World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Frank, Weinberg & Black, P.L. v. David Colen

Case No. D2013-0352

1. The Parties

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

Respondent is David Colen of Aventura, Florida, United States, represented pro se.

2. The Domain Name and Registrar

The disputed domain name <frankweinbergblack.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 February 21, 2013. On February 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 2013, the Registrar transmitted by email 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 February 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 20, 2013. The Response was filed with the Center on February 28, 2013.

The Center appointed Andrew J. Park as the sole panelist in this matter on March 28, 2013. 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 is Frank, Weinberg & Black, P.L., a Florida Professional Limited Liability Company (“FWB”). Complainant is a full-service law firm and concentrates in the areas of commercial litigation, corporate, business, and tax law, real estate and finance, developer interests/landlord rights, family law, estate planning, probate, as well as administrative and condominium law. Complainant has been in business for over twenty five years and provides legal services for clients throughout the United States.

Complainant has continuously used the name FRANK WEINBERG BLACK in connection with the advertising, promotion, and offering of its legal services (“FWB Trademark”). In addition to the trademark FRANK WEINBERG BLACK, from July 2000 to the present Complainant has used its legal entity name, Frank, Weinberg & Black, P.L. as a trademark in connection with the advertising, promotion, and offering of its legal services. Complainant exclusively advertises its legal services in conjunction with the FWB Trademark and its legal entity name. The FWB Trademark is prominently displayed and used on Complainant’s website, which is accessible at the domain name <fwblaw.net>, as well as Complainant’s legal entity name. Accordingly, Complainant has valuable goodwill as a consequence of the extensive use of the FWB Trademark over many years in the legal industry.

Respondent is David Colen, an individual residing in Aventura, Florida, United States. Respondent registered the disputed domain name on November 24, 2011. Respondent is utilizing the disputed domain name <frankweinbergblack.com> to publish information and opinion about Complainant. On February 28, 2013, Respondent filed a Response to the Complaint. According to Respondent, the “primary and sole purpose of the Respondent’s registration and use of said domain name is to alert the public about” certain alleged instances of purported “wrongdoing” by Complainant uncovered by a group of concerned people.

The disputed domain name was registered on November 24, 2011.

5. Parties’ Contentions

A. Complainant

Complainant contends that it owns rights in the FWB Trademark and that the disputed domain name is identical to, and wholly incorporates, Complainant’s FWB Trademark.

Complainant submits that Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, Complainant contends that Respondent is not affiliated with Complainant whatsoever and there is no evidence that the Respondent has (a) used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; (b) been commonly known by the disputed domain name; or (3) made a legitimate noncommercial or fair use of the disputed domain name.

Complainant further alleges that Respondent is using the disputed domain name to tarnish the reputation of Complainant. Specifically, Complainant alleges that Respondent’s domain name directs users to a webpage that contains false, scandalous, spurious, and slanderous material concerning Complainant’s business for the purpose of sullying Complainant’s reputation and tarnishing its FWB Trademark.

Finally, Complainant alleges that Respondent’s registration is diverting clients and potential clients to a website tarnishing Complainant’s business and FWB Trademark. Further, Complainant alleges that Respondent’s registration is preventing Complainant from using the disputed domain name to conduct its business, which demonstrates bad faith on the part of Respondent.

For these reasons, Complainant requests that the disputed domain name be transferred.

B. Respondent

Respondent opposes transfer of the disputed domain name. Respondent contends:

(1) Complainant does not own any trademarks registered with the United States Patent and Trademark Office;

(2) Respondent has rights or legitimate interests in respect of the disputed domain name because the “primary and sole purpose of the Respondent’s registration and use of said domain name is to alert the public about” certain alleged instances of purported “wrongdoing” by Complainant uncovered by a group of concerned people; and

(3) the disputed domain name is not being used in bad faith because Respondent registered and is making use of frankweinbergblack.com solely and exclusively to warn the public about a very specific set of circumstances …” about Complainant. Moreover, Respondent points out that “not one single specific statement of fact on frankweinbergblack.com is being challenged.”.

Respondent also contends that Complainant has not registered the disputed domain name and instead utilized an entirely different domain name for its law practice – ‘’<fwblaw.net>’’. Respondent thus contends that its use of the disputed domain name cannot be construed as preventing Complainant from registering the disputed domain name.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Administrative Panel to order the transfer of the disputed domain name to Complainant. Those requirements are that: (i) Respondent’s 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) Respondent’s domain name has been registered and is being used in bad faith.

The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules.

A. Identical or Confusingly Similar

A series of UDRP decisions have held and it is now well established that the Policy protects rights in unregistered trademarks (see, e.g., Bennett Coleman & Co. Ltd. v. Steven S. Lafwani, WIPO Case No. D2000-0014; SeekAmerica Networks Inc. v. Tariq Masood and Solo Sings, WIPO Case No. D2000-0131; Brisbane City Council v. Warren Bolton Consulting Pty Ltd., WIPO Case No. D2001-0047; and Imperial College v. Christopher Dessimoz, WIPO Case No. D2004-0322).

However, the Panel will not automatically accept an unsupported assertion of unregistered trademark rights, but will examine the evidence which may establish that Complainant holds rights in an unregistered trademark.

In accordance with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions 2.0, paragraph 1.6 (“WIPO Overview 2.0”), in cases where the complaint is based on unregistered trademark rights, Complainant must show that the name has become a distinctive identifier associated with Complainant or its goods and services. Relevant evidence of such secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant's rights in a common law trademark in regards to the first element of the Policy; Unregistered rights can arise even when the complainant is based in a civil law jurisdiction (See Uitgeverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575, Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314, Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786.)

Answering this question is a matter of considering all of the evidence as to whether Complainant has a trademark.

In the present case, the Panel finds that Complainant has established that the FWB Trademark has become a distinctive identifier associated with Complainant or its services; That is so for the following reasons: Complainant has continuously used the name FRANK WEINBERG BLACK in connection with the advertising, promotion, and offering of its legal services. In addition to the trademark FRANK WEINBERG BLACK, from July 2000 to the present Complainant has used its legal entity name, Frank, Weinberg & Black, P.L. as a trademark in connection with the advertising, promotion, and offering of its legal services. Complainant exclusively advertises its legal services in conjunction with the FWB Trademark, as well as its legal entity name. The FWB Trademark is prominently displayed and used on Complainant’s website, which is accessible at the domain name ‘’<fwblaw.net>’’. Accordingly, Complainant has valuable goodwill as a consequence of the extensive use of the FWB Trademark over many years in the legal industry.

Additionally, there is no evidence to suggest that there is a company or business other than Complainant that uses the name in the same area of industry as Complainant.

The Panel is therefore satisfied that FRANK WEINBERG BLACK is an unregistered trademark owned by Complainant.

The next question is whether the disputed domain name is identical or confusingly similar to the trademark. The answer is that it is.

The disputed domain name consists, first of all, of the entirety of the FWB Trademark. The Domain Name is identical to Complainant’s FRANK WEINBERG BLACK trademark when the generic top-level domain (gTLD) “.com” is discounted.

Finally, the disputed domain name does not have any additional words as part of it that detract from or minimize the effect and dominance of the trademark in the disputed domain name.

For the above reasons, the Panel finds the disputed domain name to be identical or confusingly similar to Complainant’s rights in the FWB Trademark. The Panel finds that Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the disputed domain name. Those circumstances are described as follows:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering 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.

Respondent has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the disputed domain name.

First, as discussed infra, the Complainant’s FWB Trademark is identical or confusingly similar to the disputed domain name. Complainant markets and conducts its services under the FWB Trademark, and has done so for more than one decade. On the other hand, Respondent does not have any legitimate trademark rights in the terms “Frank” “Weinberg,” or “Black” – either collectively or individually. Moreover, Complainant has not authorized, licensed, or otherwise consented to the use of the terms “Frank” “Weinberg,” or “Black” – either collectively or individually - by Respondent or any person operating the website to which the disputed domain name redirects Internet users. Finally, the Respondent is not known by the disputed domain name.

Respondent argues that it has a “legitimate interest in the domain name” because it is utilizing the disputed domain name to publish factual information the public deserves to read concerning the law firm, with no monetary or commercial concern. The Panel disagrees. This Panel draws a distinction between the situation where a domain name includes the complainant’s trademark together with a pejorative term (such as “crappy”) and the situation where the disputed domain name consists solely of the complainant’s trademark. Whereas in the former situation it may be possible for the respondent to have a right or legitimate interest in the domain name, in the latter situation it is not. See, e.g., Myers, Fletcher & Gordon v. Domains By Proxy, Inc., Bertrand Gachot and Khalifa Saber, WIPO Case No. D2009-0790 (citing Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299 (“… the right to express one’s view is not the same as the right to use another’s name to identify one’s self as the source of those views.”). This case is clearly an instance of the second situation because, as discussed infra, the disputed domain name is identical or confusingly similar to Complainant’s FWB Trademark.

For the above reasons, the Panel finds that Respondent does not have rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following conduct is sufficient to support a finding of bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

The evidence, which is not rebutted by Respondent, shows that Respondent knew of and has sought to take advantage of the similarity between the disputed domain name and Complainant’s FWB Trademark, in order to draw Internet users to a website containing supposed facts and opinions about Complainant (e.g., “The lawyers who work at this crappy.”). The Panel finds that Complainant has adduced convincing evidence that Respondent registered the disputed domain name in bad faith, namely for the purposes of disrupting the business of Complainant by sullying its reputation. Likewise, the Panel agrees that Respondent’s action is tarnishing Complainant’s business and trademarks. This behavior evidences bad faith.

For the above reasons, the Panel finds that Complainant has shown that the disputed domain name has been registered and is being used in bad faith by Respondent.

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 <frankweinbergblack.com> be transferred to Complainant.

Andrew J. Park
Sole Panelist
Date: April 8, 2013

 

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