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Latent Technology Group v. Bryan Fritchie [2000] GENDND 1005 (1 September 2000)

National Arbitration Forum

DECISION

Latent Technology Group, Inc. v. Bryan Fritchie

Claim Number: FA0007000095285

PARTIES

The Complainant is Latent Technology Group, Inc., Dallas, TX, USA ("Complainant"). The Respondent is Bryan Fritchie, Plano, TX, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is "HOGCALL.COM", registered with Network Solutions Inc ("NSI").

PANELIST(s)

The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

Panelist is Judge Karl V. Fink (Retired).

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/25/2000; The Forum received a hard copy of the Complaint on 07/25/2000.

On 07/26/2000, NSI confirmed by e-mail to The Forum that the domain name "HOGCALL.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 08/15/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/15/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail. It was also emailed to postmaster@hogcall.com.

A response was filed by Respondent.

On August 23, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Judge Karl V. Fink (Ret.) as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

Complainant

Respondent was an employee of Complainant and as an employee was instructed by Complainant to register the domain name at issue, hogcall.com for the company.

Respondent without permission registered the domain name under his own name instead of Complainant’s name. This is proof of registration of a domain name in bad faith.

The registration for the domain name was paid for by Complainant.

The invoices from Network Solutions, Inc. for the domain name do not indicate the registrants name, so Complainant had no way of knowing that it had been registered in Respondent’s name.

On December 10, 1998, Complainant filed an application for registration with the US Patent and Trademark office for the service mark HOG CALL.

B. Respondent

Respondent is a die hard fan of the University of Arkansas Razorbacks. In 1994 he started the first Razorback web site on the internet.
In December 1997 he registered the domain name sooiee.com. This was a commercial venture of the Respondent that provided the public with information and links to information concerning the Arkansas Razorbacks.
He began employment with Complainant on September 4, 1998. Before that time he had discussions with Mrs. Angie Phillips of Complainant concerning employment and development of an Arkansas Razorback web site and possible sale of sooiee.com to Complainant.
On October 14, 1998 he informed Mrs. Phillips that hogcall.com was still available and they agreed that he would register the name. He registered the domain name hogcall.com and pointed the domain at sooiee.com.
They came to an oral agreement on the purchase of sooiee.com from Respondent by Complainant. A new company was to be formed that would have the domain name in question.
Under the assumption that sooiee.com was going to be sold to Latent as well as hogcall.com he filled out the application for registration with the US Patent and Trademark office for the trademark HOG CALL in the name of Complainant.
The parties had drafts of proposed contracts which they exchanged but were never executed. Mrs. Phillips informed Respondent that the final documents would need to be prepared by an attorney. No money was ever paid for the transfer of anything from Respondent to Complainant.
Respondent as an employee of Complainant worked with others to develop hogcall.com as well as other related sites.
On April 18, 2000, Respondent turned in his resignation letter to Complainant and informed Complainant that he would take the domain names with him since they were his.
Respondent registered the domain name in question in his name with the approval of Complainant to protect his interest until they had an executed contract. The domain name was to be transferred to Complainant only upon a written agreement between the parties.

FINDINGS

Complainant paid for the registration of the domain name which is registered to Respondent. This occurred while Respondent was an employee of Complainant.
The application for the registration of the trademark HOG CALL occurred after the domain name was registered and was done by Respondent as an employee of Complainant.
The present situation is a result of the parties working together and negotiating to put together a formal business arrangement for the transfer of Respondent’s domain name sooiee.com to Complainant. As part of that sale, Respondent contemplated transferring the domain name in question hogcall.com.
Complainant’s basis for the transfer of the domain name is its claim that Respondent, as its employee, was supposed to register the domain name in Complainant's name, and Complainant paid for the registration and therefore the name should belong to Complainant.
Complainant’s grounds for relief are beyond the purview of the ICANN rules and should be addressed to a court rather than under the ICANN rules.
Complainant requests that the domain name be transferred from the Respondent to the Complainant.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The domain name is identical to or confusingly similar to the mark HOG CALL for which Complainant has applied for registration. Since Respondent filed the application for that mark on Complainant’s behalf, Respondent has conceded that Complainant has the right to that mark. The mark registration was applied for after the domain name was registered and Complainant has not proven any earlier use of the mark. Complainant has not proven that Respondent had no right to register the domain name.

Rights or Legitimate Interests

Respondent has spent years developing web sites with information concerning the University of Arkansas Razorbacks. His registration of the domain name hogcall.com is consistent with that business activity and was done before Complainant’s application to register the trademark. Complainant has not proven that Respondent has no rights or legitimate interests in the domain name.

Registration and Use in Bad Faith

Complainant’s position is that Respondent registered the domain name in his name rather than in Complainant’s name and this is evidence of registration and use in bad faith

Complainant apparently had no rights in the mark when the domain name was registered.

Given the truncated nature of UDRP proceedings and the inability of the parties to fully litigate allegations of breach of fiduciary duty, breach of contract and the original rightful ownership of the domain name, Complainant has not proven that the domain name has been registered and is being used in bad faith. If, because of the nature of the claims, Complainant believes that it is entitled to own the domain name it should pursue its claims in a forum (e.g., court) that is more appropriate for such claims. See Document Technologies, Inc. v. International Electronic Communications Inc., Case No. D2000-0270 (WIPO June 6, 2000); Inter Continental Hotels Corp. v. Khalid Ali Soussi, Case No. D2000-0252 (WIPO July 5, 2000).

Complainant has failed to prove this element.

DECISION

Since Complainant has not proven the necessary elements, Complainant’s request for transfer of the domain name hogcall.com is denied.

Judge Karl V. Fink (Ret).
Dated: September 1, 2000

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