Newman and Denney P.C. v. David Schorr
Claim Number: FA1510001643577
Complainant is Newman and Denney P.C. (“Complainant”), represented by William R. Samuels of W.R. Samuels Law PLLC, New York, USA. Respondent is David Schorr (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <newmandenneypc.com> and <louisnewmanesq.com>, registered with Godaddy.Com, Llc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 22, 2015; the Forum received payment on October 22, 2015.
On October 23, 2015, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <newmandenneypc.com> and <louisnewmanesq.com> domain names is 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 28, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@newmandenneypc.com, postmaster@louisnewmanesq.com. Also on October 28, 2015, 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 December 6, 2015.
On December 14, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i)
Complainant has common law rights in the NEWMAN AND DENNEY, NEWMAN & DENNEY, and LOUIS NEWMAN marks dating back to December 2010. Respondent’s <newmandenneypc.com> and <louisnewmanesq.com> domain names are confusingly similar to the Complainant’s marks because each contains significant portions of one or more of the marks with inconsequential changes made.
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <newmandenneypc.com> and <louisnewmanesq.com> domain names because Complainant has not authorized Respondent to use its marks. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domains resolve to websites intended to foster an association between Complainant and Respondent in order to make libelous allegations against Complainant.
Policy ¶ 4(a)(iii)
Respondent has demonstrated a pattern of bad faith registration and use of domain names because there are multiple domains at issue here. Respondent uses the <newmandenneypc.com> and <louisnewmanesq.com> domain names in bad faith because they are used to drive customers away from Complainant through the spread of libelous allegations. Respondent registered the domain names in bad faith because it did so with constructive or actual knowledge of Complainant’s rights.
B. Respondent
Policy ¶ 4(a)(i)
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii)
Respondent has rights and legitimate interests in the <newmandenneypc.com> and <louisnewmanesq.com> domain names because they are used for the legitimate use of criticizing Complainant through the exercise of free speech.
Policy ¶ 4(a)(iii)
Respondent neither registered nor uses the <newmandenneypc.com> and <louisnewmanesq.com> domain names in bad faith because they are used for the legitimate use of criticizing Complainant through the exercise of free speech.
Complainant is Newman and Denney P.C. of New York, NY, USA. Complainant states that it is the owner of common law trademark rights in the marks NEWMAN AND DENNEY, NEWMAN & DENNY, and LOUIS NEWMAN and the domain name <newmandenney.com> (collectively the “ND Marks”) as a result of continued use since the formation of its legal services business in December 2010. Complainant asserts that such use has resulted in acquired secondary meaning.
Respondent is David Schorr, of New York, NY, USA. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. Respondent registered the disputed domain names on or about July 13, 2015, (<louisnewmanesq.com>) and July 14, 2015 (<newmandenneypc.com>).
Paragraph 15(a) of 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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Procedural Issue: Concurrent Court Proceedings
Respondent asserts that on or about October 30, 2015, Louis I. Newman, partner and owner, of Complainant company filed a motion in New York County requesting that Respondent be ordered to take down the websites at issue in this proceeding. Respondent states that no final ruling has yet been made.
Complainant has not provided any information about these alleged court proceedings in the instant case thus one may reasonably deduce that Complainant did not believe that any such proceedings affected this particular matter. Respondent has also not provided any specific information on the basis of the referenced motion. Based on the decision by both parties to file pleadings in this matter and not reference any particulars regarding other cases that may have been filed in reference to the same or similar subject matter, the Panel finds that it is prudent to move forward with this UDRP proceeding.
Complainant does not claim to have a trademark registered with the United States Patent and Trademark Office, or any similarly situated trademark registry. However, past panels have found that Policy ¶ 4(a)(i) does not require registration if a complainant provides evidence that it has acquired common law rights. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant alleges that it has common law rights in the NEWMAN AND DENNEY, NEWMAN & DENNEY, and LOUIS NEWMAN and <newmandenney.com> domain name marks relating to the offering of legal services dating back to first use in commerce in December 2010. In order to have common law rights enforceable against another, a complainant must show that the mark has secondary meaning. Relevant evidence of secondary meaning can include length of use of the mark and media recognition. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Complainant has provided screenshots of its website, operated at the <newmandenney.com> domain name, in order to demonstrate length of use of the marks. Complainant has also provided media recognition of the marks based on newspaper articles referencing the name of the firm.
It is unclear if Complainant’s argument is that the establsihment of its business in 2010 gave it protectable trademark rights at that time. The simple registration of a business name with a governmental office does not give the registrant exclusive rights in the business name. Nor can secondary meaning be understood as established at the moment a newspaper article referenced the firm. Complainant has not indicated when and by what means it acquired secondary meaning in its “ND Marks”.
While registration of a domain name does not equate to registration of a trademark one can secure trademark rights in a domain name if it is inherently distinctive or has in fact acquired distinctiveness. Names that are primarily surnames are not registerable as trademarks without proof of secondary meaning. However there is no prohibition, beyond normal substantive trademark law constraints, regarding the initial registration of as many personal names, and/or variations thereof, for domain names, as one desires. But the fact of registering a domain name and establishing a website, without more, does not equate to the establishment of acquired distinctiveness or secondary meaning.
Secondary meaning and acquired distinctiveness are synonymous but require evidence of when that status is achieved. Proof of secondary meaning generally requires evidence of use, sales, advertising, or similar methods of communication and interaction with the general populace that results in the public’s recognition of the mark as an indicator of a single source for the goods or services to which the mark is affixed. Prior panels have found common law rights in a mark where the mark has taken on a secondary meaning in relation to complainant as evidenced by the mark’s public recognition. See AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). The mere use of personal names by parties to reference themselves or their business is not proof of secondary meaning. The Complainant has not shown that the public identifies the provision of “attorney and legal services” with the Complainant’s “ND marks”, nor vice-versa. Public use of a given personal name as the only way of identifying a party or business entity is generic or common usage that does not equate to anything distinctive, and thus protectable, about the name. Trademark law does not prohibit one from using one’s personal name for business purposes, but the adoption of such does not carry with it the ability to selectively determine who can identify the business by that name when no other alternatives exist. The public must have access to use the name for noncommercial, and noncompetitive purposes.
The Panel finds that Complainant’s evidence is insufficient to establish secondary meaning, and that Complainant has not established enforceable common law rights in the NEWMAN AND DENNEY, NEWMAN & DENNEY, and LOUIS NEWMAN and <newmandenney.com> domain name, (ND Marks) marks dating back to 2010 as contended.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has NOT proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has NOT met this burden.
Respondent claims to have rights and legitimate interests in the <newmandenneypc.com> and <louisnewmanesq.com> domain names because they are used for the legitimate use of criticizing Complainant through the exercise of free speech. Respondent contends that the websites at issue do nothing except for criticize Louis Newman by alleging that he has committed perjury. Further, Respondent argues that the websites are not, and could not be viewed as, attempting to impersonate Complainant, because “no rational consumer would believe—even for a moment,” that the websites are operated by Complainant because of the content of the websites.
The Panel finds Respondent’s use consistent with a noncommercial or fair use thus Respondent has rights or legitimate interests in the domain names. See Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000) (“The Panel finds that the Respondent’s use of the Domain Name to designate a website for criticism and commentary about the Complainants constitutes legitimate noncommercial use and fair use within the meaning of the Policy.”); see also Shell Int’l Petroleum Co. Ltd. v. Donovan, D2005-0538 (WIPO Aug. 8, 2005) (“The use of a domain name to criticize a company is prima facie fair use. The Respondent is entitled to use the Internet to use his free speech rights and express his opinion in this way, subject to other laws of course (copyright, libel, etc.).”).
The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)).
The Complainant has NOT proven this element.
The Panel finds it unnecessary to address this element as the Complainant has not proven the first two elements. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
Because the Complainant has NOT established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the <newmandenneypc.com> and <louisnewmanesq.com> domain name REMAIN WITH Respondent.
Darryl C. Wilson, Panelist
Dated: December 28, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page