WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Frank, Weinberg & Black P.L. v. Allison D’Andrea

Case No. D2013-1578

1. The Parties

The Complainant is Frank, Weinberg & Black P.L. of Plantation, Florida, United States of America represented by Malin, Haley, DiMaggio & Bowen, P.A., United States of America.

The Respondent is Allison D’Andrea of Aventura, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <frank-weinberg-black.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 9, 2013. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2013, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 17, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 8, 2013.

The Center appointed Richard G. Lyon as the sole panelist in this matter on October 11, 2013. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. The Panel finds that it was properly constituted and has jurisdiction to decide this administrative proceeding.

4. Factual Background

The Complainant is a commercial law firm located in Plantation, Florida, United States. It has served clients in Florida and throughout the United States for more that twenty-five years. Since July 2000, it has used its current name.

The Respondent registered the disputed domain name on February 27, 2013. The website to which the disputed domain name resolves is a page that includes adverse commentary and opinion about the Complainant and its lawyers. From the text on the website, it appears that the Respondent is or was affiliated with a dissatisfied client of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

1. While the Complainant holds no registered trademarks or service marks, it has used its name as its principal business identifier for more than a decade. It advertises heavily under its firm name and has been rated under that name. The Complainant thus holds common law trademark rights in its name that are sufficient to invoke the Policy. The disputed domain name is identical to the Complainant’s name except for the generic top-level domain (“gTLD”) and two dashes and is thus confusingly similar to the Complainant’s name.

2. The Respondent as an individual has never been known by any name incorporating the disputed domain name or any of the names included in the Complainant’s firm name. The Complainant has never authorized the Respondent to use the disputed domain name. The Respondent has never made a bona fide use of the disputed domain name and instead uses it only for “false, scandalous, spurious, and slanderous material concerning Complainant’s business” and “slanderous commentary” regarding some of the Complainant’s individual lawyers. Thus, the Respondent is using the disputed domain name to tarnish the reputation of the Complainant, a fact that distinguishes this proceeding from cases involving “legitimate criticism.”

3. The Respondent registered and is using the disputed domain name to “sully[] [the Complainant’s] reputation and “divert[] clients and potential clients to a website tarnishing Complainant’s business and trademarks,” conduct that is indicative of bad faith. Further, the Respondent is preventing the Complainant from using the disputed domain name, which is identical but for punctuation to the Complainant’s firm name and trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Effect of the Respondent’s Default.

The Respondent’s default does not result in an automatic decision in the Complainant’s favor or an admission of the truth of the factual allegations in the Complaint. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.6. The Complainant must still establish with competent evidence each of the operative sections of paragraph 4(a) of the Policy.

B. Identical or Confusingly Similar

As the Complainant argues, the disputed domain name is identical to the Complainant’s name except for the gTLD and two dashes that are not relevant in determining confusing similarity under paragraph 4(a)(i) of the Policy. The Complainant’s evidence suffices to show common law rights in its name, and in any event, the content at the disputed domain name indicates that the Respondent was well aware of the Complainant’s use of its name as a commercial identifier. The Complainant has established this Policy element.

C. Rights or legitimate interests

The Complainant has also established this second Policy requirement, though not for the reasons advanced in the Complaint.

As UDRP panels have stated on many occasions, it is rarely possible in a UDRP proceeding, with no discovery or independent or party-directed fact-finding mechanisms, to ascertain if website content is defamatory (or, to use the Complainant’s word, scandalous). On the Panel’s reading, almost all of the Respondent’s commentary appears to be opinion. Some statements, if proven false (as the Complainant asserts they are), might furnish grounds for a libel action. The Panel however has no means available to test the veracity of these statements or other facts that might aid a defense (such as the Complainant or its lawyers being public figures); the Panel also has no desire to do so.

Given this necessarily limited record, the Panel is similarly not in a position to ascertain if the Complainant’s reputation or marks have been tarnished, or if tarnishment was the Respondent’s intent in establishing her website. None of the UDRP cases that the Complainant cites, two of which were brought by the Complainant, draws the distinction between tarnishment and criticism that the Complainant relies upon under paragraph 4(a)(ii) of the Policy.

The Complainant, a law firm, and its representative, another law firm, should know better than anyone that in the United States, a citizen’s free speech turns not on elegance of the prose or stridency of the speaker’s tone of voice.¹ Intemperance, bad taste, and hyperbole are protected unless defamatory or obscene. As noted, this Panel cannot make a determination on that in this UDRP proceeding. Instead, he will treat the Respondent’s website as an ordinary criticism site.

The Respondent’s site contains no commercial content, requiring the Panel to decide whether purely critical content is “a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue,” and accordingly, a legitimate interest in the disputed domain name. Policy, paragraph 4(c)(iii).

As stated recently in Yellowstone Mountain Club LLC v. Offshore Limited D and PCI, WIPO Case No. D2013-0097, a domain name that incorporates a mark or a mark’s dominant feature without an addition (such as “sucks” or “scandal”) that should make clear to an Internet user that he is not headed to the mark owner’s site does not give a legitimate interest to the Respondent to use the trade name as part of the domain name under the Policy.²WIPO Overview 2.0, paragraph 2.4, View 1. On this analysis, the Respondent lacks a right or legitimate interest in the disputed domain name.

The distinction between <mark.tld> and <mark + derogatory term.tld> was based at first upon the view that a domain name that by itself criticized the mark owner constituted protected free speech, see Joseph Dello Russo M.D. v. Michelle Guillaumin, WIPO Case No. D2006-1627, but later expanded to “a more general ground. So long as the disputed domain name itself does not create the lack of a right or legitimate interest by misleading the public as to source, a purely criticism site constitutes ‘a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue’, that is therefore within paragraph 4(c)(iii)’s safe harbor.” Yellowstone Mountain Club, supra. In that case and this one, the lack of legitimacy is determined regardless of the nature of the criticism on the website in question.

The issue is not the Respondent’s unquestioned right to criticize; rather, the Panel looks to the legitimacy of her right to use the Complainant’s mark to do so. This approach constitutes the basis for many UDRP decisions in situations not involving criticism – for example, a reseller’s right to use the manufacturer’s mark or a domainer’s right to use another’s mark for pay-per-click links to third-party websites. A page of hyperlinks by itself is lawful and (to use the word in its everyday sense) legitimate. What may put it afoul of the Policy is unauthorized use of the mark, for a domainer to increase its pay-per-click revenue or for a critic such as the Respondent to increase the size of her audience, in either case by tricking the public into thinking that the mark owner sponsors or endorses the site. The legitimacy of the soapbox chosen for the criticism, not the site’s content, is the focus.

D. Registered and Used in Bad Faith

Several proponents of WIPO Overview 2.0, paragraph 2.4, View 2, have pointed out that criticism sites do not fit neatly into any of the four examples of evidence of bad faith listed in paragraph 4(b) of the Policy.³ There is no attempt to sell the disputed domain name, making paragraph 4(b)(i) inapplicable. While (as the Complainant argues in this case) a disputed domain name that incorporates a mark exactly (or as here with only immaterial differences) does “prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name,” paragraph 4(b)(ii) of the Policy has a proviso: “provided that you have engaged in a pattern of such conduct.” No such pattern is usually pleaded in criticism cases, and none is alleged or proven in this one. The parties here are not competitors, and the Respondent seeks no commercial gain, placing the case outside paragraphs 4(b)(iii) and 4(b)(iv).

Paragraph 4(b)’s examples are expressly non-exclusive, however, and the deceptive use of the Complainant’s mark, unadorned, makes out bad faith under the Policy. See Yellowstone Mountain Club, supra; The First Baptist Church of Glenarden v. Melvin Jones, WIPO Case No. D2009-0022; and see especially the example described in Grupo Costamex, SA de C.V. v. Stephen Smith and Oneandone Private Registration / 1&1 Internet Inc., WIPO Case No. D2009-0062. As every critic by definition registers its target’s mark with knowledge of the mark owner and the mark, both registration and use in bad faith are established in this case.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <frank-weinberg-black.com> be transferred to the Complainant.

Richard G. Lyon
Sole Panelist
Date: October 18, 2013

¹ Criticism, even unfair and vulgar criticism, goes with any service business.

² Any reader interested in the reasoning underlying this approach may review 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461, and Justice for Children v. R neetso / Robert W. O’Steen, WIPO Case No. D2004-0175.

³ See, e.g., Yellowstone Mountain Club, supra (dissenting opinion); Joseph Dello Russo M.D. v. Michelle Guillaumin, supra (D. Bernstein, dissenting).