Schiff Hardin & Waite v. Schnugger dba Bizcheck
Claim Number: FA0204000110847
Complainant is Schiff Hardin & Waite, Chicago, IL, USA (“Complainant”). Respondent is Jens Schnugger, dba Bizcheck and others, Seevetal, GERMANY (“Respondent”).
The domain name at issue is <schiff.biz>, registered with Schlund & Partner AG.
The undersigned, Tom Arnold, 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.
Tom Arnold is sole Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint; it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on April 25, 2002; the Forum received a hard copy of the Complaint on April 25, 2002.
On May 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 30, 2002, by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on May 30, 2002.
Following a conflicts check reported to the Forum, on June 20, 2002, pursuant to STOP Rule 6(b), the Forum appointed Tom Arnold of Houston Texas, USA, as the sole Panelist.
Transfer of the domain name from Respondent to Complainant.
I find it convenient and meaningful in this case, to present some of the reactions to various party contentions, along the way while reciting those contentions I find to be most relevant.
A. Who is Respondent?
The Registrant of the subject domain name is identified in the domain name registration as BIZCHECK. Respondent is named in the Complaint as BIZCHECK, in the Response as Jens Schnugger of Seevetal, Germany.
As aforesaid, on the evidence before me including Respondent’s Annex 1, I find that Mr. Jens Schnugger selected the name BIZCHECK as a name or trademark under which to do a business project in the nature of “a page for business referrals by clients”. That business project failed, but while it was still a project of Mr. Schnugger, the application for registration of the subject domain name, <Schiff.biz>, was filed in the BIZCHECK assumed trade name.
The BIZCHECK domain name did not attract material hits or business and the BIZCHECK project failed and the BIZCHECK “dba” was abandoned. The evidence gives us no crisp date of that abandonment; likely there wasn’t one. In any event the change of the registrant’s name to the name of the remainder-proprietor of it, Respondent Jens was not timely and promptly accomplished for reasons that are unclear, but do not smack of fraud or bad faith.
I know nothing of the German law of assumed trade names nor registration of assumed trade names which might possibly have a bearing on this case, beyond Respondent’s “Annex 1, Register of a Business [name]” which is supportive of Respondent’s Response. While this form akin to a U.S. assumed name registration was provided, no information on German law relating to assumed trade names nor registrations was provided by the parties. There are a number of variations on those legal themes among the states of the United States. But I conclude that there is insufficient inequity involved in the innocent remainder after the business project was abandoned, of the dba BIZCHECK as the registrant, to frustrate the conclusions I reach here where I treat Respondent as being Mr. Schnugger in the travel business, a business which begot his interest in a ship-oriented domain name which he undertook to register quite timely after learning of the opening of the .biz category of names in 2001.
Of course the dba circumstance explains why Complainant’s trademark search did not turn up either BIZCHECK (its use was very limited, short lived, and in a far away country from Complainant, not on any international register), or “Schiff” (it hadn’t been used by Respondent during the time of Respondent’s effecting the registration, indeed apparently it still hasn’t been used). Respondent reports “I’m not allowed by law to use “Schiff” as a trademark, . . . I will be allowed to register “Schiff.biz” as a trade mark.” But I here find that the non-use and evidence of it are not tainted with bad faith, so its occurrence of nonuse is irrelevant.
But while operating under the BIZCHECK dba trade name on July 12, 2001, Mr. Schnugger received a notice that “biz” domain names were available. “Schiff” in German means “ship” in English. He says that he felt <Schiff.biz> is a perfect domain name for cruise selling to the German language market, and so he registered <SCHIFF.BIZ>. Though he feels he has thus far been precluded by German law from using it, he had a legitimate interest in developing the cruise business that he was working on during BIZCHECK times as well as up until now. I have not been persuaded that I should discount the credibility of that testimony of his intent in judging good faith which is one of the points before me. Written evidence contrary to Respondent’s good faith has not been presented and is assuredly unlikely to exist, in context of the BIZCHECK effort and the ongoing effort which begot a cruise business level amounting to 25% of the Respondent’s several products by now.
As occurs on some point in most dispute resolutions, I am of course aware that there is some confusion in the evidence and incomplete presentation of the applicable German law on the topic of assumed trade names, but I conclude that the above is the most realistic and practical construction of the point in context of this proceeding.
Yes, I noted Complaint’s citation of the failure of Respondent to get the name transferred, but there are some grounds for that event occurring which have nothing to do with the Respondent’s good faith and equitable viability of the dba concept as applied here. So that fact is not binding up me, indeed is not even meaningful evidence of bad faith, which of course is a key phrase in this proceeding.
In all events I find at the outset that Mr. Jens Schnugger is properly to be viewed as the Respondent here, whether acting through an assumed trade name or not.
B. Issues: The Domain Name v. Complainant’s claim
The domain name at issue is <Schiff.biz>. For purposes of this decision I dismiss the “.biz” as irrelevant. Princeton Linear Assoc., Inc. v. Copland o/b/o/ LAN Solutions Inc., FA 102811 (Nat. Arb. Forum, Feb. 8, 2001). A case that some would argue to be to the contrary, Commonwealth Bank v. Rauch, FA 102729 (Nat. Arb. Forum, Feb. 23, 2002), I find to be distinguishable from the Schiff v Schiff aspect, the primary if not sole aspect of the present case, in that the registered domain name was only substantially the same and not totally “identical”, and otherwise.
Schiff as you will note, is the first name of the Complainant, a Chicago law firm, Schiff Hardin & Waite. The three-name trade name was obviously widely used, including to some degree in Europe, before relevant times here. Whether the single word “Schiff” was used as a service mark or was ever recognized by any appreciable segment of the public as a service mark of Complainant, is a contested issue. –And the answer to that question is determinative of the issue of whether Complainant has viable trademark or service mark rights that could be interfered with by Respondent.
Three aspects of the dispute thereby appear. One, is the real case one between the three-word firm name, Schiff, Hardin & Waite and the one word Schiff? If so that question raises the second question in these STOP proceedings, whether Schiff, Hardin & Waite is “identical” to Respondent’s “Schiff” domain name. And third, does use (admitted here) of a three-word name of a law firm, automatically give rise to a common law trademark or service mark in only the first word standing alone, without the firm’s promotion of the word or use of it as a mark?
Of course, even if the only words properly in issue are Schiff v. Schiff which are admittedly identical, that alone is insufficient to make out a case of trademark or service mark rights or infringement as I will discuss a bit further in a minute.
I find that the German word “schiff” has a very explicit meaning of :
a. “ship” as a noun for a seagoing vessel,
b. as the English verb “to ship a package” as equivalent to “to send …”,
c. a kind of transport, as by a private contract carrier by contrast with mail or personal
hand delivery) not uncommonly over water, and
d. it is a sort of natural key word in the cruise travel business.
C. The Complainant
Complainant, Schiff Hardin & Waite, is a Chicago-based, mature, large, law firm. Since l964 that firm has used the trade name Schiff Hardin & Waite as its firm name. In the years since then it has gradually become known in the U.S. that some still-rare few law firms whose names include multiple individual’s last name, are nick-named or otherwise sometimes, increasingly in recent years, referred to by the first name in the firm, as in this instance, “SCHIFF”. I can take judicial notice of that fact, but even now the vast majority of firms with multiple person’s names in the firm name, do not themselves use only one name. Some longer names are often shortened to two names, as Baker Botts, Vinson Elkins, Fulbright and Jaworski, but still as of now it is rare indeed for a law firm with the names of several lawyers in the firm name, to use only one name as a trade name or trade mark for the firm, or to register a single name as their trademark or assumed name.
Complainant alleges and provides affidavit evidence to the effect that the single name, Schiff, has been in use as the trade name of the firm since l964, a date when I (then a lawyer of 15 years national experience, officership in national bar associations, etc.) had never heard of a firm with several partners in the firm name, using only the first name as its trade name. Complainant asserts it has used “Schiff” which the context biases it to use. It has used in this proceeding also another likely abbreviation for its firm, the acronym composed of the initials of the names in the firm, SHW. In this proceeding dispute Complainant on occasion referred to itself on occasion by those initials SHW rather than Schiff. This is very interesting. It is at least some evidence of a habit contrary to Complainant’s theme.
More significant, lawyers of major firms such as Complainant here are very familiar with the concept that a mere conclusionary allegation (which is all I have here) is not a viable preponderance of the evidence, unsupported by evidence of such use. –Evidence like samples of relevant letterheads, or correspondence to and from the firm where the authors use “Schiff” in the manner of a service mark, or invoices using “Schiff” in the heading, or internal office memoranda stationary headings, or court memoranda or briefs, or brochures for new recruits, or an assumed name registration or trademark registration, or in this case, some document published in a German language. I feel I can depend upon the fact that if the conclusionary allegation is meaningfully true, I would have been provided with at least some evidence of some such sort, because it is so easy to come by and lawyers know how very important it is that they provide evidence in support of their conclusionary allegations, at the very least when it is available and practical to do.
Complainant here, a major world-class law firm with hundreds of lawyers, appears pro se, but there is no way I can excuse them for failure to provide evidentiary support for the subject allegation, if any exists. The firm’s failure to provide meaningful evidence in support of its conclusionary allegation, is itself evidence to the contrary—is evidence that the real fact is that their uses that the public somewhere might recognize as a brand name, was the three-name “Schiff Hardin & Waite” rather than “Schiff” alone. That makes the identity of the alleged service mark and domain name become very important.
There are at least eight details that are important to one or another of the STOP Policy or Rules. An allegation such as I got here, in generality to the effect that Complainant is an international firm that has an office in Ireland and “European” clients, says nothing about the important, in some cases critically important, detailed themes I can list thusly:
( i ) common use of Schiff alone,
( ii ) by the firm,
(iii) recognized and known by the public at least somewhere (common law marks in
Complainant’s country require public awareness of the relationship between
the mark and its proprietor, a so-called “secondary meaning”),
(iv) as its trade name or trade or service mark, i.e., in what style/context of use,
(v) before the issues of this dispute arose and before Respondent’s domain name
(vi) the use being sufficient to establish trade or service mark rights in it, i.e., to establish
secondary meaning in the public mind, or
(vii) sufficiently in Germany to make it likely that Respondent in an entirely different line
of trade would or should be aware of such use by Complainant,
(viii) all at Respondent’s domain name application time.
The Complaint makes it clear that the Complainant knew and assuredly should have known that evidence of service mark style use of “Schiff” alone, was important to this case, that if the conclusionary allegation was meaningfully true as to “Schiff” alone there would be some rather obvious documentary evidence handy to introduce in this proceeding, and that Complainant has not offered responsible credible evidence on any one of those eight points with respect to “Schiff” standing alone.. I find for Respondent on each of those eight points, as to “Schiff” standing alone.
During the relevant time here Respondent was trying to develop its cruise business. The cruise business now accounts for as much as 25% of Respondent’s gross travel-business income and appears to be doing well enough, illustrating a good faith intent to develop that business line at least back to and past the very recent registration time. The cruise-travel business line has connotative connections with “ship” or “schiff”.
There is no evidence that Respondent had ever heard of the Complainant law firm prior to filing his application to register, or prior to being notified of Complainant’s claim that initiated this dispute resolution proceeding. The nature of the geographical distance and the difference in business interests and channels of trade make a strong case for the conclusion I reach, that Respondent was not aware of the Schiff Hardin & Waite law firm at the time of his application to register, and generates an even stronger conviction that he was not aware of any body using the first name only, Schiff, as a service mark for a U.S. law firm. In that context his good faith intent to develop the cruise business on line using the German word for “ship” as a domain name, is the more credible view and I so find.
I of course am acutely aware that this dispute resolution process, necessarily focused as it is upon fast and inexpensive decisions, does not afford an opportunity for expensive discovery American style, by which Complainant might have learned something on that topic to present in evidence, but for good reasons the parties and I are stuck with that lack of discovery, and I must base my ruling in part upon the context of the absence of contrary evidence on that factual detail that happens to be so important to this case. I am confident that it is not unjust that I depend upon that evidence being offered, if it existed in print or otherwise. So I find that no such tangible evidence exists.
As I recall it from some example I heard or read or created somewhere, perhaps a made-up fictional example in some course or book involving trademarks, NBC has been used in the U. S.
- by National Broadcasting Company for broadcasting services,
- by National Bank of Commerce for banking services,
- by National Biscuit Company for crackers.
In classic trademark law analysis, though the marks are identical, no one of those marks infringes another because the lines of trade and products are so disparate that no significant number of the buying public would be likely ever be confused into thinking that any two of them came from or were controlled by the same source. Broadcasters and Banks simply don’t bake and sell crackers and the buying public feels it can depend upon that.
Yes, I’m aware of an exception in this era of gigantic diverse conglomerates, but exceptions to that concept do not destroy the viability of this point in aid of my findings/conclusions in this case: It is clear that the buying public believes that not one law firm in the world is also engaged in the cruise business beyond an internal service to its own employees, that not one cruise travel agent is really in the business of rendering legal services if for no other reason than that cruise companies don’t have a license to practice law. There is no likelihood of confusion between such disparate product/service lines. If that be so, there is no motivation for Respondent knowingly to seek to trade upon Complainant’s good will or obstruct Complainant’s use of a domain name, no motivation that is important to Respondent.
The cruise business now accounts for as much as 25% of Respondent’s gross travel-business income and appears to be doing well enough, illustrating a good faith intent to develop that business line at least back to the very recent registration time. The cruise-travel business line has connotations connected with “ship” or “schiff”, sufficient to give some bit of plausibility to the Respondent’s theme on this topic. At the very least the connotation does not imply any implausibility.
There is no evidence that Respondent had ever heard of the Complainant law firm until notified of Complainant’s claim. The nature of the geographical distance and the difference in business interests and channels of trade make a strong case for the conclusion I reach, that Respondent was not aware of the Schiff Hardin & Waite law firm at the time of his application to register, and generates an even stronger conviction that he was not aware of any body using the first name only, Schiff, as a nick name for a U.S. law firm.
I of course am acutely aware that this process, necessarily focused as it is upon fast and inexpensive decisions, does not afford an opportunity for expensive discovery American style, by which Complainant might have learned something on that topic to present in evidence, but for good reasons the parties and I are stuck with that lack of discovery, and I must base my ruling in part in context of the absence of contrary evidence on that factual detail that happens to be so important to this case. I am confident that it is not unjust that I can depend upon that evidence being offered if it existed in print or otherwise.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, I exercise my discretion to rely on relevant UDRP precedent where applicable.
4(a)(1) COMPLAINANT’S RIGHTS IN THE MARK.
Under the STOP Policy a STOP Complaint may be properly filed only when the domain name in dispute is identical to a trademark or service mark in which the Complainant has rights and for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights.
As aforesaid the existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights. Princeton Linear Assoc. Inc. v. Coland o/b/o LAN Solutions, Inc., FA 102811
As noted or implied above, I have concluded that Complainant has common law rights in the trade name and service mark “Schiff Hardin & Waite.” I now also conclude that the three words “Schiff Hardin & Waite” is not identical to the one word “Schiff” which has been registered by Respondent. See, for example, Commonwealth Bank v. Rauch, FA 102729 (Nat. Arb. Forum, Feb. 23, 2022) where one extra letter in the mark was held sufficient to make it not identical to the domain name.
Therefore to any extent that domain name rights are being urged by Complainant to have been derived from “Schiff Hardin & Waite” in which I find Complainant has common law trade name and service mark rights, its cause fails under the STOP proceedings for want of identity between the Complainant’s rights and the Respondent’s domain name.
Perhaps for this reason, Complainant’s case is focused on the word “Schiff” as being its trade name or service mark. I conclude “Schiff” IS identical to the “Schiff” in Respondent’s domain name, the “biz” of course being disregarded. The difficulty with Complainant’s cause on this issue as so founded, is that while Complainant makes a conclusionary statement of “schiff” being its common law trade name, trade mark and service mark, it provided no evidence of that to which I can attribute credibility.
As explained above there was no real evidence, no credible and admissible evidence, presented as to the use of SCHIFF alone and not in context of “Schiff, Hardin & Wait” or perhaps “Schiff Hardin”. Complainant does not tell us whether it relies upon the firm’s telephone receptionist answering the phone “Schiff Hardin”, or whether she answers the phone some other way.
Complainant alleges that “The domain name “Schiff.biz” is identical to the Complainant’s service mark . . . Schiff Hardin & Waite … is also widely recognized and known for the legal services it provides by use of the first name in its trade name, “Schiff.”
I found no meaningful admissible evidence supporting that conclusionary allegation, no real evidence as to public recognition of the word SCHIFF standing alone. Yes, one of Complainant’s partners filed an affidavit containing a conclusionary statement of “widely recognized and known”. That is less reliable evidence at best, than hearsay, and the fact that the conclusion was sworn to does not fill the void of lack of responsible evidence.
He purports to tell us what others know and think. But did he personally ask 1000 persons, 100 from each of ten different countries or states of the U.S.? No, I think not.
Did he employ a survey firm to perform a properly structured survey like all trademark lawyers are familiar with? He doesn’t say so. Any person with my experience will tell you confidently from a reading of the record here, no he didn’t do that.
Were the questions asked in any survey leading and therefore not meaningful evidence? Had the interviewees been coached what to say? All evidence-law-experienced lawyers know he told us what HE believed without undertaking to survey the folks whose belief he was reciting.
He did not offer even a shred of evidence from the others as to what those others believe. How did he know? He did not tell us what evidence he relied upon as giving him his belief. And of course in the proceedings here, he could not be cross examined, which inherently puts a fiduciary sort of burden upon him to support his beliefs of what others believe, with the evidence of what brought him to his conclusion.
Yes affidavit evidence is admissible, but I do not think any jurisprudential tribunal is bound by uncross-examined unrebutted affidavits with no evidentiary support.
And as discussed some pages above he offered not even his own knowledge as to the style of use by the firm, whereby I could judge whether it was a service mark use or some other style of use. He offered no suggested number of instances in which the firm had put “SCHIFF” standing alone in print on a letterhead, statement in a letter, CLE program, or elsewhere in print. --No copy of newspaper articles or client correspondence referring to the firm as simply “SCHIFF”. Etc. In the absence of underlying supporting evidence as outlined before and supplemented here, this conclusionary statement appears to be not properly supported with non-hearsay, responsible evidence to support the conclusion.
So I conclude that the record fails to show by responsible admissible evidence, as it is Complainant‘s burden to do, that Complaint has perfected any common law trademark/servicemark rights in the word SCHIFF not accompanied by Hardin & Waite..
Accordingly, the Complaint must be dismissed.
4(a)(2) RESPONDENTS RIGHTS/LEGITIMATE INTERESTS IN THE DOMAIN NAME.
The STOP Policy requires a successful Complainant to show that the Respondent has no rights or legitimate interests in the Domain Name.
It appears that as of the time of registration, Respondent had no rights in the domain name, except the right to take actions that in the future would perfect some rights (as indeed he
did—he perfected his domain registration).
But skip rights. He says that he has legitimate interests in using the domain name in aid of development of his travel cruise business. That is something of which he had personal knowledge. As aforesaid, on the record before me I have concluded that I must find that Respondent had no knowledge of any Complainant’s use of the same mark as he sought to develop, and no motivation to use a mark the law firm might possess if he did have such knowledge. Even if he did have some acquaintance with it, it would not appear that the Chicago law firm’s business name or a part thereof, could have the kind of good will connected to it so as to be of economic advantage to Respondent to plagiarize that law firm name or part of it.
Complainant has speculated that Respondent had no legitimate intent properly to use the domain name, but that is rank speculation of the purest sort, unsupported by any evidence. In context of Respondent’s rebuttal and his position in terms of then business interests, the absence any evidence to support the Complainant’s speculation is determinative.
I conclude that Complainant has failed to prove responsibly that Respondent has no legitimate interest in use of the domain name as of the time he registered the name. However, Respondent has not sufficiently proven with evidentiary paper its rights to the domain name such that I elect not to preclude further IP claimants from claiming any rights that they may have.
4(a) (3) RESPONDENT’S REGISTRATION OR USE IN BAD FAITH.
Respondent having not yet used, Respondent has not used in bad faith.
There is no evidence (by comparison with speculation) that Respondent registered only for purposes of sale of the domain name, or only for purposes of precluding Complainant from using its trade name or trade or service marks. Respondent has not offered the domain name registration for sale.
Respondent, at the time of his application having no knowledge of any trade name or trade or service mark rights in the Complainant, and no knowledge of any value in Complaint’s rights (if any there was) that would be relevant to Respondent’s business interests or purposes, I find that he did not register in bad faith. but in independent good faith pursuit of his own business interests.
Note that I can and do reach that conclusion without reliance upon the further conclusion expressed earlier, that Complainant’s claim to service mark rights is in error for want of any appropriate supporting evidence. --And vice versa. I find “belt and suspenders”.
Complainant’s Complaint is dismissed. Further challenges against this domain name under the STOP Policy shall be permitted
Tom Arnold, Panelist
Dated: July 7, 2002
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