DECISION

Group Intelligence, Inc. v. Michael Mande d/b/a websphere.org

Claim Number: FA0308000190510

PARTIES

Complainant is Group Intelligence, Inc., Upper Saddle River, NJ (“Complainant”).  Respondent is Michael Mande d/b/a websphere.org, Hastings-On-Hudson, NY (“Respondent”) represented by James T. Meyer, of Meyer & Spenser LLP.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <websphere.org>, registered with Register.com.

PANEL

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

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 23, 2003; the Forum received a hard copy of the Complaint on August 27, 2003.

On August 25, 2003, Register.com confirmed by e-mail to the Forum that the domain name <websphere.org> is registered with Register.com and that the Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On September 5, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 25, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@websphere.org by e-mail.

A timely Response was received and determined to be complete on September 24, 2003.

On October 13, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. H. Curtis Meanor as Panelist.

RELIEF SOUGHT

Complainant requests transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant asserts:

IBM owns the trademark to WebSphere.  IBM issued a license to Group Intelligence (GI) to use the trademark WebSphere within GI’s domain name (websphere.org (c/o Michael Mande)) for the GI service provided to IBM under a contract.    It is expected that the Service Mark websphere.org (c/o Michael Mande) will be used in subsequent years of contract with IBM by Group Intelligence Inc.

On June, 2000, Tangent International registered the URL websphere.org (c/o Michael Mande).  [. . .]  Mr. Mande (c/o websphere.org), an employee of Tangent International, registered the URL on behalf of the company, and was assigned as the main contact for technical and administrative purposes; the corporate address for Tangent International (up until the date business was disrupted by 9/11) was defined as 30 Broad Street, NYC.  Tangent International was a company owned also by the majority owner of GI, and was formed subsequent to the registration of the URL websphere.org (c/o Michael Mande), with the intent of transferring the associated business into this new company.

When GI was formed it began the process of finalizing an agreement with IBM to establish and manage a World-Wide WebSphere User Group On-line Community.  The Agreement between GI and IBM became effective in September 2001.  This Agreement included a Trademark License Agreement between GI and IBM for use of IBM’s trademark WebSphere within the URL websphere.org (c/o Michael Mande). [. . .]  On December 31, 2000 Tangent International transferred the rights to the websphere.org (c/o Michael Mande) URL to GI.  The Asset Transfer Agreement is available upon request.   GI is currently (and has been since September 2001) operating the on-line community for and on behalf of the IBM WebSphere brand, for the benefit of its user groups, their members, IBM employees and IBM Business Partners.

On or about July 22, 2002 Mr. Mande (c/o websphere.org), who was then under contract with GI, acted on his own accord to modify the URL registration with Register.com to remove the name Tangent International and include only his personal information as the sole contact [. . . .]  GI’s numerous email [. . .] requests to Mr. Mande (c/o websphere.org), between July 2002 and March 2003 (when Mr. Mande (c/o websphere.org) terminated his contract with GI) , to change the registration from his own name to GI were verbally agreed to but not executed by Mr. Mande (c/o websphere.org).

As mentioned above [. . .], Mr. Mande (c/o websphere.org) was not authorized by GI to modify the contact information on the registration. In February 2003, Mr. Mande (c/o websphere.org) notified GI he was terminating his consulting agreement with GI.  Although GI and Mr. Mande (c/o websphere.org) had agreed to share proceeds from any sale of the websphere.org (c/o Michael Mande) based business unit on a 70% GI and 30% Mr. Mande (c/o websphere.org) share, this did not include any transfer of registration rights to Mr. Mande (c/o websphere.org) of the URL.  [. . .]

Mr. Mande (c/o websphere.org) was at the center of activity surrounding the aforementioned IBM contract and knew GI had (i) a services contract with considerable current and probably future monetary value (ii) a valuable relationship with IBM that extended beyond the aforementioned services contract, and would not want the GI services to the WebSphere brand interfered with [. . . .]  He also knew the founder of GI had sold a prior business – a division of Tangent International - to IBM for considerable value.  Importantly, he had been urging the owners of GI for over one year to sell the Group Intelligence ‘business unit’ operating websphere.org (c/o Michael Mande) services.  He also unsuccessfully tried to use inside influence to get both IBM and business partners interested in buying that business unit, independent of GI wishes.

He used this above knowledge, and trust afforded him by the majority owners of GI (for whom he had worked for much of 20 years) and management to create a personally beneficial situation to force a sale of the business unit.  Had this occurred while Mr. Mande (c/o websphere.org) was under contract to GI, it would have enabled him to share in the sale value.  Therefore, Mr. Mande’s (c/o websphere.org) bad faith modification of the websphere.org (c/o Michael Mande) registration was to ‘ransom’ the company to influence a sale and benefit his own personal situation - regardless of the condition or desires of the true owner, GI, and its client IBM.

When this action didn’t achieve his goal, Mr. Mande (c/o websphere.org) resigned from his contract and continued the ‘hostaging’ of the URL, for which he had engineered to have the sole administrative access to the domain registration. Preventing administrative access to the domain registration, and it’s [sic] associated business, causes major issues for GI and IBM:

1. It restricts GI’s business and prevents value creation within the business.  As example, currently GI is prevented from performing certain necessary system modifications by moving the service to a more secure hosting provider with enhanced system and service capabilities

2. It puts at risk access by a growing base of over 7,000 IBM customers, employees and business partners who view the websphere.org (c/o Michael Mande) site as the central hub of information regarding the WebSphere business and user group activities, and thus severely impacts GI’s ability to fulfill its obligations under its Agreement with IBM.

GI is currently attempting to resolve a dispute over Mr. Mande’s (c/o websphere.org) return of GI and IBM assets (including hardware, software and documents), and payment of certain monies.  Mr. Mande’s (c/o websphere.org) bad-faith actions were designed and continue to disrupt GI’s current and future business in order to unduly influence the outcome of this dispute.  GI views the URL and above referenced dispute as separate issues, which must be treated so. 

At this point, Mr. Mande (c/o websphere.org) could inflict irreparable harm upon GI’s on-going business with IBM and its fiduciary responsibilities.

We consider Mr. Mande (c/o websphere.org) as having no rights or legitimate interests in respect of the name websphere.org  (c/o Michael Mande).

Complaint at 2-5.

B. Respondent asserts:

Complainant admits “Mr. Mande (c/o websphere.org), an employee of Tangent International, registered the URL on behalf of the company…” [. . .]  Complainant further states “Tangent International was a company also owned by the majority owner of GI, and was formed subsequent to the registration of the URL websphere.org (c/o Michael Mande), with the intent of transferring the associated business to this new company.”

Complainant further contends that “On December 31, 2000, Tangent International transferred the rights to the websphere.org (c/o Michael Mande) URL to GI.”  Of course, Complainant fails to provide this Panel with any proof whatsoever of this purported asset transfer.  Complainant also fails to advise this Panel that, when Tangent International went out of business, it did so owing hundreds of thousands of dollars in liabilities, including more than $40,000.00 in wages to Respondent Michael Mande which has yet to be paid.  [. . .]  As the admitted majority owner of both Tangent International, Inc. and Group Intelligence, Inc. Complainant’s CEO, Peter Watts, apparently expects this Panel to believe that he was legally able to “loot” the assets of one of his corporations in favor of the other without any regard to existing liabilities.  Obviously, there was a deliberate attempt on the part of Complainant to keep any fraudulent transfer documents from this Panel.  This complete lack of proof on this element of the Complainant’s cause of action is fatal to its case.

As it concealed purported evidence relating to the first element of its cause of action, Complainant next attempts to conceal a written confirmation of a verbal agreement between it and Respondent Michael Mande by which Complainant explicitly provided Respondent Michael Mande with a 30% interest in www.websphere.org.  In particular, the Agreement states:

“Ownership position in the ‘Business Unit’, comprising the www/websphere.org URL and related operations.  This is to confirm our agreement of 1/1/1 that a 25% ownership interest in the Business Unit (the ‘Interest’) has been allocated to you for your efforts in developing the service to this point.  This ownership position will be realized upon a sale or merger, and will be valued by prevailing independent valuatins.  The interest will be increased to 30% in aggregate once IBM execute [sic] phase 2 of the current contract in March, 2002.”

[. . .]  Complainant simply cannot contend that Respondent Michael Mande does not have a legitimate interest in the URL at issue.  Failure to meet the second element of its cause of action is once again fatal to its claim.

There is no dispute that the URL  websphere.org was registered by Respondent when Respondent was an employee of Tangent International.  Respondent was the initial contact person and, after Tangent International ceased doing business, Respondent paid to continue to maintain the URL address.  Respondent has always recognized Tangent International’s interest in the domain name (which would extend to Group Intelligence if such asset was legally transferred from one entity to the other).

Group Intelligence is receiving hundreds of thousands of dollars from IBM through licensing agreement with respect to the www.websphere.org URL.  Respondent is receiving nothing due to Complainant’s breach of its employment contract with Respondent.

Complainant previously admitted and now attempts to conceal from this Panel Respondent Michael Mande’s 30% “Ownership position in the ‘Business Unit’, comprising the www.websphere.org URL and related operations.”  [. . .]

Complainant’s contention is an insult to the intelligence of this Panel.  A cursory review of the written admissions made by Complainant clearly shows that it is the Complainant that is acting in bad faith by depriving Respondent Michael of not only back wages and benefits owed to him, but of current and future earnings owed to him as a result of his 30% Ownership Position.

The Domain Name www.websphere.org is in fact being used in bad faith; however, the bad faith is on the part of Complainant.  Respondent has taken no actions to jeopardize the relationship with IBM.  Respondent has been trying to resolve this matter with Complainant for months to no avail.  As will be set forth in greater detail below, Respondent has been constrained to commence a lawsuit due to the bad faith on the part of Complainant to meet its obligations (and the obligations of its purported predecessor by merger, Tangent International).

Complainant cannot even come close to meeting the Third required element of its cause of action.  The Uniform Domain Name Dispute Resolution Policy requires Complainant to meet all three elements of its cause of action.  The evidence before this panel indicates that Complainant cannot even meet one of the required elements.  Accordingly, the Complaint should be summarily dismissed.

On September 23, 2003, Respondent Michael Mande filed a Summons and Complaint in Supreme Court of the State of New York, County of Westchester, against Petitioner Group Intelligence, Inc., Tangent International and Peter Watts, the sole owner of both entities.

Michael Mande has alleged damages in excess of $160,000 for violations of the New York State Labor Law, breach of contract, unpaid benefits and commissions and seeks declaratory relief pertaining to the ownership interest of the URL www.websphere.org.  [. . .]

Michael Mande was solely responsible for initiating and maintaining the relationship with IBM through the www.websphere.org URL.  As this panel will note from a cursory review of the confirmation of his employment agreement with Complainant [. . .], Michael Mande was to receive a base salary, commissions, an ownership interest in websphere.org and related operations, Warrants in Complainant Group Intelligence, Inc. Stock Options and Medical Benefits.  Complainant Group Intelligence, Inc. has breached each and every portion of its agreement with Michael Mande.

Unbelievably, Group Intelligence now has the temerity to seek equitable relief from this Panel and asks this Panel to deprive Michael Mande of his contractual rights.  This panel should take no such action.  While this Panel has authority and jurisdiction to render determinations with respect to the URL in question, it does not have jurisdiction to decide on the other matters in dispute between the parties such as violations of the labor law and other contractual matters.

Principles of equity and justice dictate that all disputes between the parties beheard in one forum.  It would be unfair for this Panel to decide on one issue in dispute between the parties while it cannot legally review the other issues.  Mr. Mande seeks nothing from this Panel other than to maintain the status quo until such time as a Court with jurisdiction over all matters in dispute can resolve all the issues between the parties.  A balancing of the equities in the matter weights in favor of maintaining the status quo.  There would be no damages to Complainant in maintaining the status quo inasmuch as Complainant is the only party receiving money through the use of the URL.

Response at 2-5.

FINDINGS

The contentions of the parties have been set forth at length in order to demonstrate that the issues between them are multiple and complex.  In the Five Count Complaint Mr. Mande has filed in the Supreme Court of the State of New York, County of Westchester, among other things he claims an interest in the domain name <websphere.org> and a thirty (30%) percent interest in the business unit that utilizes that domain name under license from IBM.  It is apparent from the contents of the Complaint filed in the Supreme Court of New York and the allegations of the parties in the present proceeding that the dispute between them is complex and multiple and that the issues including the allegations of Mr. Mande’s interest in the domain name in dispute depends upon an examination of witnesses and issues of credibility which are not appropriate to be decided upon a solely documentary record.

DECISION

Rule 18 (a) of the Rules for Uniform Domain Name Dispute Resolution Policy permits a panel in its discretion to defer issues concerning the rights to a domain name to pending litigation.  Since the issues between the parties are presently involved in a legal proceeding in the Supreme Court of New York and since the questions concerning Mr. Mande’s interest in the domain name and the business unit which utilizes it involve questions of credibility, it is inappropriate to resolve those issues upon a documentary record.  In addition, a resolution of the conflict between the parties as to <websphere.org> in this proceeding might well complicate and adversely affect the judicial process in the pending New York litigation between the parties.

Under these circumstances and pursuant to Rule 18 (a) this panel will defer to the Supreme Court of New York and the present dispute is hereby dismissed without prejudice.

Dated: October 27, 2003

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