Sludgehammer.com, Piranaabg.com

The timeline behind sludgehammer.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Sludgehammer Group, Ltd. v. Gary McClernan Claim Number: FA0705000977484 PARTIES Complainant is Sludgehammer Group, Ltd. (“Complainant”), represented by Donald J. Molosky, of Molosky & Co., 2001 Harbor-Petoskey Road, Petoskey, MI 49770. Respondent is Gary McClernan (“Respondent”), P.O. Box 1126, Kenwood, CA 95452-1126. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <sludgehammer.com> and <piranaabg.com>, registered with Namesecure.com. PANEL The undersigned 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 Panelist in this proceeding. Mark McCormick as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on May 4, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 8, 2007. On May 4, 2007, Namesecure.com confirmed by e-mail to the National Arbitration Forum that the <sludgehammer.com> and <piranaabg.com> domain names are registered with Namesecure.com and that the Respondent is the current registrant of the names. Namesecure.com has verified that Respondent is bound by the Namesecure.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 May 14, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 4, 2007 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@sludgehammer.com and postmaster@piranaabg.com by e-mail. A Response was received in electronic but not hard copy on June 4, 2007. Because the National Arbitration Forum has not received the Response in hard copy format, it has determined the Response to be deficient per Supplemental Rule 5(a). Complainant filed an Additional Submission on June 11, 2007. Respondent filed an Additional Submission in reply on June 15, 2007. On June 11, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant was formerly known as PIRANA ABG, INC. Respondent was one of seven founding shareholders and was also a director and CFO of the corporation. Complainant requested that Respondent register the <piranaabg.com> domain name on Complainant’s behalf. Respondent in September 2004 registered the domain name in his own name. Complainant started using the PIRANA ABG trademark in connection with sales of its wastewater treatment products in November 2004. Complainant did not discover Respondent had done this until after Respondent was removed from the company in September 2006. In response to an April 20, 2007 email from Complainant, Respondent locked out Complainant’s DNS server from the domain name. Complainant in October 2005 selected the SLUDGEHAMMER trademark for use in selling its goods and started using the trademark in February 2006. In November 2005, Complainant made an application with the patent office to register the trademark. The application is pending. Complainant discovered that the <sludgehammer.com> domain name was already registered and asked Respondent to attempt to purchase it for Complainant. Respondent did so in August 2006 but registered it in his own name, a fact Complainant didn’t discover until after Respondent’s termination. Respondent has refused to transfer the domain name unless he is paid additional severance. Complainant contends the domain names are confusingly similar to its PIRANA ABG and SLUDGEHAMMER marks and that Respondent is not using them in a bona fide offering of goods or services. Complainant asserts that Respondent registered and is using the domain names in bad faith. B. Respondent Respondent admits that the domain names incorporate what Complainant asserts as trademarks. He asserts Complainant has never made application for trademark of the PIRANA ABG, INC. name and that the S SLUDGEHAMMER application was made by Daniel Wickham, an individual. Respondent contends he registered the <piranaabg.com> domain name while he was a stockholder in a California corporation of the same name as the later organized Michigan corporation. He said he allowed the Michigan corporation to use the domain name in exchange for his participation in the corporation as a stockholder. Respondent says he had an interest in the <sludgehammer.com> domain name as a stockholder of the Michigan corporation. He denies he was an employee. He contends he purchased the <sludgehammer.com> domain name at auction on August 25, 2006 for $721. He contends he acquired the <piranaabg.com> domain in good faith to assist the California corporation to sell Pirana products. He contends he also acquired the <sludgehammer.com> domain name in good faith and worked for two years selling Pirana products for the Michigan corporation, which were later rebranded as Sludgehammer products. Respondent said Complainant terminated his ownership of stock in the Michigan corporation on January 17, 2007 and paid him one dollar for it. He accuses Complainant of fraud and breach of fiduciary duty. He contends he won’t willingly give up a domain name he paid $721 for when he got only one dollar for his stock. He accuses Complainant of bad faith and of reverse domain name hijacking. C. Additional Submissions Complainant filed an Additional Submission asserting the California corporation never became active because the owners determined to start the corporation in Michigan instead. It points to the agreement among the individuals that established the Michigan corporation, which identifies Respondent as a stockholder, director and CFO. Complainant also contends Daniel Wickham acted on behalf of Complainant when he applied for the S SLUDGEHAMMER trademark. Complainant denies that Respondent ever had authority to register and maintain the <piranaabg.com> and <sludgehammer.com> domain names in his own name. Complainant also supplied a copy of the agenda notice for the meeting of the PIRANA ABG, INC. board meeting setting out the misconduct for which Respondent’s relationship with the Michigan corporation was terminated. Respondent was forced to resign. Respondent in his Additional Submission contends he had a legitimate interest in the <piranaabg.com> domain name because he has sold Pirana products since December 2003. He contends he registered the domain name to assist himself and others to sell Pirana products cooperatively. He contends he has a legitimate interest in the <sludgehammer.com> domain name because he was selling Sludgehammer products, when the Pirana products were rebranded in September 2005. FINDINGS Respondent’s Response was deficient because it was not accompanied by a hard copy. The Panel does not believe this created prejudice and thus declines to reject the Response on that ground. It is clear that Respondent registered the domain name <piranaabg.com> before either the California or Michigan corporations were formed. Complainant does not attack Respondent’s right to do so but contends he was acting on behalf of the founders of the corporations later formed and had a fiduciary responsibility to the corporations when they were formed, asserting the Michigan corporation accordingly was the true owner of the <piranaabg.com> domain name. Complainant also contends Respondent acquired the <sludgehammer.com> domain name as an agent and fiduciary of the Michigan corporation which, accordingly, was the true owner of that domain name. DISCUSSION The Panel finds that there is no evidence of abusive registration of the domain names. The registration of the <piranaabg.com> domain name was done by agreement of the founders of the subsequently formed corporations. The <sludgehammer.com> domain name was purchased by Respondent at the request of Complainant. The dispute arises over Respondent’s refusal to transfer these domain names to Complainant as a result of the termination of his relationship with Complainant. While Complainant has presented evidence supporting a breach of fiduciary duty or contract claim against Respondent, this evidence does not present a case within the scope of the Uniform Domain Name Resolution Police (UDRP). Whatever a trier of fact may find as to the merits of Complainant’s rights in the domain names, those merits do not involve a determination that Respondent was guilty of abusive or bad faith registration of the domain names. The merits will require a determination of the relative rights of the parties in the domain names at the time the parties parted company. This is not a cybersquatting case. When an individual registers a domain name on behalf of another party and then subsequently refuses to relinquish control, the cause of action is for breach of contract or breach of fiduciary duty and is outside the scope of UDRP Policy. See Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Jan. 2, 2007). This case must be dismissed on this jurisdictional ground. DECISION Because this case is outside the scope of the UDRP Policy, it is hereby dismissed without prejudice to Complainant’s right to pursue relief in a forum having jurisdiction. Mark McCormick, Panelist Dated: June 25, 2007 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.