WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Proskauer Rose LLP v. Leslie Turner

Case No. D2011-0675

1. The Parties

Complainant is Proskauer Rose LLP of New York, New York, United States of America, represented by Jenifer deWolf Paine, United States of America.

Respondent is Leslie Turner of Eureka, Montana, United States of America.

2. The Domain Name and Registrar

The disputed domain name <proskauerlawfirm.com> (the “Domain Name”) is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2011. On April 18, 2011, the Center transmitted by e-mail to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On April 18, 2011, GoDaddy.com, Inc. transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2011. Respondent did not submit a timely response. Accordingly, the Center notified Respondent’s default on May 18, 2011. Respondent submitted a Response with the Center on May 20, 2011. Complainant sought leave to file a supplemental submission to address certain alleged inaccuracies and legal assertions contained in the Response, but the Panel in its discretion chose not to entertain a supplemental submission since its decision ultimately rested on the Complaint (and annexes thereto) itself.

The Center appointed Robert Badgley, Richard G. Lyon and Debra J. Stanek as panelists in this matter on June 22, 2011. The Panel finds that it was properly constituted. Each member of 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 is one of the largest law firms in the United States, and has 12 offices globally. Complainant was known for decades as Proskauer Rose Goetz & Mendelsohn, before changing its name to Proskauer Rose in 1997. In 2000, Complainant branded itself principally as Proskauer. Complainant has nearly 700 lawyers and is undoubtedly one of the best known law firms in the United States. Complainant also holds registered trademarks in the name PROSKAUER.

The Domain Name was registered on March 4, 2010. Complainant alleges that while Respondent is the registrant of the Domain Name, the website to which the Domain Name resolves is operated by Crystal Cox. This is not disputed. (Indeed, in an omnibus Response filed in this proceeding and in several companion cases involving domain names including the names of several Proskauer lawyers, the Respondent is listed not as Leslie Turner but as Crystal Cox.) For purposes of this proceeding, the Panel regards Respondent and Crystal Cox as interchangeable.

The website to which the Domain Name resolves contains commentary highly critical of the Complainant law firm, as well as several Proskauer lawyers and other individuals. Respondent describes herself as an “Investigative Blogger,” and it is alleged in the Complaint that Respondent is “parroting Eliot Bernstein, who has been engaged in a bizarre and defamatory campaign against Proskauer Rose and its attorneys for many years – despite losing at every turn.”

By way of background, the Complaint states that in 2007 Bernstein and another plaintiff sued numerous defendants in federal court alleging that the defendants had stolen technology. These defendants are also alleged to have contributed to the Enron bankruptcy and the presidency of George W. Bush. The Proskauer law firm was among the defendants named in the Bernstein suit. The suit was dismissed in 2008, and the appeal was dismissed in 2010.

According to the Complaint, Respondent also maintains a website at “www.crystalcox.com” at which further criticism of the Proskauer firm is levied.

5. Parties’ Contentions

A. Complainant

Complainant’s main factual contentions are set forth in the Factual Background section above. Complainant argues that it has satisfied all three elements required for relief under the Policy, and seeks a transfer of the Domain Name from Respondent. Complainant’s specific arguments under the Policy will be taken up in the sections below as appropriate.

B. Respondent

Respondent makes many contentions more germane to her ongoing dispute with the Complainant firm and others than to the issues before the Panel. Respondent does, however, dispute that she lacks rights or legitimate interests in respect of the Domain Name, and she disputes that she has registered and is using the Domain Name in bad faith.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant holds rights in the mark PROSKAUER through registration and use. The Panel further finds that the Domain Name is confusingly similar to the PROSKAUER mark, since the Domain Name incorporates the mark and adds the descriptive term “law firm.” The addition of this descriptive term does not diminish the confusing similarity between the mark and the Domain Name. If anything, the term “law firm” reinforces the confusing similarity, since Complainant is a law firm.

Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] 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 fide offering of goods or services; or

(ii) you [Respondent] (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 [Respondent] 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.

The Panel concludes that Respondent has a legitimate interest in the Domain Name under the Policy, pursuant to paragraph 4(c)(iii) quoted above. The Panel majority reaches this conclusion without having to accept or reject any of the assertions made by Respondent at her website.

There is a divergence of opinion among panelists under the Policy who have addressed the question whether a <trademark.com> domain name may be legitimately used by a respondent solely as a “gripe site” to levy criticism of a complainant mark owner and/or its products or services. (This is a different, and more difficult, question than the <trademarksucks.com> context where the use of a pejorative term in the domain name announces that the visitor to the website is likely to encounter criticism of the complainant.)

A majority of this Panel maintains that the use of the Domain Name here as a genuine “gripe site” vests Respondent with a legitimate interest under paragraph 4(c)(iii). In one of the early decisions in this context, Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190, the panel observed:

Although free speech is not listed as one of the Policy’s examples of a right or legitimate interest in a domain name, the list [in paragraph 4(c)] is not exclusive, and the Panel concludes that the exercise of free speech for criticism and commentary also demonstrates a right or legitimate interest in the domain name under Paragraph 4(c)(iii). The Internet is above all a framework for global communication, and the right to free speech should be one of the foundations of Internet law.

See also Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014 (denying complaint where “Respondent’s website appears to be a classic criticism site” and there was no evidence of intent to derive commercial gain or tarnish complainant’s mark).

In the instant case, Respondent has denied ever making any money from her use of the Domain Name, and there is no evidence in the record to the contrary. The Domain Name appears to be used solely in sincere pursuit of Respondent’s free speech rights. Whether the content of the website is actionable under the law for reasons unrelated to the Domain Name itself is not for this Panel to consider.

The Panel unanimously believes that this is not a clear case of cyber squatting which the Policy was designed to address. Rather, this looks like a protracted and contentious dispute among numerous parties, several of whom are not before the Panel in this proceeding, that has spilled into the arena of Internet domain names. All parties are free to pursue their respective positions and interests in other fora better suited to consider evidence and grant appropriate relief. As set forth in his concurring opinion, the Panel member who disagrees with the majority’s reasoning on the legitimacy of criticism sites joins the Panel in finding this dispute better suited for the national courts and in the circumstances of this case not appropriate for resolution under the Policy.

The Panel unanimously finds that Policy paragraph 4(a)(ii) has not been satisfied by Complainant under the facts in this record.

C. Registered and Used in Bad Faith

Because the Panel majority has rejected the Complaint under Policy paragraph 4(a)(ii), there is no discussion here of alleged bad faith registration or use of the Domain Name.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Robert A. Badgley
Presiding Panelist

Richard G. Lyon
Panelist (Concurring)

Debra J. Stanek
Panelist

Date: June 30, 2011

OPINION CONCURRING IN PART AND CONCURRING IN THE DECISION

Though I agree that the Complaint must be denied, I adhere to my oft-stated views that a criticism site even if entirely noncommercial does not confer upon a domain name holder a right or legitimate interest if the domain name consists solely of the complainant’s (and the target of the criticism) mark. Those interested in the details of my reasoning may read, among other cases, Joseph Dello Russo M.D. v. Michelle Guillaumin, WIPO Case No. D2006-1627 (majority opinion), and Justice for Children v. R neetso / Robert W. O’Steen, WIPO Case No. D2004-0175. Here the Domain Name and mark at issue do not match exactly, but the only difference exacerbates the likelihood of confusion on the part of Internet users by adding a description of Complainant and the services Complainant provides. On the reasoning of the cases cited above, Respondent should not be permitted to appropriate Complainant’s soapbox for her criticism of Complainant.

Resolution of that issue, however, is unnecessary in this proceeding, for in my view the Complaint must be denied on the other ground stated by the Panel. Complainant and others are battling Respondent and others over a slew of domain names and assorted issues of tort law. The Response in this case lists some (perhaps all?) of the other individuals engaged in these other proceedings. The Policy itself and Policy precedent do not permit consolidation of these other proceedings under the limited mandate of the Policy; even if consolidation were possible that would do nothing about the charges of defamation (and other torts) and countercharges of harassment (and other torts). Decisions in this or any of the other Policy proceedings are subject to subsequent challenge in court, where the panels’ findings are not binding. Given the parties’ history, that may well happen here.

Like the Panel, I think it better that all matters be addressed in a forum that has the jurisdiction and competence to do so than that the Policy be stretched, in a case that is not clearly cyber squatting, merely to give one party or the other an edge in the litigation that will inevitably follow. In these circumstances I stand with the panel in Rudy Rojas v. Gary Davis, WIPO Case No. D2004-1081: “a plague o’ both your houses.”

Richard G. Lyon
Panelist (concurring)

Date: June 30, 2011