Dewey Ballantine LLP v. Person Technology Group aka Traxi Technologies LLC, Lou Person, Robert J. DiSciullo, DiSciullo Botchman LLP
Case No. D2004-1032
1. The Parties The Complainant is Dewey Ballantine LLP, New York, New York, United States of America, represented by Dewey Ballantine LLP, United States of America.
The Respondent is Person Technology Group aka Traxi Technologies LLC, Lou Person, Fort Lee, New Jersey, United States of America and Robert J. DiSciullo, DiSciullo Botchman LLP, Purchase, New York, United States of America, represented by DiSciullo Botchman LLP, United States of America.
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2004. On December 8, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On December 9, 2004, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 15, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2005. The Response was filed with the Center on January 5, 2005.1 The Center appointed Frederick M. Abbott as the sole panelist in this matter on January 11, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background Complainant has registered the service mark DB on the Principal Register of the U.S. Patent and Trademark Office (USPTO), reg. no. 2,341,305, dated April 11, 2000, in international class (IC) 42, covering “legal services”, claiming date of first use and first use in commerce of September 4, 1990. Complainant has also registered the service marks DEWEY Ballantine and DEWEY Ballantine LLp. (Complaint, para. 11 and Exhibits A-C). Complainant is a general practice law firm based in New York, New York, USA, with offices located in seven countries. Complainant has over 500 attorneys in its practice. It shortened a longer name to “DEWEY BALLANTINE” in 1990, and became Dewey Ballantine LLP in 1997. (Complaint, paras. 8-9). Complainant has registered the domain name which it uses to host a public website, and which it uses in connection with a private intranet.
According to the Registrar’s Verification Report, the disputed domain name is registered in the name of Person Technology Group (PTG), with Lou Person the administrative contact. According to a Network Solutions WHOIS database search report submitted by Complainant, the record of registration of the disputed domain name was created on June 7, 2004. It appears that the name was registered by PTG on behalf of a client, Robert J. DiSciullo.
Complainant has transmitted several written cease and desist and transfer demands to Respondent.
After contacting and learning from Mr. Person of the client relationship between PTG and Mr. DiSciullo, Complainant contacted Respondent, Mr. DiSciullo, by telephone, objecting to his registration and use of the disputed domain name. Mr. DiSciullo advised Complainant that he planned to use the name in connection with his legal practice in Purchase, New York, USA. He advised that he was partner in the law firm DiSciullo Botchman LLP. Complainant says that Respondent indicated some willingness to consider transferring the disputed domain name and finding a new one, but appeared unwilling to do so for compensation limited to his cost of registration. Complainant has submitted an inquiry response sheet from the New York State Office of Court Administration showing that Mr. DiSciullo was listed on November 22, 2004, as practicing with the law firm DiSciullo & Eckhaus. Complainant says the Rules of the Chief Administrator of the Court (appended to the Complaint) required Respondent to amend his registration statement filed with the Chief Administrator within 30 days of a change.
Respondent Robert J. DiSciullo states that the law firm DiSciullo & Eckhaus merged with the law offices of Gary E. Botchman on March 23, 2004, to form DiSciullo Botchman LLP. A copy of the certificate of registration of LLP was filed with the New York Secretary of State on or about March 23, 2004, and is appended to the Response. (Response, para. 14, and Exhibit C). Respondent has also appended a copy of a formal business announcement of the firm merger sent to clients on or about April 15, 2004. (Id., Exhibit D).
Respondent currently uses the disputed domain name as part of his email address. The domain name also directs Internet users to a Network Solutions “under construction” parking page that includes several sponsored links to third party legal service providers.
The Registration Agreement in effect between Respondent and Network Solutions LLP, subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions A. Complainant Complainant asserts that it has rights in the service mark DB and that the disputed domain name is confusingly similar to its mark. Complainant alleges that Respondent has added generic terms commonly associated with law firms to the mark and that this does not distinguish the disputed domain name from the mark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because, inter alia, Respondent is not commonly known by the disputed domain name.
Complainant states that Respondent has registered and used the disputed domain name in bad faith because (a) he should have been aware of the mark when he registered the name because Complainant is well known in the same geographic areas, (b) Respondent admitted intending to use the name in his own legal practice and was willing to consider transferring it, (c) he is using the name to divert Internet users to third party legal sites by creating confusion as to Complainant’s sponsorship or affiliation, (d) he registered the name with intent to sell it to Complainant or a competitor, (e) use of the domain name is disrupting Complainant’s business and (f) Respondent’s registration prevents Complainant from registering its mark in a domain name.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to it.
B. Respondent Respondent contends that the disputed domain name is not confusingly similar to Complainant’s mark. He refers to two other service providers using domain names which he alleges are closer to Complainant’s mark than the disputed domain name. He also contends that the mental process by which an Internet user would confuse the disputed domain name with Complainant’s mark is too convoluted to create likelihood of confusion.
Respondent indicates that he has legitimate interests in the disputed domain name because at the time the name was registered he was known by the disputed domain name.
6. Discussion and Findings The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
In this case, the Respondent has filed a timely Response. The Panel is satisfied that the Respondent had adequate notice of the proceedings.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has submitted evidence of registration of the service mark DB on the Principal Register of the USPTO. Such registration establishes presumptive validity of the mark. Respondent has not challenged Complainant’s rights in the mark. The Panel finds that Complainant has rights in the service mark DB.
Complainant argues that the disputed domain name is confusingly similar to its mark because the terms added to its mark, “llp” and “law”, are commonly associated with law firms. Complainant says that Internet users seeing the domain name combining those common terms with its mark would be likely to confuse the domain name with its mark.
It is fairly well settled in dispute settlement under the Policy that a domain name formed by merely adding common descriptive or generic terms to a trademark typically does not distinguish the domain name from the mark sufficiently to avoid a finding of confusing similarity.2 In this case, however, it is not clear that the letters “llplaw” are sufficiently commonly understood by Internet users, including those familiar with the legal profession, such that combining them with Complainant’s DB mark necessarily gives rise to an association and confusion between the domain name and the mark.3 Complainant’s mark consists of two alphabetic characters that in themselves do not form a highly distinctive nark. As Respondent has noted, the same two letters constitute the well known abbreviated name of at least one other service provider, albeit in another field, “Deutsche Bank”. While the terms “llp” (for limited liability partnership) and “law” are commonly used by law firms and lawyers, when strung together with Complainant’s mark as “dbllplaw” the resulting acronym does not self-evidently convey meaning. Were this a conventional trademark infringement proceeding which allowed for more extensive evidentiary probing, more evidence from Complainant on the issue of consumer confusion, such as survey evidence, might help to establish the extent of an associative link between the mark and domain name. However, in light of the disposition of this proceeding below, the Panel here assumes without deciding that the disputed domain name is confusingly similar to a service mark in which Complainant has rights.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fideoffering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making 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.” (Policy, paragraph 4(c)).
Respondent has provided substantial evidence in the form of a certificate of registration of LLP and formal business announcements sent to firm clients that, at the time it registered the disputed domain name, it was commonly known as DiSciullo Botchman LLP. It is traditional in the legal profession in the United States, as evidenced by Complainant’s service mark, that law firms identify themselves (and others identify them) by the initials of their partners. It is reasonable to expect that Respondent would seek to register and use the domain name acronym “DB” to identify his firm. Assuming that this combination of alphabetic characters would already have been registered by others, it is also reasonable to assume that Respondent would seek to register “DB” with terms such as “llp” (which is part of its name) and law (which is its field of services) as an alternative. Respondent has done that, and has made use of the domain name so far in his email address and to direct Internet users to an “under construction” website (that includes several sponsored links).
Paragraph 4(c)(ii) of the Policy provides for the establishment of legitimate rights and interests in a domain name on the basis that a respondent has been commonly known by the domain name. Respondent’s registration and use of the dispute domain name does not fall squarely within this basis since there is no evidence that Respondent has been commonly known as “dbllplaw”, as such.
Paragraph 4(c)(iii) provides that a respondent may establish rights or legitimate interests in a domain name based on “fair use” of the domain name “without intent for commercial gain to misleadingly divert consumers”. In this case, Respondent is using the letters DB in a purely descriptive sense as an acronym for his law firm name, adding the further descriptive terms “llp” and “law”. Complainant’s rights in the DB mark do not empower it to prevent usage of the same term by others in a purely descriptive sense. See KP Permanent Make-Up v. Lasting Impressions, U.S. Sup. Ct., No. 03-409, decided December 8, 2004 (slip opinion). Complainant has not presented persuasive evidence that Respondent registered the disputed domain name with an intent for commercial gain to misleadingly divert consumers. There is no evidence that Respondent selected his new law firm partner (with the first initial “B”) so as to deceptively create the basis for confusion with Complainant’s firm. While Respondent may have neglected to perform the ministerial act of notifying the Chief Administrator of the Court of his change of address, the Policy does not regulate such conduct nor does the Panel find this material.4 The Network Solutions “under construction” domain name parking page does include several sponsored links to third party legal service providers, but in the overall context of this case, including the relatively weak (and remaining to be demonstrated) consumer association between Complainant’s mark DB and the disputed domain name , the Panel is unwilling to draw the conclusion that Respondent registered the disputed domain name to take advantage of the likely small monetary advantage (such as a reduction in domain name registration fees) that might result from allowing the links to be placed on his “under construction” page. Based on the foregoing factors, the Panel finds that Respondent is making fair use of Complainant’s mark in the disputed domain name and therefore has established legitimate interests in the disputed domain name.
Since Complainant has failed to demonstrate that Respondent lacks rights or legitimate interests in the disputed domain name and cannot prevail in this proceeding, the Panel will not consider the issue of bad faith registration and use.
The Panel notes that this is not a civil trademark infringement proceeding. In such a proceeding the parties may develop evidence concerning motives and conduct more complete than that considered here, and the Panel does not purport to evaluate what is not before it. This is a limited proceeding based on a circumscribed set of rules.
7. Decision For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Dated: January 27, 2005
1 Respondent initially transmitted his Response without attachment on January 4, 2005, and resent with attachment on January 5, 2005. The Panel finds that the Response was filed in a timely manner.
2 See, e.g,. The Orange Bowl Committee, Inc. v. Front and Center Tickets, Inc/ Front and CenterEntertainment, WIPO Case No. D2004-0947, decided January 20, 2005, and General Electric Companyv. FORDDIRECT.COM, INC., WIPO Case No. D2000-0394, decided June 22, 2000.
3 On the legal standards for assessing confusing similarity of terms, see, e.g., Zatarain’s v. Oak GroveSmokehouse, 698 F. 2d 786 (5th Cir. 1983) and AMF v. Sleekcraft Boats, 599 F. 2d 341 (9th Cir. 1979).
4 It is not readily apparent from the text of the rules appended by Complainant to its Complaint that a change in law firm partners (as opposed to a change in mailing address) is even within the scope of the required notifications, but the Panel sees no need to belabor this question. See New York Rules of the Chief Administrator of the Courts, §118.1(e), Complaint, Exhibit J.