Steven J. Schwartzapfel and Schwartzapfel Lawyers, P.C. v Barrett Sharpe
Claim Number: FA1310001523900
Complainant is Steven J. Schwartzapfel and Schwartzapfel Lawyers, P.C. (“Complainant”), represented by James M. Wicks of Farrell Fritz, P.C., New York, USA. Respondent is Barrett Sharpe (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stevenschwartzapfel.com>, registered with GoDaddy.com, LLC.
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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 10, 2013; the National Arbitration Forum received payment on October 10, 2013.
On October 11, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <stevenschwartzapfel.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 October 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 2013 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@stevenschwartzapfel.com. Also on October 18, 2013, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
Respondent registered the <stevenschwartzapfel.com> domain name on April 26, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on April 26, 2013.
Complainant established that it had rights in the mark contained in the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name 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."
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.
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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants in this matter: Steven J. Schwartzapfel and Schwartzapfel Lawyers, P.C. Complainant Steven J. Schwartzapfel is a practicing attorney and partner of Complainant Schwartzapfel Lawyers, P.C. law firm. As such, the complaining parties argue that they jointly use Complainant’s name, SCHWARTZAPFEL LAWYERS P.C., in marketing and promoting the firm’s legal services.
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it treats them all as a single entity in this proceeding. The Complainants will be collectively referred to as “Complainant” through the decision.
The Panel agrees that even though Complainant does not claim a national trademark registration in this dispute, such registration is not necessary so long as Complainant establishes secondary meaning in some mark so as to satisfy Policy ¶ 4(a)(i). See, e.g., Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding 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 Policy ¶ 4(a)(i)).
Complainant contends that it has been in existence since April 24, 2012 and has regularly and commonly used the name SCHWARTZAPFEL LAWYERS P.C. in commerce. Complainant claims that it operates a website through the <fightingforyou.com> domain name, wherein the SCHWARTZAPFEL LAWYERS P.C. mark is used. Complainant argues that this <fightingforyou.com> domain name describes the legal services provided by Complainant, illustrating that Complainant focuses predominately on personal injury cases in New York. See Amended Complaint, at Attached Exs. E–F. The Panel notes that Complainant provides evidence that it has registered its law firm with the New York Secretary of State, and that Mr. Schwartzapfel has been licensed to practice law by the Appellate Division of the Supreme Court of New York. See Amended Complaint, at Attached Ex. D. The Panel notes that the record evidences the use of Mr. Schwartzapfel’s name in the business names of various law firms in which Mr. Schwartzapfel served as partner throughout the past decades. See id. The Panel here agrees that Respondent has shown common law rights in the SCHWARTZAPFEL LAWYERS P.C. mark dating back to April 24, 2012. See, e.g., AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). However, as Complainant has not specifically alleged any use of the SCHWARTZAPFEL name as a mark in itself, the Panel agrees that the existence of now defunct partnerships that use the term “SCHWARTZAPFEL” in connection with the surnames of former partners of Mr. Schwartzapfel cannot serve as a continuous and public use of the SCHWARTZAPFEL mark on its own. See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999). Thus, the Panel agrees that Complainant has established secondary meaning, and thus Policy ¶ 4(a)(i) rights, in its SCHWARTZAPFEL LAWYERS P.C. mark dating back no earlier than the April 24, 2012 organization of the business under the laws of New York.
Complainant next argues that Respondent’s <stevenschwartzapfel.com> domain name features the full SCHWARTZAPFEL portion of Complainant’s SCHWARTZAPFEL LAWYERS P.C. business name, and affixes Mr. Schwartzapfel’s first name, “steven” to the domain name. The Panel initially determines that the addition of the generic top-level domain (“gTLD”) “.com” is not relevant to this analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). In the case of WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001), the panel agreed that a domain name could remain confusingly similar to a mark when the distinctive terms of the mark remained, even though the respondent deleted several descriptive terms from the trademark. Thus the Panel agrees that the removal of the term “lawyers” and the business designation “P.C.” do not necessarily defeat the confusing similarity of the domain name. Finally, the panel in Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) held that adding a term that is related to the goods or services enhances the confusing similarity of the domain name. The Panel here agrees that adding the term “steven” enhances confusing similarity, as it makes the domain name identical to the name of Complainant’s primary attorney, Mr. Steven Schwartzapfel, Esq. Therefore the Panel agrees that the <stevenschwartzapfel.com> domain name is confusingly similar to the SCHWARTZAPFEL LAWYERS P.C. mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant notes that Respondent is Mr. Barrett Sharpe. The Panel agrees that this is verified by the domain name’s WHOIS information. The Panel here agrees that there is simply no evidence in the record to suggest that Respondent has ever been known by the <stevenschwartzapfel.com> domain name under Policy ¶ 4(c)(ii). See, e.g., Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant argues that Respondent is using the <stevenschwartzapfel.com> domain name to promote a gripe site wherein Respondent attacks and insults Mr. Schwartzapfel for various business and management decisions that were made by Mr. Schwartzapfel in the past. The Panel notes that the domain name resolves to a website in which Respondent discusses Mr. Schwartzapfel’s various business partners and the manner in which these partners were terminated from Mr. Schwartzapfel’s employ. See Amended Complaint, at Attached Ex. G. The Panel further notes that Respondent provides the personal and business addresses for Complainant, along with the masthead reading “Steven Schwartzapfel is a Liar.” See id. The Panel here agrees that while Respondent may or may not have an interest in freely stating his opinions of Complainant under applicable federal and constitutional law, such free speech rights do not extend to the use of a confusingly similar domain name for such purposes. See, e.g., Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“the domain name <eastman-chemical.com> is not protected by free speech although the content of the website supported by this domain name is protected. Free speech cannot be used as a defence against the use of a confusingly similar mark as a domain name.”). Thus the Panel agrees that although the content of the domain name is appropriate in another setting, Respondent’s use of the <stevenschwartzapfel.com> domain name is not, as it stands, a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the confusingly similar domain name.
Complainant argues that Respondent is merely a former employee of Complainant and Respondent registered the <stevenschwartzapfel.com> domain name under orders to register a number of domain names for Complainant’s business. Complainant also suggests that Respondent instead registered the domain names in his own name, contrary to his orders from Complainant. The Panel notes that Complainant provided Respondent with a termination notice, which encompassed the surrender of domain names and other proprietary information to Complainant. See Amended Complaint, at Attached Ex. I. In the case of Sci., Eng’g & Tech. Assocs. Corp. v. Freeman, FA 637300 (Nat. Arb. Forum Mar. 14, 2006), the panel did not believe that the respondent could have any Policy ¶ 4(a)(ii) rights or legitimate interests in a domain name that was registered at the request of the complainant/employer, presumably for the benefit of the complainant/employer, but which was in fact held onto and used by the respondent as leverage over the complainant. The Panel likewise agrees that Respondent has not evidenced any Policy ¶ 4(a)(ii) rights or legitimate interests respecting the <stevenschwartzapfel.com> domain name.
The Panel agrees that although Complainant does not specifically argue bad faith under the examples listed in Policy ¶ 4(b), Complainant can still prevail so long as it can evidence some conduct indicating bad faith at registration and through use of the domain name. See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”).
Complainant argues that Respondent surreptitiously registered the <stevenschwartzapfel.com> domain name in his own name solely for purposes of openly defaming Complainant. Complainant explains that Respondent even sent Complainant an e-mail in which Respondent gloats about his ability to defame and attack Complainant’s character through the <stevenschwartzapfel.com> domain name. See Amended Complaint, at Attached Ex. K. The Panel agrees that Respondent’s Policy ¶ 4(a)(iii) bad faith is present in this case through Respondent’s apparent interest in leveraging its control over the <stevenschwartzapfel.com> domain name to take advantage of Complainant. See DINOFLEX Mfg. Ltd. v. Recreational Tech. Indus. Ltd., FA 292846 (Nat. Arb. Forum Aug. 17, 2004) (“The Panel finds that Respondent registered and used the Disputed Domain Name in bad faith since Respondent wilfully registered the name despite its knowledge of Complainant’s rights in the PLAYTILES mark, which can be inferred from the involvement of Mr. Damberg in the industry and as a past or current employee of Complainant and Respondent respectively.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stevenschwartzapfel.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: November 19, 2013
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