Sherry Levitan v. Sara Dvorkin
Claim Number: FA1201001426700
Complainant is Sherry Levitan (“Complainant”), represented by Allan D.J. Dick of Sotos LLP, Canada. Respondent is Sara Dvorkin (“Respondent”), represented by Nathaniel Lipkus of Gilbert's LLP, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <fertilitylawcanada.com>, registered with GoDaddy.com, LLC.
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.
Debrett G. Lyons, Hugues G. Richard and Antonina Pakharenko-Anderson as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 26, 2012; the National Arbitration Forum received payment on January 26, 2012.
On January 26, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <fertilitylawcanada.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 February 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2012 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@fertilitylawcanada.com. Also on February 1, 2012, 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 February 21, 2012.
On March 6, 2012, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Debrett G. Lyons (chairperson), Hugues G. Richard and Antonina Pakharenko-Anderson as Panelists.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trade mark rights in FERTILITY LAW and FERTILITYLAW.CA and alleges that the disputed domain name is identical or confusingly similar to those trade marks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent broadly denies those claims and submits, in particular, that Complainant lacks trade mark rights.
C. Additional Submissions
The parties made additional submissions which were taken into account by the Panel but which do not require repetition here.
The findings pertinent to the decision in this case are that Complainant is the principal of a specialist legal practice in Canada, promoting its services by reference to the name FERTILITY LAW and having an online presence at www.fertilitylaw.ca. Respondent provides services in the same specialist field.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is accepted that a trademark registered with a national authority is prima facie evidence of trademark rights for the purposes of the Policy[1] however in this case Complainant does not provide proof of a relevant registration, nor does it lay claim to one.
Nonetheless, it is established that for the purposes of the Policy trademark rights can arise through use and reputation if there is adequate proof of secondary meaning. In this case Complainant asserts common law trademark rights in FERTILITY LAW and FERTILITYLAW.CA. In particular, Complainant alleges that the expressions FERTILITYLAW.CA and FERTILITY LAW have acquired common law trademark status in Canada in connection with the Complainant’s legal practice by reason of continuous and substantial public use since 2006.
Complainant asserts the distinctiveness of those expressions, not only because of use, but also because it is said that this area of legal practice is properly referred to in Canada as “advanced reproductive technology law” and not simply “fertility law”. Complainant alleges that she is now uniquely known as the “fertility lawyer” and that her clients and prospective clients directly relate her business to the trade marks FERTILITY LAW and FERTILITYLAW.CA.
The Panel notes that the overview of WIPO Panel Views on Selected UDRP Questions, (Second Edition)[2] asks at paragraph 1.7: “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?” In answer, the consensus view of UDRP panelists is that:
“The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. … However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required … Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.”
Complainant’s claimed trademarks, FERTILITY LAW and FERTILITYLAW.CA., merge for the purposes of the Policy. Even if use of the domain name <fertilitylaw.ca> could of itself lead to the acquisition of common law rights, the ccTLD “.ca” is wholly non-distinctive and so the only question for the Panel is whether Complainant has trade mark rights in the words FERTILITY LAW.
Complainant’s contentions regarding the nomenclature of areas of legal practice in Canada do not change the fact that the expression “fertility law” is an ordinary combination of two dictionary words entirely apt to designate that field of law dealing concerned with assisted reproductive technologies. Such a common usage extends not only to Canada but to the rest of the English speaking world.
Although not a UDRP case, in Hornsby Building Information Centre Pty Ltd v. Sydney Building Information Centre Ltd [1978] HCA 11; (1978) 140 CLR 216, the High Court of Australia was asked to consider a dispute between two rival businesses using similar trading names, both names being descriptive of their services. So far as relevant to the matter before the Panel in these Administrative Proceedings, the Court noted that:
“The kind of business which each of these Centres carries on is conveyed by their corporate names, a fact which, as will appear, is of itself of considerable importance. … The use by the Sydney Centre of the three descriptive words was no doubt convenient. It thereby acquired a name which at the same time very clearly described its activities. … There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. … The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.”
Moreover, Respondent has provided sufficient evidence in its Response that there is, in fact, common use of the term “fertility law” so as to underline its inherently descriptive character. In particular, the Response includes two general purpose articles describing fertility law: a February 2010 article entitled “Fertility Law” from the American Bar Association and an April 2010 article in Walrus Magazine featuring Canada’s fertility laws. Evidence was also submitted of a website printout from the Infertility Network containing a directory of lawyers practicing “fertility law” in Canada. Further, the Response includes a website excerpt of Shirley Levitan’s law firm website, which prominently features the term “fertility law”.
The only residual question is whether somehow in spite of the overtly descriptive nature of the term “fertility law” it could be said that Respondent still enjoys common law rights by virtue of conclusive indications of secondary meaning.
Panel finds that is not the case. Complainant asserts use since 2006. Panel notes that Complainant registered the domain name <fertilitylaw.ca> on August 9, 2006. Even assuming continuous use for 6 years, the evidence to support acquired distinctiveness in the case of such a descriptive term would need to be very powerful. Here the Panel is presented with little more than PowerPoint presentations and similar promotional material. Complainant asserts that it uses such materials for presentations to the Canadian Fertility and Andrology Society, which it claims to be a prominent organization composed of doctors and medical professions in the relevant field. Panel finds this information to be of little value in determining the public awareness of the term FERTILITY LAW as a unique indicator of Complainant’s services.
In short, the combined findings that the term “fertility law” would, in the opinion of the Panel, be seen as per se descriptive of a specific practice area of law; that there is evidence of third party use of “fertility law” in a generic and descriptive manner; and that there is sorely lacking proof of acquired distinctiveness through use, leads Panel to conclude that Complainant does not hold any unregistered trade mark in Canada (or anywhere else) for either FERTILITYLAW.CA and FERTILITY LAW and so has not shown trade mark rights for the purpose of paragraph 4(a)(i) of the Policy.
No findings required[3].
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and has engaged in so-called “reverse domain name hijacking” by initiating this dispute.
Respondent contends that Complainant is attempting to deprive Respondent of the disputed domain name by an unmeritorious claim to trade mark rights that it is said Complainant knew was unsustainable under Canadian law. Respondent asserts that Complainant was aware of Respondent’s existing practice in the same field and that Respondent was, of the parties, the senior user of the term “fertility law”. Accordingly, Respondent urges Panel to find that Complainant knew or should have known that Respondent had rights and a legitimate interest in the disputed domain name, that Complainant knew or should have known that it was unable to show bad faith, and that it was unable to prove that it has trade mark rights.
Given that Complainant is a legal practitioner, the Panel has some sympathy for those submissions. Nonetheless, in the case of NetDepositVerkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) it was said that to establish reverse domain name hijacking a respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge[4]. The Panel finds no clear indications of harassment or persistent bad behaviour on the part of Complainant and on a balance of the evidence in these proceedings finds it more likely than not that Complainant ill-conceived the scope of its monopoly in the expression “fertility law” rather than commenced and persisted with the Complaint with malicious intent[5].
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. No finding of reverse domain name hijacking.
Debrett G. Lyons
Presiding Panelist
Hugues G. Richard
Panelist
Antonina Pakharenko-Anderson
Panelist
Dated: March 14, 2012
[1] See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. FA705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. FA174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
[2] Available at http://www.wipo.int/amc/en/domains/search/overview2.0
[3] See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary; see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006)
[4] See also Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Nat. Arb. Forum May 28, 2004) finding that complainant engaged in reverse domain name hijacking where it used “the Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy”.
[5] See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
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