WorldLII Home | Databases | WorldLII | Search | Feedback

Generic Top Level Domain Name (gTLD) Decisions

You are here:  WorldLII >> Databases >> Generic Top Level Domain Name (gTLD) Decisions >> 2004 >> [2004] GENDND 100

Database Search | Name Search | Recent Decisions | Noteup | LawCite | Help

Borderfree Ltd. v. Atlantic Management and Developments ltd. c/o Heidi Radford-Legg [2004] GENDND 100 (12 January 2004)


National Arbitration Forum

DECISION

Borderfree Ltd. v. Atlantic Management and Developments ltd. c/o Heidi Radford-Legg

Claim Number: FA0311000211961

PARTIES

Complainant is Borderfree Ltd., Toronto, ON, Canada (“Complainant”) represented by Steven L. Graff, of Aird & Berlis LLP, 181 Bay Street, Suite 1800, Toronto, ON, Canada M5J 2T9.  Respondent is Atlantic Management and Developments ltd c/o Heidi Radford-Legg (“Respondent”), 59 River Street, Boston, MA 02108.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <borderfree.com>, registered with Register.Com.

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

David A. Einhorn (Panel Chair), Anne M. Wallace and Robert A. Fashler as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 17, 2003; the Forum received a hard copy of the Complaint on November 18, 2003.

On November 17, 2003, Register.Com confirmed by e-mail to the Forum that the domain name <borderfree.com> 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 November 21, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 11, 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@borderfree.com by e-mail.

A timely Response was received and determined to be complete on December 9, 2003.

Complainant submitted an untimely Additional Submission on December 23, 2003.  The untimeliness of this submission is rendered as a moot issue in light of this Panel’s decision set forth herein below to dismiss the Complaint on procedural grounds.

On December 29, 2003, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed David A. Einhorn (Panel Chair), Anne M. Wallace and Robert A. Fashler as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A.            Complainant:

[a.]            Complainant was developed by a group of venture capitalists led by Mosaic Venture Partners and Brightspark Ventures, L.P. It was formerly known as “The Etail Factory Ltd.” and “Project Purple.”

[b.]            Beginning in August 1999, Complainant retained Cyberplex Interactive Media (“Cyberplex”), where Heidi Radford-Legg (“Radford-Legg”) was employed as an account director from July 14, 1998 to May 31, 2000, to assist in the development of an online interface and a new company name. Radford-Legg was one of the Cyberplex employees who worked on performing services for Complainant.

[c.]             The name “Borderfree” was suggested by Radford-Legg to replace Complainant’s former names.

[d.]            Radford-Legg was instructed to register the domain name at issue, <borderfree.com>, in the name and on behalf of the Complainant.

[e.]            Despite these instructions, Radford-Legg registered <borderfree.com> in her own name on November 9, 1999.

[f.]            Under the terms of Radford-Legg’s employment contract with Cyberplex, she was not entitled to ownership of intellectual property created during her employment with Cyberplex and relating to the business of Cyberplex. [We note that Complainant has also attached a copy of the Severance Agreement between Cyberplex and Radford-Legg that contains a mutual release and discharge clause.]

[g.]            Cyberplex acknowledges that all intellectual property developed during its engagement by the Complainant belongs to the latter. There was an express and/or implied understanding among the parties that Complainant would retain ownership of all concepts and ideas developed by Cyberplex or Radford-Legg while Cyberplex was engaged by the Complainant. Complainant has attached a copy of Radford-Legg’s employment agreement and a memo from Cyberplex in evidence of such implied understanding.

[h.]            The registration of <borderfree.com> was either in error or an attempt by Radford-Legg to obtain rights to which she is not entitled.

[i.]            Complainant has paid for the renewal of registration of the domain name and has used the website <borderfree.com>  to promote its services and conduct its business.

[j.]            Radford-Legg has made no efforts to use the impugned domain name.

[k.]            The facts that Radford-Legg has registered the domain name in her own name despite instructions to register it in the name of Complainant and that she has no independent use for the domain name, suggest that Radford-Legg intends to sell the domain name for a profit to Complainant.

[l.]            Radford-Legg’s intention to sell the domain name to Complainant is further confirmed by the fact that Radford-Legg wrote e-mails to Lorne Taylor, Director of Operations for the Complainant, in which she states that she is awaiting Complainant’s offer.

[m.]            Radford-Legg has changed the administrative contact for the impugned domain name to Respondent, which suggests that she may attempt to use the domain name.

[n.]            Complainant filed applications for registration of the marks BORDERFREE.COM and BORDERFREE with the Canadian Intellectual Property Office on January 5, 2000 and March 22, 2000 respectively. These marks were registered on October 11, 2001 and April 4, 2002 respectively.

B.             Respondent:

[a.]            Complainant has been using the domain name <borderfree.com> with the written consent of Radford-Legg.

[b.]            Radford-Legg conceived the idea of cross-border shopping, which forms the essence of <borderfree.com>, with her father and brother, outside the course of her employment. She discussed how to develop this business idea with Mosaic Venture Partners (“Mosaic”) and Brightspark. [Mosaic is also the venture capitalist behind Cyberplex, Radford-Legg’s employer.]

[c.]            Although her salary came from Cyberplex, Radford-Legg was employed by Etail Factory and was listed in all formal ways as an employee and founder of Etail Factory.

[d.]            Radford-Legg was promised and assured that she would receive adequate compensation in her capacity of initiator of the concept and founder of the company borderfree.com. This compensation, in the form of shares and share options, was not forthcoming and has not been given to date.

[e.]            Radford-Legg has paid for the renewal of the impugned domain name.

[f.]             Complainant was aware, at all times, of Radford-Legg’s ownership of <borderfree.com> and was silent since the time it was registered about four years ago.

C.            Complainant’s Additional Contentions:

[a.]            Complainant did not obtain written consent from Radford-Legg for use of the domain name. Radford-Legg gave access and password information to Complainant. Complainant learned of ownership of the domain name only during a due diligence enquiry by Canada Post Corporation.

[b.]            The decision to use the name “Borderfree” as a business tagline was made by those working on the development of the Etail Factory business, including Radford-Legg.

[c.]             Complainant owns several other ccTLD’s with the term “Borderfree”.

[d.]            Radford-Legg is retaining control over the domain name as a means of exacting compensation by way of shares or share options from Complainant.

FINDINGS AND DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the 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.

In this case, the Panel has decided not to consider the case on its merits, so we will not be considering these three elements.  We have outlined the evidence and submissions of the parties to demonstrate the complexity of the issues in this case.  Because of the number and complexity of the issues and the reasons which will follow, the Panel is of the view that this is not a dispute we should be deciding on its merits and that our decision should leave the domain name registration status quo.

Four distinct sets of alleged legal relationships are central to this dispute.  The first is the relationship of the former employee as assignor of the trademark and Respondent.  The second is an employer/employee relationship between the employee and Cyberplex, the employer. The third is a contractual relationship between Cyberplex, as supplier, and Complainant, as customer. The fourth is an alleged contractual relationship between the former employee and others with respect to the development of a business concept.

Complainant says that as a consequence of the interplay of those legal relationships, Respondent has no rights or legitimate interests in the domain name and is acting in bad faith. Respondent claims that a different legal relationship governs rights in the domain name.  Employee says that she originated a business plan and idea for an Internet business and related domain name outside the course of her employment agreement with Complainant.

Employee further claims that when the business plan was presented to Complainant, it was misappropriated from her without compensation. Complainant says that it is entitled to the domain name as a consequence of the legal obligations owed, first, by employee (and by Respondent as her successor) to Cyberplex and, second, by Cyberplex to Complainant. Specifically, Complainant argues that there was an implied understanding between it and Cyberplex that Complainant would retain ownership of all intellectual property which Cyberplex and its employee developed during employee's term of employment with Cyberplex, and that employee's selection of the domain name was accomplished in the course of her employment by Cyberplex. It is also noted that the record includes a severance agreement dated July 14, 2000, in which Cyberplex releases employee from "all claims related to or in any manner incidental to" her "employment with Cyberplex". This raises the additional issue of whether said Release bars the filing of an action in any form. It would be impossible for this Panel, with the sparse and conflicting statements before us, to resolve these issues without considerable inappropriate speculation. There are numerous evidentiary issues that could only be resolved by testing of evidence through full disclosure and cross-examination.

The narrow grounds on which a Panel is permitted to rule under the UDRP, in this case, would require the examination of several complex factual and legal issues.  Such predicate issues (for example, the interpretation of a contract, implied contract, and breach of fiduciary duty) may be best determined by a forum of broader jurisdiction.  Under Section 5 of the Policy, disputes outside of the narrow framework set out in Section 4 of the Policy “… shall be resolved through any court … available.”  We are not prepared to resolve these contractual or fiduciary duty issues since they are outside the framework of the UDRP.  See Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (dispute concerning employee’s registration of domain name in its own name and subsequent refusal to transfer it to employer raises issues of breach of contract and breach of fiduciary duty which are more appropriately decided in courts rather than before a UDRP panel).       

DECISION

The Complaint of Borderfree Ltd. with respect to the domain name <borderfree.com> is hereby dismissed.

David A. Einhorn, Panel Chair
Anne M. Wallace, Panelist

Robert A. Fashler, Panelist

Dated: January 12, 2004


WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/100.html