Sharewell Group Inc. v. Steve Wiideman / Whois Privacy Protection Service, Inc.
Case No. D2008-0799
1. The Parties
Complainant is Sharewell Group Inc., Calabasas, California, United States of America, represented by the law firm Silver & Freedman, APLC, United States of America.
Respondent is Steve Wiideman / Whois Privacy Protection Service, Inc., La Mirada, California, United States of America; represented by Law Offices of Steven M. Sokoloff, United States of America.
2. The Domain Name and Registrar
The disputed domain name <corporatesem.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2008. On May 22, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On May 23, 2008, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
In response to a confirmation request by the Center and a notification by the Center that the Complaint was administratively deficient, Complainant filed a clarification and an amendment to the Complaint on May 31 and June 2, 2008, respectively.
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 Respondent of the Complaint, and the proceedings commenced on June 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2008. The Response was filed with the Center on June 30, 2008.
The Center appointed Richard G. Lyon as the sole panelist in this matter on July 15, 2008. The Panel finds that it was properly constituted and has jurisdiction over this dispute. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Prior to submitting his formal Response, Respondent submitted a number of email communications to the Center that contained factual assertions and contentions under the Policy. Most of these were incorporated into the Response. On July 3, 2008, receipt confirmed by the Center the following day, Complainant submitted a document its counsel named an “Update.” This contained a reference to the court proceedings discussed in Section 4 below and an “Additional Statement” in the nature of a reply to one of Respondent’s arguments. The Center advised the parties that the email correspondence and the “Update” would be referred to the Panel for determination of whether to consider them.
4. Factual Background
While the parties vigorously contest many factual issues, some of them related to registration of the disputed domain name, the facts necessary to decide this proceeding are not seriously contested.
Complainant describes itself as “a full service internet marketing and consulting company” that provides online marketing programs and similar services related to electronic commerce. Complainant’s principal website is “www.sharewell.com”. Among its services are those related to search engine marketing. A common acronym for such services is the initials SEM. Complainant does not allege that it owns any registered trademarks, and the Panel’s review of the data base at the United States Patent and Trademark Office confirmed this.
Respondent, a computer programmer specializing in search engine optimization, first registered the disputed domain name in August 2007. At this time he was performing work for or with Complainant, either as Complainant’s employee (according to Complainant) or as an independent contractor or prospective joint venturer (according to Respondent). This first registration was with eNom. In early March 2008 the disputed domain name was transferred to an account at a different registrar, GoDaddy.com, maintained by Complainant or one of Complainant’s principals. On March 16, 2008, Respondent again transferred registration, this time to his own account at eNom.
Currently the disputed domain name resolves to a single page with corporatesem.com in logo form, followed by “search engine optimization & marketing.” According to this page, “Corporate SEM is in the process of improving our website. We apologize for the inconvenience.”
Shortly after ending his affiliation (of whatever nature) with Complainant on March 24, 2008, Respondent set up a website at “www.shameonsharewell.com”. This remains an active website and the Panel’s review of it confirmed Respondent’s acknowledgment of his transfer of the disputed domain name from GoDaddy to his personal account at eNom (“regained possession of his domain name”). This transfer is similarly acknowledged in the Response. Most of the “www.shameonsharewell.com” website is a recital of Respondent’s view of the failed relationship between the parties.
On May 21, 2008, the same date on which it filed its Complaint in this proceeding with the Center, Complainant filed a lawsuit against Respondent in the Superior Court of the State of California, Los Angeles County, asserting claims for breach of contract, conversion, embezzlement, fraud; tortious interference, unjust enrichment, defamation, and misappropriation of trade secrets. In this lawsuit Complainant seeks damages (including punitive damages), an injunction, and the return of the disputed domain name, among other things.
5. Parties’ Contentions
A. Complainant
Complainant contends as follows:
Rights in a Mark.
The disputed domain name is in fact a property of Complainant, and was “stolen” by Respondent using access to Complainant’s registrar by virtue of his status as Complainant’s employee. In response to a communication from the Center requesting identification of the trademark or service mark on which the Complaint was based, Complainant stated in its “Application to Cure Deficiencies” that: “The Complaint is based on the trademark or servicemark [sic] corporatesem which is a mark used in commerce by the Complainant.”
No Rights or Legitimate Interest.
Respondent acquired the disputed domain name while serving as Complainant’s employee, and accordingly under California law the disputed domain name is the property of his employer, Complainant. Respondent has never been known personally or in business by the phrase corporatesem, and Complainant has never authorized Respondent to use the dispute domain name or that phrase.
Bad Faith.
Respondent’s misappropriation of the disputed domain name is evidence of registration and use in bad faith. That act misappropriated goodwill symbolized by the disputed domain name and interfered with Complainant’s right to profit from the development in commerce of its domain names. The content of Respondent’s criticism site, which is one of the bases for Complainant’s lawsuit against Respondent, is further evidence of bad faith.
Complainant’s case against Respondent may be summarized as “Respondent is an angry and vengeful ex-employee now trying to harm its ex-employer by trying to take that which was not his.”
B. Respondent
Respondent contends as follows:
Rights in a Mark.
Complainant has demonstrated no trademark rights in the phrase corporateSEM. Complainant has not applied to register this as a mark and has presented no evidence of any sale of any product or service by that name or use of that name to identify the services that Complainant provides. The logo attached on the website to which the disputed domain name resolves was prepared by Respondent after he ended his affiliation with Complainant.
Right or Legitimate Interest.
While Complainant and Respondent did discuss a business under the name corporate SEM, at all times the parties agreed that such business would belong to Respondent.
Bad Faith.
All of Respondent’s actions in connection with the disputed domain name were undertaken in good faith in anticipation of the joint venture Respondent expected to develop with Complainant. Complainant acted in bad faith throughout these dealings.
Reverse Domain Name Hijacking.
Because the Complaint is based upon a false recital of the parties’ relationship and transactions, Respondent requests that the Panel make a finding of Reverse Domain Name Hijacking.
6. Discussion and Findings
A. Identical or Confusingly Similar.
A domain name may sometimes serve as a trademark or service mark. Some such domain names, <amazon.com> for example, are very valuable marks. But they do not become marks, under United States of America trademark law or the Policy, solely by virtue of being domain names. To establish the first Policy element Complainant must show not only ownership of the domain name but also that it used the claimed mark to identify goods or services that it offered for sale. Complainant offers no evidence of this.1 The corporateSEM phrase or logo does not appear anywhere on Complainant’s website. Complainant’s sole allegation on this issue, quoted above, does not address the critical issue of use of the phrase “corporate SEM” or “corporateSEM.com” as its identifier of goods or services. Even if Complainant’s unsupported allegation be accepted as true, all it would show is that Complainant used the disputed domain name as an email address. That is not sufficient to establish rights in a trademark or service mark under paragraph 4(a)(i) of the Policy. As in Edward G. Linsky v. Brian Valentine,
WIPO Case No. D2006-0706, “Complainant’s evidence in this proceeding, however, is not sufficient to demonstrate any use of [the disputed domain name] as the source of his claimed consulting services or any public recognition of his mark or website.” Complainant here has not met its burden under this Policy element.
B. Rights or Legitimate Interests; Bad Faith.
The Policy’s requirements are conjunctive so the Panel need not address paragraphs 4(a)(ii) or 4(a)(iii). There is good reason in this proceeding to refrain from doing so. The circumstances of Respondent’s relationship with Complainant, many disputed factual issues that a panel under the Policy has no way of resolving, the fact that the disputed domain name is but a small part of a much broader dispute between these parties, and the pending litigation between the parties in California all counsel the Panel to eschew further comment on the merits.
C. Reverse Domain Name Hijacking.
Commencement of its lawsuit, in which Complainant seeks both surrender of the disputed domain name and substantial money damages, simultaneously with the filing of its Complaint strongly suggests that Complainant brought this proceeding “primarily to harass the domain-name holder.” See Rules, paragraph 16(e). Especially this appears so when there is no evidence of any use at any time by Complainant of the disputed domain name, and no demonstrated current use of the domain name by Respondent to divert or interrupt Complainant’s business.2 But resolution of each party’s good faith or bad faith is one more matter that should be left to the court and jury, so the Panel makes no finding on this subject. See Car Advisory Network, Inc. v. Journal Community Publishing Group, Inc.,
WIPO Case No. D2008-0717; Clover Gifts Inc. v. Airs Fragrance Products,
WIPO Case No. D2005-0776.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon Sole Panelist
Dated: July 21, 2008
1 Complainant offers very little proof of anything, relying almost exclusively upon unsupported allegations of counsel. Almost all the evidence comes from the Response or the Panel’s examination of the parties’ websites.
2 Neither the Panel’s summary denial based on the face of the Complaint nor the intimation of harassment in simultaneously subjecting Respondent to litigation and a Policy proceeding is intended to belittle the gravity of the charges made in the lawsuit. Those charges are, as the Panel has noted, for the parties to resolve in court, and the Panel expresses no opinion on whether Complainant or Respondent has more accurately characterized the parties’ past dealings.
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