Friedman & Feiger, LLP v. Whois Watchdog
Claim Number: FA1004001319476
Complainant is Friedman
& Feiger, LLP (“Complainant”), represented by Nhut Tan Tran, of Friedman & Feiger, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <larryfriedman.com>, registered with Tucows Inc..
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 15, 2010.
On April 16, 2010, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <larryfriedman.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On April 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 2010 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 email@example.com. Also on April 22, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 21, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <larryfriedman.com> domain name is identical to Complainant’s LARRY FRIEDMAN mark.
2. Respondent does not have any rights or legitimate interests in the <larryfriedman.com> domain name.
3. Respondent registered and used the <larryfriedman.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Friedman & Feiger, LLP, is a firm that offers legal services. Complainant holds common law rights in the LARRY FRIEDMAN mark, having used the LARRY FRIEDMAN name as early as April 2001 to identify Larry Friedman personally as the founder and primary partner of the law firm Friedman & Feiger, LLP.
Respondent, Whois Watchdog, registered the <larryfriedman.com> domain name on May 30, 1997. The disputed domain name resolves to a webpage that displays hyperlinks unrelated to Complainant or Complainant’s mark.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant asserts common law rights in its LARRY FRIEDMAN
mark through its continuous use of the mark since April 2001 and its subsequent
development of secondary meaning in the mark. Complainant began using the LARRY
FRIEDMAN mark in April 2001 to identify one of Complainant’s founders and
primary partners. Complainant’s LARRY
FRIEDMAN mark is used nationally throughout the
See Goepfert v. Rogers, FA 861124 (Nat. Arb. Forum Jan. 17, 2007) (“[T]here is no particular amount of evidence required in order to establish common law rights. The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established.”); see also Bayless v. Cayman Trademark Trust, FA 648245 (Nat. Arb. Forum Apr. 3, 2006) (“The Panel concludes Complainant has proved that the RICK BAYLESS mark has become sufficiently connected to Complainant’s career as a chef and the public associates that career with Richard L. Bayless and the RICK BAYLESS mark.”).
Complainant claims that the <larryfriedman.com> domain name is identical to Complainant’s LARRY FRIEDMAN mark. The disputed domain name simply removes the spaces separating Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel finds the removal of a space and the addition of a gTLD do not change the fact that the disputed domain name is identical to Complainant’s mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”); see also Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”). Therefore, the Panel determines that Respondent’s <larryfriedman.com> domain name is identical to Complainant’s LARRY FRIEDMAN mark.
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Because of the reasons the Panel gives in its discussion of Policy ¶ 4(a)(iii), the Panel declines to analyze Policy ¶ 4(a)(ii). 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); see also VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (“Respondent's default, however, does not lead to an automatic ruling for Complainant. Complainant still must establish a prima facie case showing that under the Uniform Domain Name Dispute Resolution Policy it is entitled to a transfer of the domain name.”).
Respondent uses the <larryfriedman.com> domain name to resolve to a website containing hyperlinks that are unrelated to Complainant and Complainant’s legal services. Complainant alleges that Respondent’s use of random hyperlinks unrelated to Complainant will confuse Internet users as to Complainant’s affiliation with the resolving website. However, the Panel finds that Respondent’s use of the website is in connection with a fair business interest and does not create the requisite confusion under Policy ¶ 4(b)(iv). The Panel holds that Respondent did not register the <larryfriedman.com> domain name in bad faith and does not use the disputed domain in bad faith pursuant to Policy ¶ 4(b)(iv). See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the respondent did not register or use the domain name <metagen.com> in bad faith where the respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created); see also Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where the respondent has an active website that has been in use for two years and where there was no intent to cause confusion with the complainant’s website and business).
Even if the Panel had found that Respondent’s use attempted to profit from the creation of confusion as to Complainant’s sponsorship of the resolving website, Respondent’s registration of the <larryfriedman.com> domain name predates Complainant’s rights in the mark. Respondent registered the <larryfriedman.com> domain name on May 30, 1997. Complainant first alleges common law rights in its LARRY FRIEDMAN mark beginning in April of 2001. Complainant does not provide any evidence that would demonstrate Complainant made use of the LARRY FRIEDMAN mark prior to Respondent’s registration of the <larryfriedman.com> domain name. Therefore, the Panel cannot find that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).
The Panel finds that Policy ¶ 4(a)(iii) has not been satisfied.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <larryfriedman.com> domain name REMAIN with Respondent.
Bruce E. Meyerson, Panelist
Dated: June 2, 2010
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