A set of related Complaints recently filed under the Uniform Domain Name Dispute Resolution Policy (UDRP) with the World Intellectual Property Organization (WIPO) by partners from the law firm Proskauer Rose LLP for the transfer of domain names containing their personal names were recently rejected because the Panel decided that the Complainants did not have a trade mark in their names. A further related Complaint filed by the law firm itself for the transfer of the domain name <proskauerlawfirm.com> was also rejected because the matter was not deemed by the Panel to fall within the scope of the UDRP.
In the first set of Complaints, Gregg M. Mashberg, Joseph Leccese and Allen Fagin, three partners from Proskauer Rose LLP (the Complainants), sought transfer of the domain names <greggmashberg.com>, <josephleccese.com> and <allenfagin.com> (the Domain Names) registered by Crystal Cox (the Respondent).
All the Complainants contended that they were "well known and highly respected attorney[s]", highlighting their levels of experience and positions within the law firm and citing accolades given to them by various legal publications. The Complainants maintained that they practised under their respective names, "render[ing] legal services in exchange for fees", with their names appearing on the Proskauer website and in promotional materials, and also "featur[ing] prominently on bills that are sent out to clients for the Complainant[s'] legal services". There was no indication, however, that the Complainants entered into legal services contracts with clients in their own names, as opposed to as a lawyer of Proskauer Rose LLP, or that clients paid the Complainants rather than the firm.
The Domain Names, which were all registered during 2010, pointed to websites containing criticism of the Complainants and the Proskauer firm. The Complainants alleged that the Respondent, who describes herself as an "Investigative Blogger", was "parroting Eliot Bernstein, who has been engaged in a bizarre and defamatory campaign against Proskauer Rose and its attorneys for many years", indicating that this was part of a wider dispute. In addition, the Complaint mentioned that the Respondent had a website at www.crystalcox.com which contained further criticism of the Proskauer firm.
To be successful under the UDRP, a complainant must establish that:
- The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
- The respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
In respect of the first limb, the Complainants asserted that they had rights in unregistered trade marks comprising their personal names, GREGG MASHBERG, JOSEPH LECCESE and ALLEN FAGIN, relying on the factual background to the matter and on previous UDRP decisions. They contended that as a result of the commercial activities under their names, they had developed unregistered trade mark rights in those names.
However, the Panel did not agree, finding that whilst there are instances where an unregistered personal name may acquire common law (or unregistered) trade mark rights through use in commerce as a source identifier of goods or services, the Complainants could not establish this. For a complainant to establish that he has an unregistered trade mark right in his name, he must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Although the Complainants were successful lawyers and partners at a prominent law firm, they did not market or provide services independently of the firm; the firm was, in fact, the platform on which they provided legal services. Further, they were not considered to be the driving force behind the firm. For these reasons, the Panel felt that their reliance on previous UDRP decisions was misplaced, and rejected the Complaint.
The Panel did not need to consider the second and third limbs of the UDRP, since the Complainants had failed to satisfy the first limb.
Whilst certain celebrities and public figures have been recognised to hold an unregistered trade mark in their names in previous UDRP decisions, these cases generally involve individuals who are seen to be synonymous with the goods or services they provide, as was the case in Roland Mouret v. Domain by Proxy, Inc. and Sonia Long and Kotak Mahindra Bank Limited v. Richard Brown, the decisions cited by the Panel. This decision shows that a high threshold has to be satisfied in order to establish an unregistered trade mark in one's name. Whilst the lawyers who brought the Complaints might have been leading individuals in their fields, they were not prominent enough to convince the Panel that they had developed a trade mark in their names.
A related Complaint was brought by the Proskauer Rose firm itself (the Complainant) against Leslie Turner (the Respondent). The Complainant sought transfer of the domain name <proskauerlawfirm.com> (the Domain Name) registered by the Respondent, which pointed to a website containing criticism of the Complainant law firm and several Proskauer lawyers operated by Crystal Cox, the Respondent in the first set of Complaints described above. The Panel considered Leslie Turner and Crystal Cox as interchangeable.
The three UDRP limbs referred to above also applied in this case. In respect of the first limb, the Complainant law firm asserted that it had rights in the trade mark PROSKAUER through registration and use. The Panel found that the Domain Name was confusingly similar to the PROSKAUER trade mark, and this limb was therefore satisfied.
With regard to the second limb, under the UDRP a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
- before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to us, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services;
- you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
- you [Respondent] are making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Panel considered that the Respondent had a legitimate interest in the Domain Name on the basis of the third point. There is a general difference of opinion among panelists who have been faced with the issue of whether a <trademark.com> domain name may be legitimately used by a respondent solely as a "gripe site" to levy criticism against a complainant trade mark owner and/or its products or services. This is often a more complex question than that raised by a <trademarksucks.com> domain name, where the use of an additional pejorative term underlines that someone visiting the site is likely to find criticism of the complainant and thus the domain name is more likely to be acceptable.
However, in this instance a majority of the Panel found that the Respondent had a legitimate interest in the Domain Name, as it pointed to a genuine "gripe site" and there was nothing to suggest that the Respondent made money from the site. Thus, the Domain Name was found to be used only in pursuit of the Respondent's free speech rights. It was not up to the Panel to consider whether the content of the website was actionable under the law for reasons unrelated to the Domain Name itself.
One Panelist disagreed with the conclusion that a noncommercial criticism site confers upon a domain name holder a right or legitimate interest if the domain name consists solely of the complainant's (and the target of the criticism) mark, with no explanatory addition. However, he did agree with the overall conclusion of the Panel which unanimously decided that the Complaint should be denied. All Panelists felt that this was not a clear case of cybersquatting which the UDRP was designed to address; it appeared to be part of a wider dispute between parties, which should be decided by a forum with jurisdiction and competence to rule on all aspects of the matter.
The Panel did not need to consider the third limb, since the second limb was not deemed to be satisfied. This decision highlights the fact that there is a built in defence of noncommercial or fair use of a domain name in the UDRP allowing free speech, provided such use is genuinely noncommercial.
These related decisions also demonstrate Panelists' respect for the limits of the UDRP and an unwillingness to stray outside of its scope of application to use it to determine matters that it was not designed to resolve. Whilst the UDRP is an effective tool for dealing with cybersquatting, it was not designed to be more than this, and cases involving other legal issues such as defamation should be left to a more appropriate forum.
The WIPO decisions are available at: http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-0677 http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-0679 http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-0678 http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2011-0675