WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Matrix NV, LLC v. Evan Marder

Case No. D2019-2260

1. The Parties

Complainant is Matrix NV, LLC, United States of America (“United States”), represented by Fisher Broyles LLP, United States.

Respondent is Evan Marder, United States, self-represented.

2. The Domain Name and Registrar

The disputed domain name <matrixmmj.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2019. On September 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 19, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2019. The Response was filed with the Center on September 30, 2019.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on October 10, 2019. 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.

4. Factual Background

Complainant is a limited liability company formed on May 20, 2014, under the laws of the state of Nevada.

On February 13, 2019, Complainant filed federal trademark applications, which are currently pending, for the trademarks MATRIX NV and M MATRIX NV for clothing, including shirts, t-shirts, jerseys, hats, pants, hoodies, sweatshirts, sweaters, sweatpants, tankshirts, jackets, gloves, underwear, socks, vests, shoes, headwear, and belts.

Respondent was one of the founders and managers of Complainant at the time of its formation.

The Domain Name was registered by Respondent on November 16, 2014.

5. Parties’ Contentions

A. Complainant

Complainant states that it began using the Domain Name in April 2016 to promote its cannabis cultivation, oil extraction, and cannabis branding in the legal medicinal market in Nevada, and that it continues to use the Domain Name for these purposes. Respondent is one of Complainant’s former managers.

Complainant claims it has been using the Domain Name and trademark MATRIX NV continuously since 2016 relative to its cannabis cultivation, oil extraction, and cannabis branding. The mark is also going to be used to expand into apparel and cannabis accessories. Complainant contends that, based on continuous use, it has common law trademark rights in the MATRIX NV mark. Complainant states that since it began, it has sold its products to over 85 percent of the current cannabis dispensaries in the state of Nevada. Currently, Complainant regularly sells its products to approximately 20 of Nevada’s 64 dispensaries including many that cater to the local population. Complainant has in excess of 14,000 Instagram followers. Monthly revenues for Complainant fluctuate seasonally between USD 250,000 and USD 500,000. Complainant claims that it has established itself as a significant player in its industry in just over three years of business, and these efforts have allowed the MATRIX NV mark to become one of the best known brands in the Nevada market.

(ii) Rights or legitimate interests

Complainant states that Respondent, while a member and manager of Complainant, registered the Domain Name on November 16, 2014. When Respondent registered the Domain Name, he intentionally did so in his own name. Complainant contends that as a member and manager of Complainant, Respondent had a fiduciary duty to register the Domain Name in the name of Complainant, or at a minimum transfer it to Complainant subsequent to registering it in his own name. Despite Respondent registering the Domain Name in his own name, Complainant has conducted business using the Domain Name to this day without incident.

On December 10, 2018, Respondent was removed as a manager of Complainant. Then, on January 4, 2019, Respondent left Complainant and now remains a passive minority owner and, as set forth below, has claimed ownership of the Domain Name. Complainant has paid Respondent for the expenses associated with maintaining the Domain Name. Complainant contends these payments were accepted by Respondent because the Domain Name was/is owned by Complainant and Respondent acknowledged this by taking the payments.

Complainant states that recently, on June 19, 2019, Alex Ficken, chief operating officer (“COO”) of Complainant, first learned that the Domain Name had been registered in Respondent’s name. Until Mr. Ficken’s discovery, Complainant incorrectly believed that Respondent, being one its own members and managers, had registered the Domain Name in Complainant’s name.

(iii) Registered and used in bad faith

Complainant contends the Domain Name should be considered as having been registered and being used in bad faith. The discovery that Respondent had registered the Domain Name in his own name was quite by chance. Complainant needed access (i.e., password information) to the Domain Name to service its email system. When the IT department of Complainant contacted Respondent for the access information, Respondent refused and indicated that he owned the Domain Name. This assertion by Respondent is factually incorrect since, as set forth above, Respondent had a fiduciary duty to register the Domain Name in the name of Complainant, or at a minimum transfer it to Complainant subsequent to registering it in his own name.

Thereafter, responding to a follow-up text message from Mr. Ficken regarding how to transfer the Domain Name to Complainant, Respondent suggested that Complainant buy the Domain Name from him. Respondent also suggested methods for valuing the Domain Name. The valuations offered by Respondent were extraordinarily inflated. Complainant states that Mr. Ficken, in an effort to resolve the matter, offered Respondent USD 1000 to transfer the Domain Name to Complainant. The offer was rejected by Respondent. Complainant claims that despite on-going negotiations, Respondent continues to refuse to transfer the Domain Name to Complainant.

Complainant urges that, besides offering to sell the Domain Name to Complainant, Respondent’s refusal to transfer the Domain Name is itself an act of bad faith. Complainant contends that an employee charged to attend to his employer’s intellectual property assets can have no rights or legitimate interests in domain names he registers in his own name. In addition to offering to return the Domain Name for consideration, which is a violation under paragraph 4(b)(i) of the Policy, simply refusing to transfer the Domain Name is itself a violation. It implies a quid pro quo, but is silent on the quo. In acting against instructions, there is a presumption of bad faith.

Complainant states that a manager of a company is under no less of a duty, and likely more of a duty, to the company than an employee. Complainant has no intention of acquiescing to the demands of Respondent for the return of its own property. Complainant remains concerned that Respondent may shut down or otherwise interfere with Complainant’s online business by taking advantage of Respondent’s control of the Domain Name.

B. Respondent

Respondent states that he is the original founder of the concept behind Complainant. He contends that Complainant has called into question his character by claiming that he improperly registered the Domain Name in November 2014, improperly failed to transfer it to Complainant, and intends to disrupt Complainant’s ongoing online business. Respondent contends that it is completely disingenuous, factually inaccurate, and unjustified to raise these allegations as justification for transferring the Domain Name to Complainant.

Respondent provided a long background narrative, with evidentiary submissions, to support his claim that he owns the Domain Name and did not register and use it in bad faith. This information is summarized below:

Respondent states that he came up with the concept to start a chain of cannabis businesses called “Matrix” in February 2014 and he initially registered a Nevada limited liability company as Matrix LV, LLC (which is not the Complainant). When thinking of names, he thought “Matrix” related well to the cannabis culture and industry. He explains that this was the start of a brand he wanted to take national using the name “Matrix” with corresponding city or state abbreviations. Respondent lives in Las Vegas, hence the use of “LV” after the name “Matrix”.

Respondent states that the name “Matrix” is his nickname, shared by friends since the early 1990’s, and also the name by which he is known in the cannabis industry. Respondent has used the “matrixmmj” handle associated to his name on Instagram since 2015. His name is listed on Instagram as “Evan Matrix”, and his handle is “@evan.matrix.mmj”. He has over 12,400 followers on Instagram and states that he has achieved fame in the industry, especially in Nevada. He currently generates the majority of his consulting business through his Instagram page “@evan.matrix.mmj”, and claims he is on schedule to make over USD 130,000 in 2019. He has a consulting company called “EM Consulting, d/b/a as Redram Consulting”. Respondent set up his personal business Instagram account long before Complainant started the “@Matrix_NV” Instagram page.

From February 2014, Respondent states that he led the “Matrix” project, designed and oversaw the construction of the business, and personally obtained all licenses and certificates. In March 2014, Respondent developed a business plan and started looking for investors. In May 2014, David Tuttleman, who was Respondent’s longtime friend, the owner of Respondent’s former employer, and is currently an owner and executive of Complainant, decided to invest in Respondent’s project. Together they worked to form a team of investors. Because Respondent had already set up “Matrix LV, LLC” as a solely owned entity, they established Complainant in May 2014 as a new company called “Matrix NV, LLC” (“NV” as the abbreviation for Nevada), of which Respondent became a part-owner and managing member.

Respondent states that the process to apply for a medical marijuana license in Nevada was difficult. A call for applications was issued in June 2014 right after they formed their partnership. When applying, Respondent states he was the only person in the “Matrix” partnership who lived in Nevada, and he led the entire process. In August 2014 Respondent submitted the 5,400-page application and on November 5, 2014, they were awarded the medical marijuana preliminary state certificate. They next began the process of seeking local approvals, including a special use permit and business license. Respondent states they received the local approvals in late April 2015. Respondent acted as COO of Complainant from the day the project opened its doors on April 26, 2016, until April 2018. He was the only owner and executive who lived in Las Vegas and ran the day-to-day operations, and he was at the business seven days a week, 365 days a year with no days off until June 2018, when Mr. Ficken moved to from Philadelphia to Las Vegas and took over the COO position.

Respondent states that in November 2014 – when he registered the Domain Name, as well as another domain name, <matrixmj.com> – he was still developing, designing and working on the “Matrix” project out of a bedroom in his house. Respondent states that he and Mr. Tuttleman were uncertain about their partnership with investors because they had not closed the buy/sell agreement with them, and they had thus far been unable to raise the USD 6 million that was anticipated to be required to build the cannabis cultivation facility.

Respondent states that he has had nothing but the best intentions for the “Matrix” project. He wanted the company to be a success and for his partners to believe in him and invest in his dream. Respondent states that, to suggest he could have acted in bad faith by improperly registering the Domain Name, is a false depiction of history. He was vetted heavily by the partners of Complainant and had proven himself to be trustworthy, such that they obtained a preliminary agreement from the investors to invest millions of dollars and an agreement that he would receive a 10 percent sweat equity interest in the project with no vesting period.

Respondent states that on November 15, 2014, at approximately 11:00 p.m., with no direction from Mr. Tuttleman or anyone else, he registered two domain names – the Domain Name and the <matrixmj.com> domain name. Respondent claims that, at that time, there were no plans for a website, nor did he know whether these domain names would be used by Complainant. The acronym “MMJ” stands for “Medical Marijuana”. Respondent claims he was thinking at the time that “Matrix” combined with the acronym “MMJ” would work well for a consulting business to bring the “Matrix” concept to other states that opened up to medical marijuana. He had no idea whether or not these domain names would be used for a “Matrix NV” website, and he did not register a domain name that incorporated the abbreviation “NV”. Complainant claims the use of the name “Matrix” and “MMJ” is not trademarked, can be widely used, and has no relationship to the word and abbreviation, “Matrix NV”.

Respondent claims that when he registered the two domain names, there was no discussion of starting a website; instead, they were busy with preliminary designs and licensing issues, as well as trying to raise money within the partnership and close the buy/sell agreement, so they could move forward with construction of the project. Respondent asserts that at that time, they were uncertain whether or not their project would become a reality. None of the investors had advanced funds necessary to complete the plans. That did not happen until June 2015. The idea to start a website was not brought up until July 2015, nine months after Respondent had registered the two domain names.

Respondent purchased the domain names with his own credit card using his own money. He was not reimbursed for the purchase of the Domain Name and the <matrixmj.com> domain name. Respondent contends that to claim, as Complainant does, that Respondent acted in bad faith to improperly register the Domain Names under his personal GoDaddy account, and not through a “Matrix” account, is untrue. Respondent asserts that he has had the best intentions for Complainant and his partners, has never acted in bad faith, and has not displayed any sort of malicious intent or problematic behavior.

Respondent claims it was known and accepted that he had registered the Domain Name, owned it, and was allowing Complainant to use of it. There was never a discussion, agreement or obligation to transfer the Domain Name to Complainant. In July 2015, nine months after Respondent purchased the domain names, Respondent and Mr. Tuttleman decided to develop a website and Respondent told Mr. Tuttleman about the domain names he had registered. Respondent states that Mr. Tuttleman, as Complainant’s CEO, liked the domain names and requested that Respondent grant access for Respondent’s personal GoDaddy account to Mr. Tuttleman and to the graphic artist/web designer and IT director. On July 13, 2015, Respondent sent an email to these individuals with pertinent information to grant access to his GoDaddy account. The website was not developed until April 2016, a year and a half after Respondent registered the Domain Name.

Respondent claims that these individuals had access to the Domain Name the entire time and never transferred it, because it was always completely obvious and understood that Respondent owned the Domain Name. Anytime there was a need to work on the website or email, Respondent granted access to his personal GoDaddy account to Mr. Tuttleman, the web designer, IT director, and anyone else authorized to work on the website or email. This remained the case until Respondent was no longer acting COO of Complainant in June 2018. Respondent argues hypothetically that if he had improperly registered the account under his name, then why was the Domain Name not moved over to a new account of Complainant when he had granted access to the CEO, the graphic artist/web designer, the IT director, and other people who were allowed to access the account? Respondent claims that Mr. Tuttleman has known the Domain Name was under Respondent’s personal account since July 13, 2015, yet Mr. Tuttleman never took any action to move the Domain Name to another account, nor did he direct Respondent or anyone else to do so.

While Complainant has provided proof of Complainant’s reimbursement to Respondent of a renewal fee for the Domain Name (that was initially paid by Respondent to GoDaddy), Respondent contends that the information on the receipts serves to show that Complainant knew Respondent owned the Domain Name and that it was registered under his personal account. Considering everyone has access to receipts for the reimbursements for renewal fees, it has always been obvious to Complainant’s management, accounting, and ownership that the Domain Name was under Respondent’s personal account. Respondent claims he was hiding nothing and never acted in bad faith.

To further prove the Domain Names was not improperly registered, Respondent emphasizes that he paid for everything on his personal credit cards. While Complainant has, on occasion and at Respondent’s request, reimbursed for renewal fees but not all of them, Complainant has never once voluntarily paid any renewal fees, nor asked when they are due. There are several charges related to the Domain Name since 2014 for which Respondent was not reimbursed. He continues to pay all fees related to the Domain Name out of his own pocket.

A representative of Complainant contacted Respondent on June 19, 2019, asking for access to his account, and Respondent responded that he would not give out his password. That same day, however, Respondent granted the representative remote access to his GoDaddy account to allow work on issues associated with Complainant’s email system. The issues were fixed that same day. Respondent texted Mr. Ficken to let him know that he would grant access any time work was needed on the website, and Mr. Ficken thanked him.

Respondent states that on August 13, 2019, Mr. Ficken contacted Respondent asking to buy the Domain Name for USD 1,000. Respondent states that this offer seemed low. At that time, Respondent had not considered selling the Domain Name and did not know what it was worth. The information Respondent researched indicated that a non-revenue generating website is usually valuated at 2 to 3 times the monthly sales of the company. Soon after, Respondent states that he received an email from Mr. Ficken claiming Respondent did not own the Domain Name and that his offer was “only an accommodation”. Respondent argues this was false. Mr. Ficken had made an offer to “buy” the Domain Name from Respondent, thereby acknowledging that Respondent owns the Domain Name. Respondent argues that Mr. Ficken acknowledged this ownership, along with Complainant’s executive team, by stating “[a]fter reviewing all options, can we buy the matrixmmj.com domain from you for USD 1,000”.

Respondent argues the Complaint is an attempt to harass Respondent and to take the Domain Name after Respondent rejected Complainant’s the offer. Respondent submitted messages to show that he tried to meet with Mr. Ficken, but to no avail. Respondent contends that, while Complainant has stated that it has tried to negotiate with Respondent after he rejected the offer of USD 1,000, this is false. There has been no attempt by Complainant to negotiate the purchase of the Domain Name from Respondent, beyond the initial offer of USD 1,000.

Respondent provided a screenshot dated August 30, 2019, (less than 2 weeks prior to Complainant filing the Complaint), which shows that Respondent continues to offer assistance to Complainant. Complainant grows cannabis plants and unfortunately has had issues with powdery mildew. The screenshot shows that Respondent offered a suggested solution to Mr. Ficken, and Mr. Ficken’s response thanking Respondent.

Respondent states there is nothing in Complainant’s operating agreement that precludes Respondent from using the name “Matrixmmj” in any websites, social media accounts, or businesses. Complainant does not hold any trademarks on “Matrix NV”, and specifically does not hold any trademarks on “Matrixmmj”, nor does the company have any pending trademark applications for “Matrixmmj”. Respondent explains that cannabis is federally illegal in the United States and federal trademarks are not granted to the cannabis industry. While Complainant claims it has applied for trademarks on clothing, Respondent asserts that Complainant’s website is strictly used for promotion of cannabis. No apparel is sold by Complainant, as it is a cannabis company.

Respondent claims that Complainant has abandoned the Domain Name. He states Complainant is now using the web address “www.matrixnvmmj.com”, not a site linked to the Domain Name. This is also the case with Complainant’s email addresses. For example, Mr. Ficken’s email address is “[ ]@matrixnvmmj.com”. Mr. Ficken’s email dated September 9, 2019, reads in relevant part, “[a]s of 8/22/2019 our OFFICIAL domain is now MATRIXNVMMJ.COM. This applies to all e-mail and our primary website which can be viewed at https://matrixnvmmj.com. Please update your contact information as soon as possible to avoid interruption in e-mail communications. Thank you.”

Respondent contends that considering the Domain Name has been abandoned, he would like to retain it for future consulting services or potential “Matrix” businesses outside of Nevada. He states that he is also open to selling the Domain Name if Complainant is willing to enter good faith negotiations and offer a fair price.

Respondent states that since 2015, he never asked for a fee to host the website linked to the Domain Name, and this did not change when he was taken off of Complainant’s executive team. To this day, he has not charged Complainant anything to host the website on the Domain Name, he paid for the initial purchase and all renewal fees out of his own pocket. He states he has never and will never do anything to harm the online business of Complainant – he wants to see Complainant succeed. Respondent state he always talks positively about Complainant, especially to people in the cannabis industry in Nevada and through social media on his Instagram page.

6. Discussion and Findings

In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and

(iii) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

Complainant contends that it has common law trademark rights in the MATRIX NV mark, which it has used since 2016 for its cannabis business. Complainant also has two pending United States applications, both filed in February 2019, for the MATRIX NV and M MATRIX NV marks, respectively, covering apparel and accessories.

Section 1.1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), specifies that a pending trademark application does not, by itself, establish trademark rights within the meaning of the Policy, paragraph 4(a)(i). However, section 1.3 of the WIPO Overview 3.0 indicates that a complainant can establish unregistered or common law trademark rights for purposes of the UDRP by showing that its mark has become a distinctive identifier that consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness includes a range of factors, such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint, while conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning.

In this case, Complainant has indicated that it began using the Domain Name in April 2016; that it has sold its products to over 85% of the current cannabis dispensaries in Nevada; that Complainant regularly sells its products to approximately 20 of Nevada’s 64 dispensaries, including many that cater to the local population; that Complainant has in excess of 14,000 Instagram followers; that monthly revenues for Complainant fluctuate between USD 250,000 and USD 500,000; that Complainant has established itself as a significant player in its industry in just over three years of business; and that these efforts have allowed the MATRIX NV mark to become one of the best known brands in the Nevada cannabis market. Respondent has not disputed this information.

Also pertinent to this case is section 1.1.3 of WIPO Overview 3.0, which states that when a domain name is registered before a complainant acquired any trademark rights – as in this case where Respondent registered the Domain Name in November 2014 – this does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element. However, as discussed below, section 1.1.3 also states that “[w]here a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent’s bad faith”.

With this analysis in mind, the Panel finds that Complainant has established unregistered common law rights in its MATRIX NV trademark, at least in Nevada in respect of the cannabis market there, based on use of the mark in commerce in Nevada for more than three years.

Further, the Panel determines that the Domain Name is confusingly similar to the MATRIX NV mark, as the Domain Name incorporates the word “matrix”, while adding the abbreviation “mmj”, which refers to medical marijuana. The addition of this abbreviation does not prevent a finding of confusing similarity. The word “matrix” is the dominant feature in the Domain Name, clearly recognizable within it. See WIPO Overview 3.0, section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”).

Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests / Registered and Used in Bad Faith.

The Panel considers that it is appropriate in this case to assess the second and third elements of the Policy together. Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name”. The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.

Here, the Panel determines that while Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name, Respondent has raised significant and detailed factual issues to rebut that case. Further, the Panel finds that Respondent has also raised detailed factual issues, supported with evidentiary submissions, to rebut Complainant allegations concerning bad faith registration and use of the Domain Name.

Complainant submitted evidence to show that in November 2014, when Respondent registered the Domain Name, Respondent and Mr. Tuttleman had already formed Complainant as a limited liability company in Nevada and both were listed as Complainant’s only managers and managing members. Thus, Complainant argues that Respondent has no rights or legitimate interests in the Domain Name because Respondent, at the time he registered the Domain Name, was arguably a member and manager of Complainant, and had a fiduciary duty to register the Domain Name in the name of Complainant, or at a minimum transfer it to Complainant subsequent to registering it in his own name. Complainant also indicates that Respondent has paid for expenses associated with maintaining the Domain Name, which shows the Domain Name was and is owned by Complainant.

Respondent has responded with statements and evidence in support of the following points: that at the time he registered the Domain Name, he did so before the “Matrix” project had been funded and before it was certain that the project would move forward; that he did so because the name matched his nickname; that he registered the Domain Name long before any website for Complainant had been developed and because he thought the Domain Name could be used in connection with a consulting business to bring the “Matrix” concept to other states that opened up to medical marijuana; that he has also used the “matrix” and “mmj” identifiers as elements in his Instagram handle (@evan.matrix.mmj) since 2015 and has developed a significant following; that he registered the Domain Name before Complainant had any trademark right and the terms “matrix” and “mmj” were not trademarked; that the addition of “mmj” makes the Domain Name different from Complainant’s name; that Complainant and its managers and employees always understood that Respondent owned the Domain Name and were aware that it was registered in Respondent’s name, even as Respondent sought reimbursement for certain renewal fees; that there was no agreement with Complainant concerning ownership of the Domain Name or requiring Respondent to transfer of the Domain Name to Complainant; that Respondent has never acted in bad faith; and that the Domain Name has been abandoned by Complainant.

Further, while Complainant has alleged that it only recently discovered, by chance, that Respondent had registered the Domain Name in his own name, Respondent has provided evidence to show that Complainant and its representatives (including the owner) knew that Respondent had registered the Domain Name in his own name from as early as July 2015. The parties also dispute the facts involving the extent and details of any settlement negotiations taking place before Complainant filed this case.

In view of all of the above, the Panel finds that this case raises complex issues of fact and credibility. Given the number of unresolved factual questions, especially concerning the nature of the relationship between Respondent and Complainant at relevant times, and their intentions (and any rights) with respect to the Domain Name, the Panel finds that this is primarily a business dispute between the parties that is not appropriate for resolution under the Policy. Indeed, as just one example, a central thrust of Complainant’s arguments is that the Domain Name was registered and is being used in bad faith by Respondent because Respondent owed Complainant a “fiduciary duty”. Whether or not such a duty existed and superseded any other understandings that might have existed between the parties at the relevant time is beyond the scope of the Policy. See Barnes Crossing Auto LLC v. Jonathon Hewitt, SEO Sport, LLC, WIPO Case No. D2017-1782 (“ Given the number of unresolved factual questions, especially the nature of the relationship between the parties and their intentions with respect to the Domain Names, the Panel finds that this is primarily a contractual dispute between the parties that is not appropriate for resolution in this proceeding.”); Jumblatt v. SlantMedia, WIPO Case No. D2012-1011 (“[t]he Panel takes into account that the Policy was designed to deal with a certain limited category of abusive registration of domain names, but not as a means of litigating all disputes involving domain names”).

For these reasons, the Panel makes no findings concerning whether Respondent had any rights or legitimate interests in the Domain Name, and whether it was registered and used in bad faith. The Panel finds that the following passage in Barnes Crossing Auto LLC v. Jonathon Hewitt, SEO Sport, LLC, and WIPO Case No. D2017-1782, is relevant to this case:

“[T]he Panel notes that this decision need not represent the final outcome to the dispute between the parties. Paragraph 5 of the Policy makes clear that a complainant and respondent retain the right to resolve their dispute ‘through any court, arbitration or other proceeding that may be available.’ In a court proceeding, the questions and concerns discussed above could be properly explored in ways that the Policy simply does not allow. ‘For good reason, this…process [under the Policy] is designed to be a fast track inexpensive process.’ Quoteseek Corporation v. Internet Marketing Group, WIPO Case No. D2002-0511. ‘Necessary elements of that desirable process are an absence of discovery, depositions, cross examination, [and] live hearings. When…a party critically needs certain evidence available only by discovery forbidden by the [Policy’s] parameters, this process may not produce as confidently sound results as the more expensive court processes that afford those features forbidden here. That is one of the reasons that this process is not a final process, but one where a disappointed party may take the issue to court.’”

7. Decision

For the foregoing reasons, the Complaint is denied.

Christopher S. Gibson
Sole Panelist
Date: October 24, 2019