Barbritutor.com + 3 more domains

The timeline behind barbritutor.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 BarBri, Inc. v. Emily Marino Claim Number: FA1310001523915 PARTIES Complainant is BarBri, Inc. (“Complainant”), represented by Michael W. Dubner of Gardere Wynne Sewell LLP, Texas, USA. Respondent is Emily Marino (“Respondent”), New York, USA. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <barbritutor.com>, <barbritutorial.com>, <barbribarexamtutors.com>, and <barbribarexamtutor.com>, registered with Godaddy.Com, LLC. PANEL The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding. Terry F. Peppard as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electron-ically on October 10, 2013; the National Arbitration Forum received payment on October 10, 2013. On October 11, 2013, Godaddy.Com, LLC confirmed by e-mail addressed to the National Arbitration Forum that the <barbritutor.com>, <barbritutorial.com>, <barbribarexamtutors.com>, and <barbribarexamtutor.com> domain names are registered with Godaddy.Com, LLC and that Respondent is the current registrant of the names. Godaddy.Com, LLC has verified that Respondent is bound by the Godaddy.Com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). On October 14, 2013, the Forum served the Complaint and all Annexes, includ-ing a Written Notice of the Complaint, setting a deadline of November 14, 2013 by which Respondent could file a Response to the Complaint, via e-mail addres-sed to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@barbritutor.com, postmaster@barbritutorial.com, postmaster@barbribarexamtutors.com, and postmaster@barbribarexamtutor.com. Also on October 14, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts. A timely Response was received and determined to be complete on November 14, 2013. Each of the parties has also timely filed an Additional Submission. On November 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Not-ices, as defined in Rule 1 and Rule 2. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant In its Complaint and Additional Submission, Complainant alleges, among other things, as follows: Complainant uses the BAR/BRI mark to identify its bar exam preparation products and services. Complainant uses the similar BARBRI mark in connection with the marketing of its bar exam preparation products and services. The BARBRI mark has been used continuously in commerce since 1967, and BARBRI goods and services are promoted in all fifty of the United States. Complainant holds a registration for the BAR/BRI mark, on file with the United States Patent and Trademark Office ("USPTO") as Reg. No. 1,184,157, registered December 29, 1981. In 2006, Respondent registered the domain names <barbritutor.com> and <barbritutorial.com>, and, in 2010, Respondent registered the domain names <barbribarexamtutors.com> and <barbribarexamtutor.com>. Each of the domain names is confusingly similar to both the BARBRI and BAR/BRI marks. Respondent has not been licensed or otherwise authorized by Complainant to use the BARBRI or BAR/BRI marks in domain names. Respondent was an independent contractor of Complainant from 2006 through 2011, in which capacity Respondent provided lectures for Complainant’s bar examination preparation courses in exchange for monetary compensation. Respondent expressly agreed in a consulting agreement with Complainant that it would not use the BARBRI or BAR/BRI marks independently without Complain-ant’s prior written consent. Respondent also agreed to cease any use of the BARBRI and BAR/BRI marks upon the termination of its contract with Complainant. Although the contractual relationship between Complainant and Respondent has ended, Respondent now uses the domain names to market Respondent’s own competing MARINO BAR TUTORS business. Respondent has no rights to or legitimate interests in any of the domain names. Respondent’s use of the domain names disrupts Complainant’s business. Internet users are likely to be confused by Respondent’s use of the domain names as to the possibility of Complainant’s affiliation with Respondent’s com-peting business. Respondent has registered and uses the domain names in bad faith. B. Respondent In its Response and Additional Submission, Respondent asserts, among other things, the following: Respondent operates a legitimate bar examination preparation business under its MARINO BAR TUTORS mark. The disputed domain names are now used to facilitate this business. Complainant has waived any right it might have had to pursue its claims in this proceeding because, although it knew of them from the beginning, it did not object to Respondent’s registration and use of the domain names. The contested domain names cannot be deemed to be confusingly similar to Complainant’s marks because Complainant only began offering bar examination preparation tutoring services in 2012. A business agreement entered between Complainant and Respondent in 2008 made MARINO BAR TUTORS services Complainant’s official tutor service. Under that agreement, Complainant referred consumers to Respondent via its domain names for many years, thus demonstrating Complainant’s agreement to Respondent’s use of the domain names. Respondent registered the domain names with Complainant’s consent in order to pursue the mutual business objectives of both Complainant and Respondent. There is thus no basis for a finding of bad faith with regard to the registration or use of the domain names. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Pol-icy (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.” From the Panel’s review of the submissions of the parties, it is clear that this is not a dispute within the contemplation of the Policy, which is intended solely to address instances of “cyber-squatting,” defined as the abusive registration and use of Internet domain names. Rather, this is a dispute over the terms and per-formance of a business arrangement, which should be confided to the jurisdiction of the appropriate local or national court. See, for example, Nintendo of America Inc. v. Jones, D2000-0998 (WIPO November 17, 2000): It is not the function of an ICANN Administrative Panel to resolve all issues concerning the use of intellectual property rights. Matters be-yond the narrow purview of the Policy are for the courts of approp-riate jurisdictions. Further see Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007): [T]he present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint. Finally, see Schneider Electronics GmbH v. Schneider UK Ltd., D2006-1039 (WIPO October 21, 2006): Prior panelists have held that disputes which turn on contractual interpretations will fall outside the scope of the Policy (see Private Media Group v. Anton Enterprises Inc. d/b/a Private USA, WIPO Case No. D2002-0692 and see S.L.I. Société des Lubrifiants IPONE v. CLIX International, L.L.C., Carbon Development, Chad Boulton, WIPO Case No. D2004-0334). In essence, this matter can be most properly characterized as a dispute between parties formerly joined in a long-standing com-mercial relationship, which was governed by a series of commercial agreements. The termination of that relationship, and the conse-quences of that termination, raise contested issues of fact and the construction of contractual provisions, which go beyond the issue of cybersquatting, which is the problem the Policy was designed to address. ***** The Panel is aware that this dispute may now be brought before the appropriate court, and believes that it is prudent to leave the decis-ion on its merits to such a decision-maker, with the benefit of a full evidentiary record and the ability to construe and interpret the con-tractual terms which will ultimately govern this dispute. DECISION For the reasons indicated, it is Ordered that the Complaint herein be, and it is hereby, DISMISSED without prejudice to either party. Terry F. Peppard, Panelist Dated: December 3, 2013 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

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