Munck Wilson Mandala, LLP v. David Roe
Claim Number: FA1202001427928
Complainant is Munck Wilson Mandala, LLP (“Complainant”), represented by Jennifer Beth Ingram, Texas, USA. Respondent is David Roe (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <muncklawfirm.com>, <muncklaw.com>, <munck-law.com>, <muncklawpartners.com>, <munckpartners.com>, <munckassoc.com>, <munckmandala.com>, <munckmandalaalibhai.com>, <munckalibhai.com>, <munckalibhailaw.com>, <munckalibhailawfirm.com>, <munckalibhaimandala.com>, <munckalibhaillc.com>, <munckmccutcheon.com>, and <muncksmith.com>, (“the disputed domain names”) and they are all registered with 1&1 Internet, Inc. (“1 & 1 Internet”).
The undersigned, Mr. David H Tatham, certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as a Panelist in this proceeding.
Complainant submitted a Complaint and the appropriate payment to the National Arbitration Forum (“the Forum”) electronically on February 2, 2012.
On February 7, 2012, 1&1 Internet confirmed by e-mail to the Forum that the disputed domain names <muncklawfirm.com>, <muncklaw.com>, <munck-law.com>, <muncklawpartners.com>, <munckpartners.com>, <munckassoc.com>, <munckmandala.com>, <munckmandalaalibhai.com>, <munckalibhai.com>, <munckalibhailaw.com>, <munckalibhailawfirm.com>, <munckalibhaimandala.com>, <munckalibhaillc.com>, <munckmccutcheon.com>, and <muncksmith.com> were all registered with it and that Respondent is the current registrant of them all. 1&1 Internet has also verified that Respondent is bound by its registration agreement and has thereby agreed to resolve any domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”) and its Rules (“the Rules”).
On February 16, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 7, 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@muncklawfirm.com, postmaster@muncklaw.com, postmaster@munck-law.com, postmaster@muncklawpartners.com, postmaster@munckpartners.com, postmaster@munckassoc.com, postmaster@munckmandala.com, postmaster@munckmandalaalibhai.com, postmaster@munckalibhai.com, postmaster@munckalibhailaw.com, postmaster@munckalibhailawfirm.com, postmaster@munckalibhaimandala.com, postmaster@munckalibhaillc.com, postmaster@munckmccutcheon.com, and postmaster@muncksmith.com. Also on February 16, 2012, 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, as well as 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 March 7, 2012.
Complainant’s Additional Submission was received on March 11, 2012 and determined to be compliant on March 12, 2012.
On March 13, 2012 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David H Tatham as Panelist.
Respondent’s Additional Submission was received and determined to be compliant on March 14, 2012.
On March 16, 2012 Complainant filed a further Additional Submission but this was deemed by the Forum to be non-compliant.
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 all of the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is a law firm and that the name ‘munck’ first appeared in its name in 2000 when William A Munck became a partner and the firm traded under the name of Novakov, Davis & Munck. P.C. In 2006 it became Munck Butrus Carter, P.C. It became a limited liability partnership in 2009.
Complainant contends that the name ‘Munck’ has been the first name of the business since 2009 and that this name has been part of its trade name and service mark since 2000. As a consequence it has substantial common law rights in the name MUNCK in respect of legal services. Complainant also owns the domain names <davismunck.com>, <munckbutruscarter.com>, <munckbutrus.com >, <munckcarter.com>, <munckwilson.com>, and <munckwilsonmandala.com>.
Complainant advertises its services extensively, is actively involved in, and is the sponsor of, numerous industry organisations and functions, and it participates in and attends industry continuing legal education programmes.
Complainant contends that its common law rights are sufficient to establish its rights under the Policy and that the disputed domain names are all confusingly similar to its Mark because they all contain the name MUNCK followed by either a description of a law practice or the name of attorneys who practice law at Complainant.
Complainant contends that Respondent has no right or legitimate interest in respect of the disputed domain names. Respondent is an attorney and a former employee of Complainant whose employment ended in June 2011. He is believed to be currently employed with MOSAID Corporation Limited, a subsidiary of MOSAID Technologies Inc. This company is engaged in the core business of licensing the intellectual property for patented semiconductor and wireless/wireline communications as well as the development of innovative semiconductor memory technology. As Complainant acts for clients in the same business, Respondent’s current employer is a competitor and adversary of Complainant and its clients, and Respondent has appeared on behalf of his employer opposite Complainant’s clients in negotiations regarding the enforcement of intellectual property rights.
Complainant further contends that Respondent is not commonly known by the name MUNCK or any variation thereof. He therefore has no legitimate reason to secure the name MUNCK in combination with the surname of any of Complainant’s partners. Mr. William A Munck is the only attorney licensed to practice in Texas with this surname, and records from the USPTO reflect that he is the only patent attorney with this name registered to practice before the Office.
Complainant’s internet search for the terms ‘munck’ and ‘law’ reveal only uses that refer to Complainant’s mark, to Respondent’s website at <http://munck-law.com> (to which all of the disputed domain names refer), and a Kirsten Munck.
Complainant contends that there is no indication that Respondent uses any of the disputed domain names for any legitimate purpose, and that the sole reason for them is to interfere with Complainant’s business and to misleadingly divert Complainant’s clients and potential clients to his own website. This site states that it intends to host stories about the law and law firms from an inside perspective. The site refers to “Munck stories” implying that they will be related to Complainant. To Complainant it is clear that Respondent’s actual intent is to interfere with Complainant’s business.
Complainant asserts that Respondent is not and never has been commonly known by the name Munck and he has neither sought nor been granted a licence or permission to use Complainant’s Mark in any way. Thus he has no legitimate rights or interest in the disputed domain names.
Complainant asserts that Respondent’s bad faith is proved by his inclusion in the disputed domain names of the names of Complainant’s law and other prominent partners, as well as his use of them to divert consumer’s from Complaint’s website to his own site.
Six of the fifteen disputed domain names were registered in August and September 2011 and a further eight were registered between January 6 and January 10, 2012. On January 6, 2012 it was announced that one of Complainant’s named partners, Mr. E Leon Carter was to resign, and Complainant contends that these eight later registrations were all made in an attempt by Respondent to disrupt Complainant’s business and to prevent Complainant from selecting a new firm name after Mr. Carter’s departure. Specifically the registration of the disputed domain names preclude Complainant from selecting such law firm names as ‘Munck Law Firm’, ‘Munck Law’, ‘Munck Partners’, ‘Munck and Associates’, and names including Complainants partners Messrs. Mandala, Alibhai, McCutcheon and Smith.
The website to which all of the disputed domain names refer contains the following statement –
“Any resemblance to persons living or dead should b e plainly apparent to them and those who know them, especially if the author has been kind enough to provide their real names and, in some case, their phone numbers. All events described herein actually happened, though on occasion the author has taken certain, very small, liberties with chronology, because that is his right as an American.”
Complainant contends that Respondent’s pattern of conduct, as referred to above, is an intent to post commentary of some kind regarding it, is an attempt to disrupt its business, and is evidence of his bad faith.
B. Respondent
Respondent contends that Complainant has no rights in the mark MUNCK and that none of the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Despite Complainant’s expertise in patents and trademarks it has never registered the term “Munck” or used it separately from the name(s) of other partners of the firm. According to the Complaint, Complainant has used seven different names over the past decade and changed names roughly every 18 months. Respondent asserts that each one of these names carries with it a different commercial impression. Complainant has not offered a single instance of the use of the term “Munck” by itself. It has always been used as a part of other names of the firm. Complainant is not known as “Munck” or as any of the disputed domain names.
Respondent contends that “Munck” is primarily a surname and annexed to the response were copies of entries in telephone books for evidence thereof.
Just because the name “Munck” has featured in seven of Complainant’s prior law firm names, this does not entitle Complainant to all uses of this term in any legal or law firm context. The use of the term as part of a corporate name does not establish common law rights, and Respondent points out that Complainant has not shown any use of the name alone in any advertising or otherwise. None of the disputed domain names contain the names of the previous law firms or the current law firm of which Mr. Munck is a part. He has never been a sole practitioner nor has he used only his name as the name of a law firm.
Respondent further contends that he has legitimate interests in respect of all of the disputed domain names. He points out that the message posted on the websites at all of them makes their purpose clear. The ability to talk openly about particular individuals is a legitimate interest.
There are important reasons why Complainant’s law firm name continues to change and why attorneys continue to leave Complainant. Respondent submits that free speech describing events at his previous employer are a form of protected speech and are evidence of a significant interest in the disputed domain names.
Rule 4(b)(iv) of the Policy, dealing with evidence for proving bad faith, requires there to be either a source, sponsorship, affiliation, endorsement or a product or service on the website. Respondent contends Complainant has produced not a single instance of any of these in the Complaint, and in fact Complainant has failed to state any grounds on which bad faith is asserted. However Respondent contends that even if Complainant did have rights in a mark, which he contends it does not, no services are offered on any of the websites and so there cannot be any confusion with Complainant’s legal services. The intention of all the sites is for attorneys who previously practiced at Complainant’s law firm to describe facts and events that have occurred there by means of a series of blogs.
Although Complainant has asserted that the websites are commercial because there is no indication that they are not, Respondent argues that it is for complainant to prove that they are commercial. The onus is on Complainant in this regard.
Respondent also denies Complainant’s assertions regarding his alleged attempts to forestall a name change of the Munck Carter Law firm.
C. Additional Submissions
Both parties filed Additional Submissions and they are summarised below.
Complainant
It is clear that the registration of a trademark is not a requirement under the Policy, but Complainant reiterates that its “MUNCK” mark has become a distinctive identifier for its provision of legal services. While the name of the firm may have changed several times, only one name has remained consistently present – MUNCK. This is the most distinctive portion and the dominant element of all of the legal names used by Complainant for more than 10 years. Being a law firm, complainant is restricted to the use of partner names for its firm name. Many of Complainant’s vendors, clients, co-counsel, and colleagues refer to Complainant as the “Munck firm” or “Munck” and this is Complainant’s trade name. The mere fact that this mark is also a surname does not negate its distinctiveness and does not preclude it from being protectable.
Complainant maintains that it has the right to use the “MUNCK” mark in connection with the law and the provision of legal services. By contrast, Respondent has no rights in the “MUNCK” mark.
Clients and potential clients of Complainant making a search for “munck law” are likely to be confused by the appearance of all or some of the disputed domain names. Notably, Respondent has admitted that the use of these names will focus on Complainant.
Respondent has asserted that all of the disputed domain names are for legitimate non-commercial or fair use. However it is clear from the Response that Respondent is a disgruntled former employee of Complainant and as such he cannot acquire rights in his ex-employee’s name. He admits that he has no rights in the “MUNCK” mark. Furthermore he has not been given permission to use this name. The doctrine of free speech cannot protect the content of his websites – which still have none of the speculative content referred to, despite some of them having been registered 7 months ago. Whilst Respondent may have the right of free speech, he may not use another’s trade or service mark in order to attract, confuse, and/or misdirect the relevant public, and the right to free speech is limited when it infringes an another party’s rights. However the content of the websites is not the issue, it is the domain names themselves and their confusing similarity to Complainant’s “MUNCK” mark that is.
Respondent’s registration of not one or two, but 15 domain names is evidence on Respondent’s non-legitimate use of them. There is, as yet, nothing in any of the disputed domain names themselves or the message posted on them to indicate that it is a protest or complaint site.
Complainant alleges that Respondent’s motives in registering the disputed domain names is to tarnish its mark. His intent in using them is focussed on using the “MUNCK” mark for illegitimate purposes
Complainant further alleges that Respondent has transgressed at least four of the requirements for proving bad faith that are contained in pargarph 4(b) of the Policy.
Complainant sets out in great detail the circumstances that led up to the registration by Respondent of several of the disputed domain names in the clear knowledge that several of Complainant’s partners would be leaving in the future. In Complainant’s opinion this is evidence that Respondent registered the names in order to prevent Complainant from reflecting its trademark in a corresponding domain name and indicates a pattern.
Complainant also contends that the registration of the disputed domain names was clearly an attempt to disrupt Complainant’s business and that Respondent uses the names to intentionally attract internet users to his websites by creating a likelihood of confusion.
As noted above, Complainant filed a second Additional Response but this was rejected by the Forum and the Panel. Not only was it addressed to the Panel directly (although care of the Forum) but it also offended against Rule 7(e) of the Forum’ Supplemental Rules which states that each party to a dispute is limited to filing only one additional submission. The Panel has neither opened nor read this second Additional Submission.
Respondent
In his Additional Response, Respondent repeats many of his former arguments and statements, but makes the following general assertions –
· He has previously transferred domains to complainant, without cost and at the request of Complainant.
· He has no commercial use or interest in his websites, nor are there any goods or services for sale on any of them.
· He does not perform, offer, or otherwise attempt to provide services that are in competition with those performed by the Complainant.
· He did not register the domain name “munckwilson.com”, which is the present domain of the Complainant, nor was any attempt made to prohibit the Complainant from obtaining the “munckwilson.com “ domain.
· Complainant has never used the alleged mark “Munck” to provide legal services (or any other services) aside from using the surname “Munck” in conjunction with other surnames. In support of this argument, Respondent filed Affidavits from two former partners of Complainant both of whom state that the Complainant firm was never referred to as “the Munck firm” either within the firm itself or in its advertisements, on its website, or in its stationery, or in any of its contracts or its pleadings.
· The name “Munck” is not, as Complainant alleges, a dominant element in any of the disputed domain names, it is merely one surname amongst others.
· It is misleading for Complainant to ask the Panel to assume that at some point in the future, he will add content to the websites at the disputed domain names.
· There is no proof that he has indulged in any activity designed to tarnish the alleged mark MUNCK.
· He is not a competitor of Complainant and he has not disrupted the latter’s business.
Complainant is a US law firm based in Dallas, Texas with clients across the USA and around the world, most of whom are technology companies. The firm specializes in trials, transactions, and technology. Its senior partner is Mr. William A. Munck and the firm itself has had a number of different names since 2000 in almost all of which the name ‘Munck’ has appeared, latterly as the first name.
Complainant already owns registrations of the domain names <davismunck.com>, <munckbutruscarter.com>, <munckbutrus.com>, <munckcarter.com>, <munckwilson.com> , and <munckwilsonmandala.com>.
Respondent, Mr. David Roe, was at one time employed by the Complainant firm. It is not clear when he left or in what circumstances, but he is described by Complainant as “a disgruntled former employee” and he has not objected to this description.
Each of the disputed domain names, which were registered by Respondent at different times between August 2011 and January 2012, contain the name ‘Munck’ and nine of them also contain the names of some of the existing or former partners of the Complainant firm, namely Messrs. Mandala, Kalibhai, McCutcheon, and Smith.
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 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."
Before deciding on the question of similarity, the Panel must first address the key question of whether Complainant has any trademark or service mark rights in the name MUNCK. Complainant claims that it does, a fact which Respondent strongly denies.
It is well established that, in order to satisfy paragraph 4(a)(i) of the Policy, it is not necessary to produce evidence of the actual registration of a trademark or a service mark. Common law or unregistered rights will suffice and there have been many Decisions in which it has been held that common law rights are sufficient in this regard. An early example was Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000), but see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum March 8, 2007) in which it was found that paragraph 4(a)(i) of the Policy does not require a trademark registration if a complainant can establish common law rights in its mark, as well as Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) which found that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under the Policy.
Paragraph 4(a)(i) of the Policy makes it clear that it is only necessary for a Complainant to have ‘rights’ in a name that is identical or confusingly similar to a Respondent’s domain name. But has Complainant in this case proved that it has rights in the name MUNCK – apart from the use of this name as part of the different corporate titles which it has used over the years?
Whilst this surname may be unusual, it does appear to be unique when it comes to the provision of legal services. Certainly, neither party has produced evidence of any other law firm with a name that includes ‘Munck’, and apparently Mr. William A Munck is the only attorney licensed to practice in Texas with this surname. He is also the only patent attorney with this name registered to practice before the USPTO.
Complainant did a Google search for the words ‘Munck’ and ‘law’ and annexed to the Complaint a copy of the first page from this search. Of the ten entries thereon, nine referred to itself and the tenth to a Kirsten Munck who lived in the 17th century.
However Respondent has filed evidence proving, so he says, that there are ‘hundreds’ of listings for the name Munck in telephone directories. However in fact this evidence lists only 89 persons with that name, all of them in the USA, and none of them in Texas which is where Complainant is based.
The Panel has concluded that Munck may not be a very common name, but that is not to say it has become distinctive of Complainant. More evidence would be needed for that.
It is clear that personal names can be sufficient for the purposes of the Policy, and on this particular question, the WIPO Overview of Panel decisions on the UDRP states, in connection with the claim for rights in a personal name that “The name in question needs to be actually used in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP. Merely having a famous name (such as a businessperson who does not actually use his or her name as an identifier for the business engaged in, or a religious leader), or making broad unsupported assertions regarding use of such name in trade or commerce, would not necessarily be sufficient to show unregistered trademark rights.” In this case, the Panel has looked in vain for any evidence on the part of Complainant for the use of the name MUNCK by itself.
Indeed, Respondent has also filed sworn Affidavits from two former partners in the Complainant law firm, both of whom state that the firm was never referred to as “the Munck firm” either within the firm itself or in its advertisements, or on its website, or in its stationery, or in any of its contracts or its pleadings, and that the name Munck was never intended to be a mark that had any meaning other than to identify Mr. William Munck. However the Panel notes that both of these former partners have left the firm and so may have an ulterior motive in saying this.
Complainant has referred to the case of Nowitzki v. Happy Bulldawg Entm’t, FA 1400861 (Nat. Arb. Forum Sept. 8, 2011) in support of its proposition that a mark satisfies the Policy where the mark is comprised of the surnames of the law firm’s previous partners. However in that case evidence was filed showing that the Complainant’s first name – Dirk – had acquired “significant secondary meaning within the American sports, entertainment and public service communities throughout the United States and the world and constitutes a valid common law trademark.”
Complainant might also have referred to the case of Daly & Figgis Advocates v. Tilleman, D2011-0153 (WIPO Feb. 15, 2011), in which the Respondent had registered the name of the Complainant as a domain name. However Complainant was a very old and well established Kenyan law firm, which had been founded in 1899, and which was the owner of a pending trademark application for DALY & FIGGIS which had been advertised two months previously. On the strength of this mark and the Complainant’s extensive use of its firm’s name, the Panel found that the Complainant’s name was confusingly similar to the domain name <dalyfiggis.com>.
In the opinion of the Panel, of more relevance are three cases in which the facts are not dissimilar to the present case, namely Mashberg v. Cox, D2011-0677 (WIPO June 30, 2011), Fagin v. Cox, D2011-0678 (WIPO June 30, 2011), and Leccese v. Cox, D2011-0679 (WIPO June 30, 2011). In all of them the Complainants were partners in a law firm (Proskauer Rose LLP) and the Respondent (Crystal Cox) had registered each of their personal names as domain names and posted defamatory comments that were highly critical of each partner as well as of the law firm. In each of these cases, the same Panel in each of them found that, although “the record shows that Complainant is a highly respected, prominent lawyer who is a partner with a major law firm. there is insufficient evidence here that Complainant markets or provides services independently of the Proskauer law firm. Rather it appears that the Proskauer law firm is the platform on which Complainant provides his legal services. Nor is there any evidence of record that Complainant has spent money advertising his name apart from the Proskauer firm, or billed clients in his own name. Further there is insufficient evidence in the record that the legal community regards Complainant as the driving force behind, or the alter ego, of the Proskauer firm.
Also relevant are the following cases –
1. Whitman v. Domains For Sale, D2008-1534 (WIPO Jan. 12, 2008) in which the Panel concluded that “… fame alone is not sufficient to establish common law trademark or service mark rights in a personal name. Rather, the Complainant’s personal name must be used such that a relevant segment of the public comes to recognize her name as a symbol that distinguishes her services from those of similarly situated service providers.”
2. Asper v. Commc’n X Inc., D2001-0540 (WIPO June 21, 2001) in which the Panel noted that in all of the cases involving a personal name, a Complainant was only successful where “he or she either used the personal name in question as a marketable commodity, allowing his or her name or mage to be used for a fee, to promote someone else’s goods or services, or for direct commercial purposes in the marketing of his or her own goods or services”.
3. Mittal v. info@setrillonario.com, D2010-0810 (WIPO July 16, 2010) in which it was said that “in this case there is little evidence that the Complainant is a celebrity , let alone that her name has acquired a secondary meaning so as to function as an identifier of any particular goods or services.”
Having not established any of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <muncklawfirm.com>, <muncklaw.com>, <munck-law.com>, <muncklawpartners.com>, <munckpartners.com>, <munckassoc.com>, <munckmandala.com>, <munckmandalaalibhai.com>, <munckalibhai.com>, <munckalibhailaw.com>, <munckalibhailawfirm.com>, <munckalibhaimandala.com>, <munckalibhaillc.com>, <munckmccutcheon.com>, and <muncksmith.com> domain names REMAIN WITH Respondent.
David H Tatham, Panelist
Dated: March 28, 2012
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