Steven J. Schwartzapfel and Schwartzapfel Lawyers, P.C. v. Barrett Sharpe / Legal Hub, LLC
Claim Number: FA1403001547763
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 / Legal Hub, LLC (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <schwartzapfellawyers.com> and <socsecuritydisability.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 10, 2014; the National Arbitration Forum received payment on March 10, 2014.
On March 10, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <schwartzapfellawyers.com> and <socsecuritydisability.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 March 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 2014 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@schwartzapfellawyers.com, postmaster@socsecuritydisability.com. Also on March 13, 2014, 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 April 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainants
Complainants made the following contentions.
i. Complainants, Steven J. Schwartzapfel and Schwartzapfel Lawyers, P.C., uses the SCHWARTZAPFEL LAWYERS P.C. mark in connection with a New York-based legal practice which predominantly focuses on personal injury cases.
ii. Complainant has been in legal existence since April 24, 2012.
iii. The <schwartzapfellawyers.com> domain name is confusingly similar to Complainant’s SCHWARTZAPFEL LAWYERS P.C. mark.
i. Respondent has no rights or legitimate interests in the disputed domain names.
ii. Respondent is not commonly known by the disputed domain names.
iii. Respondent is using the disputed domain names to openly defame Complainant.
i. The domain names were registered and are being used in bad faith.
ii. Respondent is using the domain names solely for the purpose of openly defaming Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainants, Steven J. Schwartzapfel and Schwartzapfel Lawyers, P.C., use the SCHWARTZAPFEL LAWYERS P.C. mark in connection with a New York-based legal practice which predominantly focuses on personal injury cases.
2. Respondent registered the <schwartzapfellawyers.com> domain name on April 28, 2012; Respondent registered the <socsecuritydisability.com> domain name on August 26, 2012.
3. Respondent is using the <schwartzapfellawyers.com> domain name solely for the purpose of openly defaming Complainant.
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 Complainants’ 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.”).
The first question that arises is whether Complainants have rights in a trademark or service mark on which it can rely. Complainants argue that they both have rights in the SCHWARTZAPFEL LAWYERS P.C. mark and that they use it in connection with a New York-based legal practice which predominantly focuses on personal injury cases. The Panel finds that although Complainants do not have a trademark registration for SCHWARTZAPFEL LAWYERS P.C. , Policy ¶ 4(a)(i) does not require that the trademark relied on must be registered , so long as Complainants can prove common law or unregistered trademark rights. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). The question therefore is whether the Complainants are able to establish common law trademark rights to SCHWARTZAPFEL LAWYERS P.C. The Panel finds that the Complainants have established common law trademark rights to SCHWARTZAPFEL LAWYERS P.C. That is so for the following reasons.
Complainant alleges that it has been in legal existence since April 24, 2012, and that they have used the name Schwartzapfel Lawyers P.C. regularly and continuously since that date as the name of their law firm. That submission is supported by the evidence. It is also apparent from the evidence that the mark incorporates Mr. Schwartzapfel surname and that he uses the name in his law practice to identify the practice, where it is situated and the work that it does. Thus, the Panel finds that Complainants’ continuous and regular use of the SCHWARTZAPFEL LAWYERS P.C. mark shows common law rights in the mark under Policy ¶ 4(a)(i) in which both Complainants have rights.
The Complainants have thus established that they have trademark rights in SCHWARTZAPFEL LAWYERS P.C. and that they may rely on that trademark for the purposes of the Complaint in so far as it relates to the disputed domain name <schwartzapfellawyers.com>.
The Complainants are also required to establish trademark rights for the purposes of the Complaint in so far as it relates to the disputed domain name <socsecuritydisability.com>. The Panel notes in this regard that Complainants do not allege that they have rights in the SOC SECURITY DISABILITY mark or any other trademark that could be relied on with respect to that domain name and that they have made no submissions to that effect or why an order should be made to transfer that domain name to the Complainants.
The second question that arises is whether the disputed domain name <schwartzapfellawyers.com> is identical or confusingly similar to Complainants’ SCHWARTZAPFEL LAWYERS P.C. mark. Complainant argues that the <schwartzapfellawyers.com> domain name is confusingly similar to Complainant’s SCHWARTZAPFEL LAWYERS P.C. mark. The Panel notes that Respondent includes Complainant’s mark in its entirety, while removing the letters “P.C.” Respondent’s removal of letters in a mark does not distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Respondent also omits the space in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” The Panel concludes that Respondent’s elimination of spaces and addition of a gTLD is inconsequential to a Policy ¶ 4(a)(i) analysis. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Thus, the Panel holds that Respondent’s <schwartzapfellawyers.com> domain name is confusingly similar to Complainant’s SCHWARTZAPFEL LAWYERS P.C. mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish with respect to the <schwartzapfellawyers.com> domain name.
As Complainants do not allege that they have rights in a trademark with respect to the <socsecuritydisability.com> domain name, the Panel is unable to make any findings as to whether that domain name is identical or confusingly similar to a mark in which Complainant has rights.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises with respect to the <schwartzapfellawyers.com> from the following considerations:
(a) Respondent has chosen to take Complainant’s SCHWARTZAPFEL LAWYERS P.C. mark and to use it in its domain name, making merely minor alterations
to the trademark when incorporating it into the domain name;
(b)Respondent has used the disputed domain name solely for the purpose of openly defaming Complainant.
(c)Respondent has engaged in these activities without the consent or
approval of Complainant;
(d) Complainant contends that Respondent is not commonly known by the <schwartzapfellawyers.com> domain name. The Panel notes that Respondent has not submitted any evidence showing that it is commonly known by the domain name. Further, the Panel notes that the WHOIS information identifies “Barrett Sharpe / Legal Hub, LLC” as the registrant of the disputed domain name. Complainant submits that Respondent is a former employee of Complainant. In Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000), the panel found that a former employee does not acquire rights or legitimate interests in a domain name identical to the former employer's trademark. Accordingly, the Panel holds that Respondent is not commonly known by the <schwartzapfellawyers.com> domain name pursuant to Policy ¶ 4(c)(ii). The Panel again notes that the <socsecuritydisability.com> domain name is ultimately unrelated to any potential trademark held by Complainant;
(e) Complainant argues that Respondent is using the <schwartzapfellawyers.com> domain name to defame Complainant. The Panel observes that the domain name resolves to a website called “RipoffReport.” See Complainant’s Exhibit H. Complainant contends that Respondent’s disputed domain name provides only a series of explicit insults aimed at attacking Complainants’ reputation and business. In Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001), the panel found that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark. As the Panel finds that Respondent has created the disputed domain name for the purpose of criticizing Complainant and not for a legitimate purpose, the Panel holds that Respondent is not using the <schwartzapfellawyers.com> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. The Panel notes again that the <socsecuritydisability.com> domain name is ultimately unrelated to any potential trademark held by Complainant.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed <schwartzapfellawyers.com> domain name.
Complainant has thus made out the second of the three elements that it must establish with respect to the <schwartzapfellawyers.com> domain name.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the <schwartzapfellawyers.com> disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, the Panel observes that Complainant s do not list any of the traditional Policy ¶ 4(b) factors to show that Respondent has acted in bad faith. However, the Panel finds that although Complainant does not allege bad faith under any of the typical Policy ¶ 4(b) circumstances, the examples of bad faith in Policy ¶ 4(b) are meant to be illustrative and not exhaustive. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). Thus, it is open to the Panel to consider other arguments to find that Respondent has acted in bad faith under Policy ¶ 4(a)(iii).
Secondly, Complainant argues that Respondent is using the <schwartzapfellawyers.com> domain name solely for the purpose of openly defaming Complainant. The Panel notes that the domain name resolves to a website called “RipoffReport.” See Complainant’s Exhibit H. Complainants assert that the disputed domain name is not being used for any other purpose than to humiliate Complainant publicly and wrongfully to call into question the Complainants’ character and business. As the Panel finds that Respondent registered the disputed domain name with the intention of causing damage to Complainants, the Panel holds that Respondent’s registration of the <schwartzapfellawyers.com> domain name is in bad faith pursuant to Policy ¶ 4(a)(iii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith).
Thirdly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the <schwartzapfellawyers.com> domain name and in view of the conduct that Respondent has engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
The Panel again notes that the <socsecuritydisability.com> domain name is ultimately unrelated to any potential trademark held by Complainant.
Complainant has thus made out the third of the three elements that it must establish with respect to the <schwartzapfellawyers.com> domain name.
Having established all three elements with respect to the<schwartzapfellawyers.com> domain name required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <schwartzapfellawyers.com> domain name be TRANSFERRED from Respondent to Complainants.
Having not established all three elements required under the ICANN Policy with respect to the <socsecuritydisability.com> domain name, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <socsecuritydisability.com> domain name REMAIN WITH Respondent.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 15, 2014
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