WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Allen Fagin v. Crystal Cox

Case No. D2011-0678

1. The Parties

Complainant is Allen Fagin of New York, New York, United States of America represented by Proskauer Rose, LLP, United States of America.

Respondent is Crystal Cox of Eureka, Montana, United States of America, self-represented.

2. The Domain Name and Registrar

The disputed domain name <allenfagin.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.

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 submitted a filing with the Center on May 20, 2011. Pursuant to Respondent’s filings, the Center on May 20, 2011 invited Respondent to submit a list of candidates for co-panelist by May 25, 2011. Respondent did not submit any list in response to the Center’s invitation. 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 A. Badgley, Andrew D.S. Lothian and Debra J. Stanek as panelists in this matter on June 20, 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 contends that he is a “well-known and highly respected attorney” who has been practicing law for over 35 years. Complainant also alleges that “from 2005-2011 he was the Chairman of the law firm Proskauer Rose LLP, and thus the public face and voice of the firm”. He is also the former co-Chair of the firm’s Labor and Employment Law Department.

Complainant alleges further that he has been named a “Super Lawyer” by New York Super Lawyers, one of the “Top hundred best lawyers in New York” by New York magazine, the “Top employment litigator in the country” by the National Law Journal, and repeatedly named as one of the Best Lawyers in America by that publication.

Complainant also alleges that he has been repeatedly quoted in the media, including appearances on CNN and quotes in The New York Times Magazine, Crain’s New York Business, Business Week, US News and World Report, The New York Law Journal, and the ABA Journal. Complainant claims that he “practices law under his name, ALLEN FAGIN, and he “renders legal services in exchange for fees.”

Complainant notes that his name is featured on the Proskauer website, and his name is also “featured prominently on bills that are sent out to clients for Complainant’s legal services”. There is no allegation or proof however, that Complainant enters into legal services contracts with clients in his own name, as opposed to as a lawyer of the Proskauer firm. Nor is there any allegation or proof that the clients pay Complainant, as opposed to paying the Proskauer firm.

Respondent registered the Domain Name at latest on August 4, 2010. The website to which the Domain Name resolves contains commentary highly critical of Complainant and the Proskauer law firm, as well as other 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 <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 he has satisfied all three elements required for relief under the Policy, and he 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 did not timely reply to Complainant’s contentions, but did submit a Response after having been declared in default. The Panel has considered the Response, but nothing therein informs the Panel’s decision in this proceeding.

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

The first hurdle Complainant must clear is to establish that he has rights in a trademark to which the Domain Name is identical or confusingly similar. The asserted mark is Complainant’s personal name, ALLEN FAGIN.

Complainant relies on the evidence set forth above in the Factual Background section, as well as certain previous decisions under the Policy. Complainant’s entire argument is set forth below:

As a result of these commercial activities under Complainant’s name, Complainant has developed trademark rights in his name. See, e.g., Roland Mouret v. Domains by Proxy, Inc. and Sonia Long, WIPO Case No. D2009-1435 (Complainant had trademark rights in his personal name, which he used in connection with his fashion design business); Kotak Mahindra Bank v. Richard Brown, WIPO Case No. D2008-0243 (Complainant had developed trademark rights in his name through being a well-known business man and chairman of a bank). Respondent’s use of Complainant’s name on her web site provides further evidence that Complainant is known by his name and is identified with the legal services he offers through Proskauer Rose. See Kotak Mahindra Bank v. Richard Brown, WIPO Case No. D2008-0243 (“Complainant’s evidence is corroborated by Respondent’s web page…the text clearly identifies the Complainant with the bank and vice versa”).

Although “the UDRP does not specifically protect personal names,” the “consensus view” is that “in situations where an unregistered personal name is being used for trade or commerce, the complainant can establish common law trademark rights in the name.” Chung, Mong Koo and Hyundai Motor Company v. Individual, WIPO Case No. D2005-1068. The evidence set forth above makes clear that the name ALLEN FAGIN is being used for trade and commerce.

The Panel does not agree with Complainant’s conclusion. There are certainly instances where an unregistered personal name may acquire common law trademark rights through use in commerce as a source identifier of goods or services. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, the “consensus view” under section 1.7 (entitled “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?”) states as follows:

The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.

The evidence in this case falls short. The record before the Panel suggests that Complainant is a highly respected, prominent lawyer who is a partner with a major law firm. There is insufficient evidence here that Complainant markets or provides services independently of the Proskauer law firm. Rather, it appears that the Proskauer firm is the platform on which Complainant provides his legal services.

Nor is there any evidence of record that Complainant has spent money advertising his name apart from the Proskauer firm, or billed clients in his own name. Further, there is insufficient evidence in the record that the legal community regards Complainant as the driving force behind, or alter ego of, the Proskauer firm.

For these reasons, Complainant’s reliance on the Roland Mouret and Kotak cases is misplaced. Complainant’s provided evidence does not come close to matching the evidence described by the panel in the decisions in those cases. In the Kotak case, complainant Uday Kotak apparently presented evidence that his name was so closely associated with the Kotak Mahindra Bank that he had protected trademark rights in his name. Further, his surname Kotak was also the first word in the bank’s name. As the Panel in that case observed:

The uncontradicted evidence of the Complainant in this case is that the commercial community identifies the Complainant with the bank which he founded and which Kotak Mahindra Bank Limited continues to operate under his leadership. He is seen by the media and the public, particularly in India, as the alter ego and driving force behind the company.

Complainant’s reliance on Roland Mouret fares no better. Complainant in that case used his personal name Roland Mouret in connection with his fashion design business. In that commercial context, a designer’s personal name has obvious, and sometimes almost exclusive, value as a trademark. The context of an accomplished partner at a prominent, well-known law firm is generally not analogous.

In sum, the Panel does not find adequate support in this record that Complainant has acquired common law trademark rights in his personal name.

Accordingly, because the Panel finds that Policy paragraph 4(a)(i) has not been satisfied, there is no need to consider the other two elements of a successful complaint under the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Robert A. Badgley
Presiding Panelist

Andrew D.S. Lothian
Panelist

Debra J. Stanek
Panelist

Dated: June 30, 2011