DECISION

 

Veatch Carlson, LLP v. Foster Taft

Claim Number: FA2409002114255

 

PARTIES

Complainant is Veatch Carlson, LLP ("Complainant"), represented by Kenneth W. Baisch of Veatch Carlson, LLP, California, USA. Respondent is Foster Taft ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <veatchcarlson.com>, registered with Omnis Network, LLC.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as panelists in this proceeding.

 

David E. Sorkin and Darryl C. Wilson, Esq, as Panelists and Debrett G. Lyons as Chair.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 5, 2024; Forum received payment on September 5, 2024.

 

On September 5, 2024, Omnis Network, LLC confirmed by e-mail to Forum that the <veatchcarlson.com> domain name is registered with Omnis Network, LLC and that Respondent is the current registrant of the name. Omnis Network, LLC has verified that Respondent is bound by the Omnis Network, 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 September 9, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 2024, 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@veatchcarlson.com. Also on September 9, 2024, 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 September 26, 2024.

 

On September 30, 2024, pursuant to Respondent's request to have the dispute decided by a three-member Panel, Forum appointed David E. Sorkin and Darryl C. Wilson, Esq. as panelists and Debrett G. Lyons as Chair.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a California Limited Liability Partnership providing legal services since the 1950s. It asserts trademark rights in VEATCH CARLSON and submits that the disputed domain name is identical to its trademark.  

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Further, Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

In particular, Complainant states that Respondent has no rights or legitimate interest in the domain name because Respondent has no association with Complainant other than as the losing party in lawsuits where Complainant either represented Respondent's opposition or was the defendant in Respondent's court proceedings. Complainant asserts that Respondent used the disputed domain name to spitefully post false and/or misleading information about Complainant.

 

Further, Complainant argues that the use of the disputed domain name is injurious to its reputation and ability to attract new clients because most internet search engines would find www.veatchcarlson.com as the primary hit for Complainant's business, causing potential clients to go to that website which is not connected with Complainant and posts negative comments about Complainant.

 

B. Respondent

Respondent does not question Complainant's claim to trademark rights and expressly acknowledges that "[t]he domain is identical to name of the Complainant because it is about the Complainant."

 

Respondent states that the disputed domain name was registered "to talk about the complainant's behavior, as loudly as legally possible."  

 

Respondent claims that he has the legitimate and protected right to offer criticism and commentary about Complainant and that he simply reports true facts without "name calling … nor even any judgmental statements."

 

Further, Respondent states that he did not misrepresent himself in any way in registering the domain name; does not misrepresent himself as Complainant, nor any law firm or provider of legal services, nor does he refer or direct people to any legal services. The domain name is not used to solicit money for any purpose, commercial or gratuitous, nor does it direct people to any site that does.  Finally, Respondent has never offered the domain name for sale, nor offered anything for sale by means of the domain name.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.       Complainant is a law firm which represented a party in a personal injury lawsuit brought by Respondent; and

2.       the disputed domain name was registered on November 5, 2023, and has been used in a manner described later to particularize a motor vehicle accident and procedural aspects of the litigation for personal injury.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry - a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights but paragraph 4(a)(i) does not distinguish between registered and unregistered trademark rights and UDRP panels have found that proof of registration is not required if a complainant can instead establish common law rights (see, for example, Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) finding that "The Policy does not require a complainant to own a registered trademark prior to a respondent's registration if it can demonstrate established common law rights in the mark.").

 

Common law rights may be established through proof of use and public recognition of the trademark such that it has come to acquire secondary meaning (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview") #1.3: "What does a complainant need to show to successfully assert unregistered or common law trademark rights?"). The WIPO Overview states in answer that:

 

Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.

 

Complainant says that it is a Martindale-Hubble AV rated firm and an attorney of the firm makes a supporting declaration that the firm has been in existence since the 1950s and has been doing business under the name Veatch Carlson LLP as a limited liability partnership in Los Angeles since November 7, 2008.  The declarant states that Complainant "provides services on behalf of numerous insurance companies located throughout the United States and has developed a reputation for excellence under the name Veatch Carlson [and is] the holder of the unregistered trademark and service mark Veatch Carlson."

 

The only evidence of relevance accompanying the Complaint is (i) an exhibit which describes itself as "[a] true and correct copy of Trademark/Service Mark registration upon which the Complaint relies", but is in fact screenshots of the current state of Complainant's website, and (ii) a State of California incorporation certificate for Veatch

Carlson LLP.  

 

Neither piece of evidence takes the issue of proof of use and public recognition of the trademark any further. Otherwise, it is Respondent which states that "investigation at the Internet Archive shows there actually was an internet site for Complainant at the subject domain <veatchcarlson.com> back in 2003, 2004, and between 2010-2014."

 

There is no evidence of that assertion and taken together the material which might show common law trademark rights falls well short of the standard set by the WIPO Overview. Nonetheless, UDRP cases have many times taken a soft approach to proof of secondary meaning and recognized the name rights of local service providers such as car dealerships, medical centers, and hairdressers based on evidence which would not be enough in Court.

 

Based on what appears to a bona fide legal practice using the name Veatch Carlson in a prominent location in a major US city since at least 2007, the Panel finds that Complainant has done just enough to show trademark rights.

 

The Panel finds that the disputed domain name is identical to the trademark since it merely adds the non-distinctive gTLD, ".com" to the trademark (see, for example, Am. Int'l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) finding that a generic top-level domain, such as '.com,' '.net,' '.biz,' or '.org,' is required in domain names and adds nothing in terms of distinctive matter; Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them."); Morgan Stanley v. nashan, FA 1706094 (Forum Jan. 23, 2017) (finding <morgan-stanley.xyz> identical to complainant's MORGAN STANLEY mark).

 

The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i)                      before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii)                      you (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

 

(iii)                      you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).

 

The name of the domain name owner does not carry any suggestion that Respondent might be commonly known by the domain name. Complainant has not authorized Respondent to use the trademark and there is no evidence that Respondent has any trademark rights of its own. Respondent is not offering nor preparing to offer goods or services.

 

Nonetheless, the critical question in these proceedings is whether in terms of paragraph 4(c)(iii) of the Policy, Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Interpretation of this "fair use" provision has been divided, partly because UDRP panelists, drawn internationally, have brought their own legal perspectives to the question. The WIPO Overview represents one position.  It proposes that, fundamentally, a respondent's use of a domain name will not be considered "fair" if it (which the Panel takes to mean the use, not just the domain name) falsely suggests affiliation with the trademark owner (#2.5) and domain names identical to a complainant's trademark generally carry a high risk of implied affiliation (#2.5.1). However, the WIPO Overview recognises that panels assess whether the overall facts and circumstances of the case support a claimed fair use (#2.5.2) and will weigh a range of case-specific factors (#2.5.3).

 

Paragraph 2.6 of the WIPO Overview specifically asks: Does a criticism site support respondent rights or legitimate interests? In answer, it states that "UDRP jurisprudence recognizes that the use of a domain name for fair use such as non-commercial free speech would in principle support a respondent's claim to a legitimate interest under the Policy."  As the WIPO Overview notes, some panels have declined to apply this fair use provision where a domain name is identical to a trademark, while others (mostly in cases involving U.S. parties) have found fair use where such a domain name is being used for bona fide non-commercial criticism (#2.6.2).

 

Respondent was involved in a motor accident collision. As stated, Complainant represented the individual who is said to have driven into Respondent's vehicle. In the following lawsuit brought by Respondent for personal injury, Complainant subpoenaed Respondent's medical records. Respondent (successfully it seems) resisted that subpoena, but Complainant allegedly subpoenaed and obtained those records through another avenue without notice to Respondent. The Response states that "[t]his behavior is what the essence of what domain site is about. (sic)"

 

The Complaint exhibits the text of the resolving webpage. It refers to the collision and resulting neck instability and pain. It references the lawsuit, Complainant's representation of the other driver, and Complainant's engagement of Farmers Insurance on behalf of that driver. The webpage describes the timeline of the subpoenas and the outcome whereby Complainant obtained the information it sought.

 

The Panel finds that the criticism of Complainant on the webpage is non-commercial and is not a pretext for cybersquatting, tarnishment, or some purpose inhering to Respondent's benefit (WIPO Overview #2.6.1). Moreover, the Panel finds on balance that Respondent reasonably believes its use to be truthful and well-founded (#2.5.2).

 

The matter might have been more clear-cut had Respondent registered <veatchcarlsonsucks.com> in the sense that Internet users would intuitively understand that any website was not operated by, or associated with, Complainant but on the facts the Panel finds that Respondent's behaviour brings it within paragraph 4(c)(iii) of the Policy.

 

In making that finding the Panel has taken into account (a) Respondent's uncontested claim that Complainant once owned and used the disputed domain name but since 2001 has used the domain name <veatchfirm.com> and the website www.veatchfirm.com as its public facing internet presence; and (b) that in spite of Respondent's admission that he "has engaged in the domain name market", there is nothing to suggest that he has in the past acquired or used a domain name in bad faith.

 

The Panel finds that Complainant has not made a prima facie case that Respondent lacks rights or a legitimate interest in the domain name.

 

The Panel so finds that Complainant has not satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

No findings required. (see, for example, Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) 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); Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) deciding not to inquire into the respondent's rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

 

DECISION

Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <veatchcarlson.com> domain name REMAIN WITH Respondent.

 

 

 

Debrett G Lyons, Chair

Dated: October 9, 2024