WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Marvin Lundy and Law Offices of Marvin Lundy, LLP v. Scott E. Idmaond

(Scott E. Diamond)

Case No. D2001-1327

The Complainant is Marvin Lundy, an individual with address in Philadelphia, Pennsylvania, United States of America (USA), who is a member of a limited liability partnership, and Law Offices of Marvin Lundy, LLP, also with place of business in Philadelphia, Pennsylvania, United States of America.

The Respondent is Scott E. Idmaond, known as Scott E. Diamond, with address in Philadelphia, Pennsylvania, United States of America.

The disputed domain name is <marvinlundy.com>.

The registrar of the disputed domain name is Domain Bank, Inc., with business address in Bethlehem, Pennsylvania, United States of America.

The essential procedural history of the administrative proceeding is as follows:

(a) The Complainant initiated the proceeding by the filing of a complaint via courier mail received by the WIPO Arbitration and Mediation Center ("WIPO") on November 6, 2001. Following the receipt from WIPO of notice of technical deficiencies in the complaint, Complainant sent an amended complaint by e-mail received by WIPO on November 26, 2001, and by courier mail received on November 30, 2001. Complainant paid the requisite filing fees. On November 15, 2001, WIPO transmitted a Request for Registrar Verification to the registrar, Domain Bank, Inc., with the Registrar’s Response received by WIPO on November 16, 2001.

(b) On December 3, 2001, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail.

(c) On December 28, 2001, Respondent’s response was received in hardcopy by WIPO, having been dispatched by international air courier prior to the due date for response. Respondent also transmitted its response to Complainant.

(d) On January 15, 2002, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On January 16, 2002, the undersigned transmitted via telefax the executed Statement and Declaration to WIPO.

(e) On January 24, 2002, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by February 7, 2001. The Panel received a hard copy of the file in this matter by courier from WIPO.

(f) Following notification from the Panel of circumstances requiring an extension of the date for decision in this matter, WIPO notified the parties that the Panel had extended the projected date for a decision until February 14, 2002.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

Complainant Marvin Lundy is a law practitioner and is licensed to practice law in the state of Pennsylvania. He has apparently been so licensed since 1960. Mr. Lundy was a member of various law firms that included "Lundy" among names in the partnership name (e.g., "Manchel Lundy & Lessin"). The partnership "Haymond & Lundy" was dissolved on October 8, 1999 and, although the complaint is not clear on this point, it would appear that Mr. Lundy began doing business as "Law Offices of Marvin Lundy" after that date.

Complainant appears to assert a common law service mark right in the name "Marvin Lundy" on the basis that such name is inherently distinctive. Other than to state that Complainant is "a well known attorney at law in Philadelphia, Pennsylvania, and has been in practice for over forty years", Complainant has furnished no evidence of recognition of the name among consumers of legal services.

According to the registrar’s (Domain Bank, Inc.’s) verification response to WIPO, dated November 15, 2001, "Scott E. Idmaond" [sic] is the listed registrant of the domain name <marvinlundy.com>. According to that verification, "Diamond, Scott", is the Administrative Contact for the name. According to a Network Solutions’ WHOIS database printout submitted by Complainant, the record of registration for the disputed domain name was created on October 19, 1999 (Complaint, Exhibit A).

Complainant asserts in paragraph 15 of its complaint that "On information and belief, no other legal proceedings have been commenced or terminated in connection with or relating to the domain name MARVINLUNDY.COM". However, the record of legal proceedings commenced by Complainant against Respondent and others in connection with the dissolution of a prior partnership indicates that Complainant has asserted unfair competition claims regarding the disputed domain name in a U.S. state court proceeding (Marvin Lundy v. Robert Hochberg, John Haymond, Scott E. Diamond, et al., Court of Common Pleas, Philadelphia County, PA (No. 00676, Feb. Term 2001), at amended complaint, paras. 94 & 111), and has attempted to assert Lanham Act claims regarding the disputed domain name in a related federal court proceeding (John Haymond and Haymond, Napoli and Diamond v. Marvin Lundy, Civ. Action No. 59-5048, E.D. Penn., hearing transcript of January 8, 2001). (Response, para. 11.G.5 and Exhibits A-C.) These proceedings were consolidated and tried before a federal court, a jury finding against Complainant on breach of contract claims that were ultimately taken to trial.

It is common ground among the parties that Respondent was formerly associated with Mr. Lundy in different law firm permutations, and that the professional relationship between them was terminated in or about October 1999.

The disputed domain name has not been used in connection with an active Internet website. Respondent asserts that there is a website under construction that will be used to notify clients of Respondent (and others in former firms involving Mr. Lundy) regarding where Respondent and others are practicing law, as Mr. Lundy is alleged not to provide such information when contacted by Respondent’s clients.

By letter of October 26, 2001, Complainant via counsel sent a cease and desist and transfer demand to Respondent regarding the disputed domain name. By reply letter of October 30, 2001, Respondent replied that he would be interested in receiving legal substantiation for the demand, that he had received threats from Mr. Lundy in the past, and stated "Of course, if your client wishes to purchase the domain name from me in order to settle this dispute, I will entertain his offer."

The Service Agreement in effect between Respondent and Domain Bank, Inc. subjects Respondent to Domain Bank, Inc.’s dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration and use (Policy, para. 4(a)).

Complainant asserts that Marvin Lundy is a well known attorney who has practiced law in the same area for a substantial period of time (see Factual Background, supra). Complainant states, "The mark ‘Marvin Lundy’ is distinctive. It is misleading to use the mark, Marvin Lundy, because there is no person named Marvin Lundy associated with Respondent."

Complainant asserts that the disputed domain name is confusingly similar to its mark.

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent has not made a bona fide offering of goods or services under the name, has not been commonly known by the name, has not been authorized to use it, and has not made legitimate noncommercial or fair use of the name.

Complainant alleges that Respondent has registered and is using the disputed domain name in bad faith because: (a) he was aware of Complainant’s rights in its mark when he registered it; (b) use of the name to identify a website would create initial interest confusion, even if the site could ultimately be determined not to be affiliated with Complainant, and (c) Respondent’s offer to sell the disputed domain name to Complainant evidenced an intention to register and use it in bad faith.

Complainant requests the Panel to order the registrar to transfer the disputed domain name to it.

Respondent denies that Complainant has rights in "Marvin Lundy" as a mark. Respondent states that Complainant is not well known, and that "Marvin Lundy" is not inherently distinctive. Respondent asserts that "Marvin Lundy" is not a famous name.

Respondent asserts that there would be no confusion in the market place resulting from use of the disputed domain name "to advise the general public of the whereabouts of those formerly employed or partnered with Marvin Lundy."

Respondent asserts rights or legitimate interests in the disputed domain name. He asserts that use of the name to advise the public of contact information for prior associates and partners of Mr. Lundy would be "a legitimate, commercial and fair use" and that this "offers information that is useful to the general community at large."

Respondent states that he did not act in bad faith since his offer to sell the name to Complainant was in the nature of an offer to resolve a dispute.

Respondent denies that Complainant has accurately responded to whether there are or were other legal proceedings involving the disputed domain name, referring to certain litigation (see Factual Record supra).

Respondent requests that the Panel deny Complainant’s request for an order to transfer the disputed domain name.

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 for Uniform Domain Name Dispute Resolution Policy (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., paragraph 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings. Respondent has filed a detailed response to the complaint indicating that he received notice and was afforded an adequate opportunity to respond.

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.

Establishing abusive domain name registration and use presupposes the existence of a valid trademark or service mark.

Complainant has not registered "Marvin Lundy" as service mark on the Principal Register at the USPTO[1]. Complainant’s asserted mark does not enjoy a presumption of secondary meaning under federal law based on registration[2].

Common law rights in a trademark or service mark may arise under the federal Lanham Act or state law[3] , and a substantial number of decisions by administrative panels under the Policy have been based on common law trademark or service mark rights[4]. A principal issue in this proceeding is whether Complainant has established such common law rights.

It is a basic rule of service mark law in the United States that personal names (combining a first name and surname) are not considered inherently distinctive[5]. In order to establish common law service mark rights in a personal name, it is necessary to show that the name has acquired secondary meaning among consumers in the relevant market; that is, to show that consumers associate the name with a specific provider of services.

In the present proceeding, Complainant has asserted that the name "Marvin Lundy" is "distinctive", and that Complainant is "a well known attorney at law in Philadelphia." As noted above, from the standpoint of the U.S. common law regarding personal names claimed as service marks, such names are not inherently distinctive. An assertion of distinctiveness will not suffice to establish rights.

The mere assertion by Complainant that "Marvin Lundy" is "well known", a fact denied by Respondent, does not suffice to establish that consumers associate the name "Marvin Lundy" with a specific provider of legal services. Complainant has provided no information or materials that support its assertion, such as published news reports, survey responses, evidence of advertising, or other materials that might establish at least a prima facie case in support of its assertion.

Because Complainant has failed to establish common law service mark rights, it has failed to establish the first element necessary for a finding of abusive domain name registration and use. Since all three elements set out in paragraph 4(a) of the Policy must be established to succeed on a claim, Complainant fails to establish abusive domain name registration and use against Respondent.

As a matter of administrative efficiency, the Panel will not consider the other claims asserted by Complainant.

The Panel admonishes Complainant and his counsel for failing to disclose that Complainant had previously asserted an unfair competition claim in state court proceedings regarding the disputed domain name. Rule 3(b)(xi) requires that a Complainant "Identify any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain name(s) that are the subject of the complaint."

The Panel determines that Complainant, Marvin Lundy and Law Offices of Marvin Lundy, has failed to establish rights in a service mark. The panel determines that Respondent, Scott E. Idmaond, known as Scott E. Diamond, did not engage in abusive registration and use of the disputed domain name, <marvinlundy.com>, within the meaning of paragraph 4(a) of the Policy. The Panel therefore rejects Complainant’s request to order the registrar to transfer the disputed domain name to it.

"Personal names (surnames and first names) have been placed by the common law into that category of non-inherently distinctive terms which require proof of secondary meaning for protection. Thus, since personal names are not regarded as being inherently distinctive marks, they can be protected as trademarks only upon proof that through usage, they have acquired distinctiveness and secondary meaning." [footnotes omitted] J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 13:2 (4th ed. 1996 and updated)