Opinion
No. CV 09 4009698
November 25, 2009
MEMORANDUM OF DECISION
Procedural Background
This vigorously contested domain name dispute came to this court by writ, summons and complaint dated June 12, 2009, with an application for prejudgment remedy. The matter was assigned for hearing in this court at New London on October 22, 2009 when the parties appeared and were represented by counsel. A Stipulation of the Parties dated October 22, 2009, was prepared and filed, setting forth certain stipulations regarding the facts. It was agreed that the matter would proceed both on the application and as a trial on the merits, with the defendant providing an oral general denial of the allegations of the complaint (subject to the contents of a Stipulation of the Parties). A hearing was held at which additional evidence was provided.
Briefs were scheduled to be filed with the arguments and claims of law of the parties on November 16, 2009.
Finding of Facts
From the stipulation of the parties and the evidence at the hearing, including reasonable and logical inferences from the same, and taking into account the court's evaluation of the credibility of the witnesses, the following facts are found.
The Stipulation
1. At all times discussed herein, Guy Flately has been the owner of Flat's Tattooing, Inc.
2. On October 1, 2000, Dawn Witham requested the Domain Name, flatstattooing.com. The request identified "flatstattooing" as Registrant and Dawn Whitham as both the Administrative and Technical Contact.
3. On October 3, 2000, confirmation of the registration for flatstattooing.com was sent to Dawn Witham at dwitham@ctol.com.
4. The website flatstattooing.com was used to advertise the Artist and Business at Flat's Tattooing from its initial registration until March 8, 2009, when Dawn Witham and others left Flat's Tattooing and began working at a new business, 12 Tattoos.
5. After that date, the website was used to advertise for 12 Tattoos.
6. The website was also used, briefly, to advertise that Dawn Witham was no longer at Flat's Tattooing.
7. The website later included a link to Flat's Tattooing among other businesses.
8. Subsequent to October 1, 2000, the Registrant was changed by Dawn Witham. The website currently lists the Registrant as Dawn Witham.
9. On March 13, 2009, Dawn Witham made a written offer to Guy Flatley offering to sell him the website.
10. Dawn Witham did not receive either a W-2 or 1099 from Flat's Tattooing for calendar year 2000.
Flat's Tattooing, Inc. (hereafter Flat's), the business owned and conducted by Guy Flatley, at all times relevant to this case, consisted of the operation of a tattooing parlor at which members of the public were offered and received tattoos from several artists, depending upon the customer's choice. "Flats" was a nickname of Guy Flatley for many years. The business had been in operation in the New London County area for about 30 years at the time of trial. The business had been advertised over that period using the name Flat's Tattooing in various mediums and was well known among those using tattooing services in the area.
The defendant, Dawn Whitham, started her connection with Flat's in 1999. There was some controversy during the trial as to the status of her relationship to the corporation, but the credible evidence established that she was an employee from 1999 to March 2009. The defendant applied to the Connecticut Department of Labor for unemployment compensation after her departure alleging that she had been working at Flat's Tattooing, Inc. for 10 years at that time. At the beginning she had a status called "apprentice." Beginning in the year 2001 the defendant began receiving a regular pay check with deductions for which she was given a W-2 form at the end of each year until her departure in March 2009. Her claim for unemployment compensation was denied by the Department of Labor in 2009, for reasons which do not appear in the evidence.
The domain name in dispute in this case is www.flatstattooing.com. This is also variously referred to by the parties as a "web site." For the purposes of this analysis it is more appropriate to separate the domain name itself from the web pages which are found on the site. See, Beh, Applying the Doctrine of Work for Hire and Joint Works to Website Development, 25 Touro L. Rev. 943, 2009, at 965-67.
The domain name originated by a registration initiated by the defendant as indicated in the Stipulation in October 2000. The registration, done through Network Solutions, indicated that the "registrant" was "flatstattooing." At the same time the defendant established herself as the "administrative contact" and the "Technical contact" which effectively put her in the position of having control over the pages to be located at the web address "flatstattooing.com." Subsequently in 2009, after her termination of employment and without the knowledge or authorization of her former employer, the defendant had the "registrant" changed into her own name.
There was no written contract between the parties concerning the creation, ownership or maintenance of either the domain name or the web pages. The web site using this domain name was one of the main forms of advertising for the business of Flat's from its inception in the year 2000 until March 2009 when the defendant altered the web pages to advertise tattoo artists who had formerly been with Flat's but had left to work elsewhere in New London County. The alteration of the web pages at the domain name has caused unspecified financial damage to the business of Flat's for which there is no adequate remedy at law. Although the web pages change from time to time, the evidence established that when one goes to the web address "flatstattooing.com" there is at best confusion and at worst deception as to where a potential customer would find the original business of Flat's. (Plaintiff's Exhibit 8, April 2009.) The continued appropriation of the domain name by the defendant has and in the future will cause irreparable damages to Flat's by diverting potential customers, (customers who start out looking on the internet for Flat's), to other tattoo shops (one of which employs the defendant).
As part of her employment with the plaintiff back in 2000 the defendant also designed the content of the web pages using, among other things, photographs of the work by the artists employed at Flat's. From the time of its creation the defendant was paid monthly by Flat's for the design and updating of the web pages and was reimbursed for her expenses. In addition, she occasionally received payments from the individual artists who worked at Flat's to add new material to their repertoire. From the time of her employment the maintenance of the web pages, which included putting new photographs and other information on the site, was part of her employment responsibilities for Flat's.
The plaintiff has requested the defendant to return to Flat's the domain name and the necessary data to make use of the same. The defendant declined to do so. On March 13, 2009, the defendant offered to sell the domain name "Flatstattooing.com" to Guy Flatley, owner of Flat's Tattooing, Inc., for $17,000. In the offering letter (Plaintiff's Exhibit 5) the defendant acknowledged that the "registrant" is the "owner" of a domain name.
This litigation followed shortly thereafter.
Conclusion
The plaintiff in this case has the burden of proof by a preponderance of the evidence as to the necessary allegations of the complaint. It claims to have proved those by the evidence outlined above. While the original complaint has requested monetary relief, the plaintiff, during the trial and in its brief, has relied upon the claimed "such other relief as the court may deem proper" for the real purpose of the case, i.e., the return of the domain name and the operational data to make use of it. The defendant has not been surprised by these claims and has made no objection to the pursuit of the claim based upon the allegations or lack thereof. Nor could there be any prejudice to the defendant. On the contrary, the case has been tried to this court as a contest over what the parties have termed the "ownership" of the domain name. Under these circumstances, the court finds the allegations of the prayer for relief in the complaint "such other relief as the court may deem proper" to bring into play the court's equitable powers to do justice.
The plaintiff has called the court's attention to cases which have from an early date established the law of Connecticut to provide protection to a company to the name it uses to conduct business. (See, Rogers and Brothers v. Rogers, 53 Conn. 121 (1885), Northeast Distributions, Inc v. Premier Logistics Services, Inc., 49 Conn.Sup. 65, 77 (2004).
The defendant, on the other hand, has placed reliance on the law of Copyright citing 17 U.S.C. 101, et seq., and the cases of gad.inc v. ALN Associates Inc., 974 F.2d 834 (7th Cir. 1992), and Conwell v. Gray Loon Outdoor, 906 N.E.2d 805 (Ind. 2009). Using the copyright argument the defendant claims ownership of the "website" by virtue of being the author of the same. No distinction is made by the defendant as between the domain name and the content and design of the individual web pages. The plaintiff appears to the court not to make a claim to the design or content of the web pages themselves whatever their content, but claims the use and ownership of the domain name only.
Under these circumstances the copyright claim (with the extensive analysis) does not assist the defendant since a domain name cannot be copyrighted. "Words and short phrases such as names, titles and slogans are not subject to copyright protection. 37 C.F.R. 202.1(a)" Fryer v. Brown, 2005 WL 1677940 (W.D.Wash.). See, Beh, Applying the Doctrine of Work for Hire and Joint Works To Website Development, 25 Touro L. Rev. 2009 at 981.
Whatever the rights of the respective parties may be to the contents of the web pages themselves this court makes no determination as to those rights.
The court does, however, find that the plaintiff has established by a preponderance of the evidence that it has and will continue to suffer irreparable harm for which there is no adequate remedy at law from the defendant's refusal to take the necessary action to transfer the domain name "flatstattooing.com" to the plaintiff. Therefore, after balancing the equities of the parties, the court enters judgment for the Plaintiff on the complaint, together with costs, and enters the following Order.
ORDERED that the defendant Dawn Whitham shall, within 90 days from the date hereof, take all the necessary action to transfer to the plaintiff, Flat's Tattooing, Inc. the URL flatstattooing.com, including the restoration of Flat's Tattooing, Inc. as the Registrant, Administrative contact, Technical contact and deliver to it all passwords, documentation, contract information and any other information necessary for the operation and control of the said URL, providing the court with notice of the accomplishment of the same.
The court will retain jurisdiction of the case and the parties for the purpose of the enforcement of the above Order with an appropriate remedy on motion of the plaintiff if compliance is not forthcoming within said time.
SO ORDERED.