name for legitimate business purposes”. Accordingly, they must accept that the Respondent has a legitimate right to trade under the name SOLARIS TINT in Florida, where he and his wife now reside.
The essence of their Complaint is that the Domain Name was an asset of the Second Complainant and that on transfer of the Second Complainant to the First Complainant the Domain Name should have passed with the company. Thus, although the Respondent has the right to trade under the name SOLARIS TINT in Florida, he does not have any right to use the Domain Name, which belongs to the Complainants.
In other words, this is not really a dispute over whether or not the Respondent registered the Domain Name in breach of the Complainants’ trademark rights, it is a dispute between two parties, both entitled to make use of the name represented in the Domain Name, as to the Domain Name’s subsequent ownership.
In the view of the Panel, the only way that the Complainants could conceivably succeed in this dispute is to prove that at time of registration of the Domain Name it was registered by or on behalf of the partnership, being the business which the Second Complainant was incorporated to acquire.
The only corroborated evidence before the Panel as to the circumstances surrounding the registration of the Domain Name are the invoices produced by the Respondent demonstrating that he registered the Domain Name in his own name and was invoiced for it. Had the Domain Name been registered for the partnership, the Panel would have expected the Complainants to produce some evidence of it (e.g. that the partnership reimbursed the First Complainant).
There is nothing before the Panel to demonstrate that the Second Complainant was formed to acquire the business of the partnership. Had the Domain Name been an asset of the Second Complainant, again the Panel would have expected the Complainants to produce a document demonstrating that fact.
The Panel would have been very much more impressed by the Complainants’ case if the Complainants had demonstrated that the website connected to the Domain Name had been a trading website exclusive to the Complainants, but the Complainants have not done so.
Suffice it to say that the Complainants have failed to prove to the satisfaction of the Panel that the Respondent does not have a legitimate interest in respect of the Domain Name, it being acknowledged that he is entitled to trade in Florida under the name, SOLARIS TINT, and is conducting legitimate business via the website to which the Domain Name is connected. Significantly, there is nothing to demonstrate that the Respondent did not register the Domain Name on his own behalf and there is nothing to demonstrate that the Domain Name has been used as an active trading site by the Complainants.
C. Registered and Used in Bad Faith
By the same reasoning, the Panel is not satisfied that the Domain Name was
registered and is being used in bad faith.
7. Reverse Domain Name Hijacking
There is insufficient evidence before the Panel to come to any concluded view on this topic. There is little or nothing before the Panel to demonstrate the nature and extent of the business of the partnership at and around the date of registration of the Domain Name. It certainly strikes the Panel as very odd that one of the partners in a partnership, which seems to have been trading as Solaris (on the evidence of the Respondent) should register a domain name such as the Domain Name on his own account. At all events, the Panel can understand that the First Complainant might have cause for being aggrieved.
However, in the same way that the paucity of evidence leads the Panel to conclude
that it would be unsafe to make a finding against the Respondents in the main
complaint, similarly it renders the Panel unable to conclude that the Complainants’
intentions in filing this Complaint were abusive.
For all the foregoing reasons, the Complaint is denied, as is the request for a finding of Reverse Domain Name Hijacking.
Dated: February 20, 2006