DECISION

Interfuse Technology Corporation v. D. Goodman

Claim Number: FA0406000286431

PARTIES

Complainant is Interfuse Technology Corporation (“Complainant”), represented by Giselle Fahimian, of Bingham McCutchen LLP, 3 Embarcadero Center, Suite 1800, San Francisco, CA 94111.  Respondent is D. Goodman (“Respondent”), represented by Michael C. Scher, of Hoffman, Larin & Agnetti, P.A., 909 North Miami Beach Blvd., Suite 201, Miami, FL 33162.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <interfusetechnology.com>, <office-lock.com>, <officelock.com>, <officelock.org> and <officelock.net>, registered with Blueberry Hill Comm., Inc. d/b/a 4Domains.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.

Judge Irving H. Perluss (Retired) is the Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 14, 2004; the Forum received a hard copy of the Complaint on June 17, 2004.

On June 15, 2004, Blueberry Hill Comm., Inc. d/b/a 4Domains.com confirmed by e-mail to the Forum that the domain names <interfusetechnology.com>, <office-lock.com>, <officelock.com>, <officelock.org> and < officelock.net> are registered with Blueberry Hill Comm., Inc. d/b/a 4Domains.com and that Respondent is the current registrant of the name.  Blueberry Hill Comm., Inc. d/b/a 4Domains.com has verified that Respondent is bound by the Blueberry Hill Comm., Inc. d/b/a 4Domains.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 June 23, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 13, 2004 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@interfusetechnology.com, postmaster@office-lock.com, postmaster@officelock.com,postmaster@officelock.organd postmaster@officelock.net by e-mail.

A timely Response was received and determined to be complete on July 13, 2004.

On July 24, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

            1.         Complainant asserts it has established rights in the marks at issue by registration with the United States Patent and Trademark Office, and by common law.

            2.         The disputed domain names registered by Respondent are identical to Complainant’s marks.

3.         Respondent does not have a legitimate interest or rights in the disputed domain names.

            4.         Respondent registered and is using the disputed domain names in bad faith.  This is because on August 15, 2002, Respondent resigned as President of Complainant and on May 5, 2003, he entered into a Settlement Agreement terminating his employment and agreed that in addition to severing Respondent’s employment with Interfuse, all intellectual property rights, other than one specifically excluded patent, would be assigned by Respondent to Complainant for fair consideration.

            5.         The parties understood that domain names were included in the Agreement.

            6.         Respondent registered the domain names in bad faith.  Respondent registered the domain names as Complainant’s agent, and was obligated to register them in Complainant’s name alone, or in a manner that ensured that Interfuse was the clear owner.  He did not.

            7.         Although Respondent has no legitimate business purpose for the domain names himself, Respondent registered and has maintained registration of the domain names in his own name, wreaking havoc with Complainant and its business.

B. Respondent

            1.         Respondent has replied to Complainant’s charges with flat denials or denials based on lack of knowledge of the vital issues here involved.  No evidentiary support whatsoever has been provided.

            2.         Affirmatively, Respondent asserts that the disputed domain names are not intellectual property as set forth in the Settlement Agreement.

            3.         Affirmatively, Respondent also asserts an affirmative defense that Complainant’s claim is barred by the doctrine of “unclean hands” as prior to commencing this action, Complainant has committed illegal acts in order to harass and/or intimidate Respondent into acquiescing to Complainant’s improper demands.  That is, amongst other things, Complainant fraudulently signed Respondent’s signature with respect to documents pertaining to personal credit cards (unbeknownst to Respondent) and such fraud caused (or was one of the significant reasons) that Respondent filed personal bankruptcy, thereby instituting irreparable harm onto Respondent.

FINDINGS & DISCUSSION

            This matter turns on the meaning of language in an employer-employee settlement agreement.  With one irrelevant specific exception, Respondent agrees to “. . . assign and transfer to Complainant . . . his entire right, title and interest, including moral rights, in and to any and all inventions, discoveries, improvements, innovations, trade secrets, new ideas or concepts, writings, drawings, or other artistic works or the copy rights thereto, made, developed or otherwise created by Goodman [Respondent] or jointly with others prior to the Effective Date, relating to the business, products, publications or process of the Company [Complainant], together with all rights to all intellectual property rights which may be granted thereon including but not limited to patents, copyrights, and trademarks.”  Paragraph 3.10(a).

            The question presented, accordingly, is a problem of contractual interpretation.

            And, this is not all.  The pot boils over with charges and counter-charges of fraud, misconduct, and breach of fiduciary duties.

            Accordingly, this controversy cannot and should not be resolved by a desk arbitration.  It calls for court resolution with the opportunity for discovery, live testimony and cross-examination.  In EAuto, L.L.C. v. Triple S. Auto Parts, D2000-0047 (WIPO Mar. 24, 2000), the Panelist observed:

[T]he Panel is cognizant of the fact that, by its true nature, the ICANN Rules do not provide for discovery or, absent extraordinary circumstances, live testimony at which credibility determinations can be made.  Although the paper record lacks any showing of bad faith, it is possible that a nefarious motive could be proven through discovery, where the opportunity to review documents and cross examine witnesses provides greater opportunities for a searing search for the truth.  The Panel does not mean to imply that it suspects the presence or absence of any such hidden bad faith in this case, but rather, notes that, where the bad faith cannot be shown on demonstrable facts in the records, complainants should consider whether a court, with the prospect of discovery, would be a more appropriate forum for cybersquatting claims.

            Normally, contract interpretation is a question of law for a court.  See, for example, Parsons v. Bristol Development Co. (1965) 62 Cal.2d 861, 865-866, 44 Cal.Rptr. 767.  In California and generally, “[W]here the contract must be interpreted by conflicting extrinsic evidence, and where the interpretation depends on the resolution of such evidence, then it becomes a question for the jury:  ‘When parol evidence is introduced in aid of the interpretation of uncertain or doubtful language in the contract, the question of the meaning or intent of the parties is one of fact.  If the meaning or intent is to be determined one way according to one view of the facts and another way according to another view, the determination of the disputed matter must be left to the jury.’”  (See Horsemen’s Benevolent & Protective Ass’n v. Valley Racing Ass’n (1992) 4 Cal.App.4^th 1538, 1560, 6 Cal.Rptr.2d 698, 32 Cal.Rtpr.2d, 144, internal citations omitted; see also California Jury Instructions, Judicial Counsel of California, Civil Jury Instructions, 7/24 edition, 101.)

            Obviously, the determination here required is beyond the keen of a Panelist in a domain name dispute governed by the narrow rules of the Policy.

            To put the dispute at rest, in Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001), a closely analogous matter, the Panel said:

As the above factual recitation should make clear, this is not a garden-variety cybersquatting case.  In fact, it is not a cybersquatting case at all.  Rather, this appears to be a breach of contract and breach of fiduciary duty dispute between former partners.  The only arguable reason that Complainant is seeking relief in this forum is that the property at issue is a domain name.

This Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names.  Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting.  To invoke the Policy, a Complainant must show that the domain name at issue is identical or confusingly similar to a mark in which the Complainant has rights, that the Respondent lacks rights or a legitimate interest in the domain name, and that the Respondent registered and used the name in bad faith.  Policy ¶ 4(a).  To attempt to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy. Latent Tech. Group, Inc. v. Fritchie,  FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (dispute concerning employee’s registration of domain name in his own name and subsequent refusal to transfer it to employer raised issues of breach of contract and breach of fiduciary duty that are more appropriately decided in court, not before a UDRP panel).

This alone is enough to justify denial of the Complaint.

            In view of the complexity of this matter, and further, in all fairness to the parties procedurally and substantively, the determinations required should be made in a judicial setting.

            In fact, it appears that such a resolution was contemplated by the parties because paragraph 3.10 (b) of the Agreement provides in part:

In the event either Party breaches or threatens to breach any of the covenants expressed herein, the damages to the non-breaching Party will be great and irreparable; therefore, the non-breaching Party may apply to a court of competent jurisdiction for injunctive relief in either law or equity.

DECISION

Under the circumstances here presented and under the ICANN Policy, the Panel concludes that relief here must be DENIED, leaving the dispute to judicial resolution.

JUDGE IRVING H. PERLUSS (Retired), Panelist
Dated: 

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