WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nancy L. Lanard, Lanard and Associates, P.C. v. WhoIs Agent, WhoIs Privacy Protection Service, Inc. / Josh Lignana, Spadea Lignana LLC
Case No. D2016-1706
1. The Parties
Complainant is Nancy L. Lanard, Lanard and Associates, P.C. of Plymouth Meeting, Pennsylvania, United States of America ("United States"), represented by Griesing Law, United States.
Respondent is WhoIs Agent, WhoIs Privacy Protection Service, Inc. of Kirkland, Washington, United States / Josh Lignana, Spadea Lignana LLC of Philadelphia, Pennsylvania, United States, self‑represented.
2. The Domain Name and Registrar
The disputed domain name <lanardlaw.com> (the "Domain Name") is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 22, 2016. On August 23, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 23, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 29, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 30, 2016.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2016. On September 16, 2016, Respondent submitted a request for the automatic four calendar day extension for the Response under paragraph 5(b) of the Rules. The Center granted the requested extension and confirmed that the new deadline for Response was September 23, 2016. The Response was filed with the Center on September 24, 2016. On September 28, 2016, Complainant filed an unsolicited Supplemental Filing. On September 30, 2016, Respondent filed an unsolicited Supplemental Filing responding to Complainant's Supplemental Filing.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on October 4, 2016. 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.
The Center has already notified the Parties that under the Rules no express provision is made for Supplemental Filings by either party, except in response to a deficiency notification or if requested by the Center or the Administrative Panel. Paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of Supplemental Filings.
Here, the Panel considers that the Parties' Supplemental Filings are admitted only insofar as they provide new information. In particular, the Panel will consider information concerning claims brought by Complainant against Thomas G. Spadea and Josh Lignana (Respondent) before the Pennsylvania Office of Disciplinary Counsel ("ODC"), alleging that their conduct with respect to Complainant as she left the law firm of Spadea, Lanard & Lignana ("SLL"), violated the Pennsylvania Rules of Professional Conduct for Attorneys. In particular, among the issues raised by Complainant in the ethics proceedings is her claim that the new law firm of Messrs. Spadea and Lignana, named Spadea Lignana, LLC ("Spadea Law"), does not possess rights to the Domain Name.
4. Factual Background
Complainant is an attorney admitted to practice in Pennsylvania. She has practiced law for over 38 years and formed the Law Offices of Nancy L. Lanard on June 6, 2001. Complainant registered the Domain Name on January 23, 2002 and began marketing her firm using the Domain Name in September 2002. Complainant registered "Lanard Law" as a fictitious name for the Law Offices of Nancy L. Lanard on April 25, 2011. Complainant uses the Twitter handle "@LanardLaw". This is a public social media name that has been associated with her law practice since March 2009. In addition, Complainant has a Facebook business page for Lanard Law. The Facebook page is publicly available and she has used the name Lanard Law on Facebook since 2010.
In 2011 Complainant entered into discussions with Mr. Spadea, who later also brought in Mr. Lignana (Respondent), about the possibility of joining together to create a new law firm. Mr. Spadea graduated from law school in 2010 after having attended night school. While in law school, Mr. Spadea worked for a number of franchise companies and had referred work to Complainant. Mr. Lignana graduated from law school in 2011, having also attended night school.
Complainant and Messrs. Spadea and Lignana thought that combining their law practices would be of mutual benefit. Complainant viewed the new law firm as part of her succession planning. The law firm of Spadea, Lanard & Lignana ("SLL") was organized on November 15, 2011. On forming SLL, the parties also entered into an operating agreement and Complainant transferred certain goodwill and assets to SLL pursuant to that agreement. Both Complainant and Respondent have referenced the following provision from the operating agreement to show what was transferred by Complainant to SLL:
"As consideration for this Membership Interest, the Law Offices of Nancy L. Lanard, P.C., d/b/a Lanard Law hereby transfers all files, assets, IOLTA accounts, websites, trademarks (exclusive of her rights to her personal name, the operating bank account and cash, or the corporate entity itself), trade secrets, processes, personnel files, contracts and all intellectual property of any kind related to the Law Offices of Nancy L. Lanard, P.C. wherever located, to the Firm. All accounts receivable existing as of December 31, 2011, will not be transferred to the Firm."
The domain name, <spadealaw.com>, was registered on October 23, 2011 and used for the SLL firm's website. In January 2012, Complainant instructed her website company, OpenSpark, to redirect the Domain Name to point to the website for SLL.
After a number of years working together, Complainant gave notice of her intention to withdraw from SLL on March 19, 2016. Her access to SLL data was cut off on March 22, 2016. On March 21, 2016, Complainant registered the domain name, <lanardandassociates.com>, and subsequently launched a new website on April 11, 2016 using this domain name. On March 29, 2016, Complainant filed Articles of Amendment with the Pennsylvania Department of State to change the name of her pre-existing legal entity (Law Offices of Nancy L. Lanard, P.C.) to Lanard and Associates, P.C. On August 4, 2016, Complainant withdrew the name Lanard Law from Law Offices of Nancy L. Lanard, P.C. and added it to Lanard and Associates, P.C.
Mr. Lignana and Mr. Spadea now operate a law firm called Spadea Lignana, LLC ("Spadea Law"), which uses the <spadealaw.com> domain name in connection with the website promoting the firm's legal services. On March 29, 2016, Complainant contacted OpenSpark to request that the Domain Name no longer redirect to the Spadea Law website. However, Respondent had already taken control of the Domain Name and it continues to redirect to the Spadea Law website. Respondent has refused to transfer the Domain Name to Complainant.
Throughout Complainant's participation as a lawyer of SLL, registration of the Domain Name remained in the name of "Nancy Lanard" as registrant and the "Law Offices of Nancy L. Lanard, P.C." as the registrant organization. As of June 15, 2016, the Domain Name WhoIs record indicated that the registrant and registrant organization details continued to refer to Complainant. However, as of June 24, 2016, the Domain Name WhoIs record showed that the Domain Name registrant and registration organization information had been updated, listing "WHOIS AGENT" as the registrant and "WHOIS PRIVACY PROTECTION SERVICE, INC." as the registrant organization.
In June 2016 Complainant filed separate ethics claims against Messrs. Spadea and Lignana before the Pennsylvania ODC, alleging that their conduct as she left SLL violated the Pennsylvania Rules of Professional Conduct for Attorneys. Among the issues raised by Complainant in those proceedings is that the law firm, Spadea Law, does not possess rights to the Domain Name.
5. Parties' Contentions
(i) Identical or Confusingly Similar
Complainant states she is the sole owner of the unregistered service mark, LANARD, for the provision of legal services in the areas of business and franchise law. Complainant states that she has an excellent reputation, and potential clients come to her based on referrals from prior clients, attorneys, and franchise and business consultants who have worked with her. Complainant has received awards for her legal services, such as recognition as a Legal Eagle by the Franchise Times, a periodical in the franchise industry, for six consecutive years. This national award is given to less than 200 franchise attorneys nationwide. Complainant writes articles and blog posts on topics related to business and franchise law. In addition, she states that she has consistently worked to promote her LANARD mark through extensive advertising and marketing efforts, including hiring a professional legal marketer to assist her.
Complainant believes that between 2001 and 2011 she provided legal services to over 1,400 clients on over 3,300 matters, while using the LANARD mark. She also believes that during this same period, she invested in excess of USD 200,000 in marketing and advertising legal services under the LANARD mark, including a substantial investment in time and money to develop a website at the Domain Name. In 2002, Complainant hired a consultant to guide her Internet marketing and advertising activities for the LANARD mark and the Domain Name. Beginning in 2004, Complainant spent approximately 10 percent of her firm's annual revenue on marketing and advertising the LANARD mark and the Domain Name in connection with legal services, including with Attorneys Online, Thomson Reuters, Google AdWords, Yahoo Search Marketing, Bing Ads, Reach Local, and Paradise Legal among others. Complainant states that her professional reputation, substantial advertising and marketing expenditures, numerous clients, and media recognition and awards all contributed to the goodwill enjoyed by the LANARD mark and made her attractive as a prospective law firm partner to Messrs. Spadea and Lignana, who were newly admitted to practice law.
While Complainant does not have a federal trademark registration in her personal name, she contends that the Policy is applicable to an unregistered trademark or service mark in which common law rights exist. Complainant contends the LANARD mark enjoys substantial secondary meaning and has been the primary source indicator of Complainant's legal services in the areas of business and franchise law since at least 2001. Complainant states she has made continuous and extensive use of her surname in trade or commerce in connection with legal services offered in the fields of business and franchise law for more than 15 years through her own law firms and as a member of SLL. She has invested in advertising and marketing the LANARD mark and the Domain Name, which she registered in January 2002.
Complainant states the Domain Name wholly incorporates Complainant's LANARD mark. The word "law" is descriptive of the services provided by Complainant. The only difference between the LANARD mark and the Domain Name is the addition of the descriptive term "law" and the ".com" generic top-level domain ("gTLD"). Accordingly, Complainant claims she has met her burden and established that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
(ii) Rights or Legitimate Interests
Complainant states that she and Messrs. Spadea and Lignana specifically discussed that she would transfer the website content linked to the Domain Name to SLL's new domain name, <spadealaw.com>. However, Complainant contends that Messrs. Spadea and Lignana never asked that she transfer ownership of the Domain Name, and that it was never her intention to do so. Complainant claims that while she instructed her website development and hosting company to redirect the Domain Name to the website for SLL, so that the goodwill enjoyed by the LANARD mark could provide a competitive advantage to the SLL firm, at no time did she grant any further rights in the Domain Name to SLL.
After providing notice of her intention to withdraw from SLL, Complainant states that the firm cancelled her phone, billing software access, and email on March 22, 2016, making it impossible for her to continue to work for the firm. Complainant had been prepared to stay until April 1, 2016 or longer as required to transition client matters. According to Complainant, Messrs. Spadea and Lignana also refused to give Complainant access to files that clients wanted to transfer to Complainant, including files for matters that Complainant told them were urgent. Complainant states this aggravated her clients and imperiled her relationships.
Since withdrawing from SLL, Complainant states that she has continued to use the LANARD mark in connection with legal services focused on business and franchise law. Her new law firm is known as Lanard and Associates d/b/a Lanard Law. Respondent uses the <spadealaw.com> domain name in connection with a website that promotes Spadea Law's legal services, which significantly overlap and compete with Complainant's areas of practice.
Complainant states that when she contacted OpenSpark to request that the Domain Name no longer redirect <spadealaw.com>, she learned from OpenSpark that Mr. Spadea had directed OpenSpark to transfer the Domain Name to a domain name account controlled by Mr. Spadea and that he told OpenSpark not to make any changes without his written authorization. Complainant contends that, as a result of Mr. Spadea's instructions, Complainant has been unable to obtain control of the Domain Name.
Complainant states that her first choice on separating from SLL was to resume use of the Domain Name because that had been her firm's domain name prior to the formation of SLL. However, due to Mr. Spadea's instruction to OpenSpark, this was not possible. Complainant has sent several emails to OpenSpark, and through her attorney communicated with Messrs. Spadea and Lignana, demanding return of the Domain Name, but they have not complied. The Domain Name continues to redirect to the Spadea Law website. Complainant's contends that the reason Messrs. Spadea and Lignana have refused to transfer the Domain Name is that doing so would cause the Spadea Law website to drop significantly in search rankings.
Complainant contends that in June 2016 the Domain Name's registration was updated without her knowledge or consent. She states that she did not authorize a change in the registration information or ownership of the Domain Name. Complainant also states that she has not licensed, transferred, assigned, or otherwise authorized Mr. Spadea or Respondent to use the Domain Name or the LANARD mark, or any variation of a mark that incorporates her personal name, to promote Spadea Law's services. Complainant contends that Respondent has no rights in Complainant's personal name, the LANARD mark, or the Domain Name. Mr. Spadea, Respondent, and Spadea Law are not commonly known by the LANARD mark. The current use of the Domain Name violates Complainant's trademark rights and is in violation of attorney ethics rules in the Commonwealth of Pennsylvania that prohibit attorneys from stating or implying that they practice law together when they do not.
Complainant states that she previously authorized the direction of traffic from the Domain Name to the SLL website, but only during the time that she was a member of SLL. Any previous authorization ceased at the time that Complainant withdrew as member. Complainant contends that she has retained all right, title and interest in her personal name, the LANARD mark and the Domain Name, which are both comprised primarily of her personal name.
Complainant states that when her personal name, the LANARD mark or the Domain Name is entered into the Google search engine, one of the top results is the Spadea Law website. This misleads the public into thinking that Complainant is affiliated in some way with Spadea Law, and gives Spadea Law an improper competitive advantage as a result of Complainant's name recognition and reputation.
Complainant's former email address, […]@lanardlaw.com, still redirects to […]@spadealaw.com. Therefore, clients who were her clients prior to the formation of SLL, who may only have the […]@lanardlaw.com email address, will contact Spadea Law when they intend to contact Complainant.
Diversion of the Domain Name to Spadea Law is disruptive of Complainant's business as it prevents potential and existing clients from finding Complainant on the Internet.
Complainant contends that Respondent was aware that all rights in the LANARD mark vested in Complainant. This knowledge itself is evidence of Respondent's lack of rights or legitimate interests in the Domain Name. Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Respondent's use is commercial in that it offers legal services competitive to that of Complainant. By redirecting the Domain Name to the Spadea Law website, Respondent is willfully and maliciously causing consumer confusion and harm to Complainant's business. Complainant argues this use is not a bona fide offering of services under the Policy. Respondent can have no rights or legitimate interests in the Domain Name as use creates the impression that Complainant is affiliated with Spadea Law, when in fact she is not. Accordingly, Complainant contends she has met its burden and established that Respondent has no rights or legitimate interests in the Domain Name.
(iii) Registered and Used in Bad Faith
Complainant states that she originally registered the Domain Name in January 2002, but that in June 2016 the Domain Name's registration information was updated without her knowledge or consent. Complainant claims that the change without Complainant's knowledge or permission was done in bad faith and constitutes bad faith registration under the Policy.
Complainant claims that Mr. Spadea and Respondent, through their firm Spadea Law, are intentionally trading on the goodwill of the LANARD mark by their continued, unauthorized use of the mark in the Domain Name. The diversion of the Domain Name to the Spadea Law website is disruptive of Complainant's business as it prevents potential and existing clients from finding Complainant on the Internet. This type of deliberately harmful action has been consistently found to constitute bad faith use of a domain name under paragraph 4(b)(iii) of the Policy.
Complainant contends that Respondent is not only disrupting her business, but is also intentionally attempting to attract, for commercial gain, Internet users to the Spadea Law website. Such circumstances have been found to constitute bad faith use under paragraph 4(b)(iv) of the Policy. Accordingly, Respondent registered and is using the Domain Name in bad faith.
(i) Identical or Confusingly Similar
Respondent states that he and Mr. Spadea were just starting out in their legal careers without the resources to make a lump sum payment to Complainant to acquire her law practice. They offered to pay Complainant USD 250,000 over time based on the success of the new practice and the work that was generated. The new law firm, SLL, was formed and an operating agreement was executed to reflect that business deal, where Respondent and Mr. Spadea would be the equity members and would pay off Complainant over time as a non-equity member. Respondent states that the terms of the operating agreement were setup so that in exchange for USD 250,000 paid over time, in addition to competitive compensation package, Complainant received a non-equity membership in SLL and a position that would allow her to grow her business to new levels. Respondent refers to the provision in the operating agreement, noted in Section 4 (Background) above, to indicate his view concerning Complainants contribution to SLL.
Respondent states that although the parties had initially estimated it would take about five years to pay Complainant her money, payment was made two years, ahead of schedule. While all parties initially hoped that the SLL law firm would yield an enduring relationship, unfortunately, that did not happen. In spite of the early pay-off, and higher annual compensation, Complainant tendered her resignation notice on March 19, 2016. Respondent argues that Complainant apparently had assumed that despite receiving USD 250,000 for the goodwill and infrastructure of her firm, she could resign and take it all back, trademarks, employees and all.
Respondent denies that Complainant has any rights to the name, Lanard Law, which, as intellectual property of Complainant's prior law firm, was and is the property of SLL. Respondent claims the Domain Name was held in the SLL account, where it has been paid for by SLL since 2012. Despite this, Respondent admits that Complainant was still the listed registrant for the Domain Name. Respondent states this was a simple oversight, which was brought to Respondent's attention when, upon information and belief, Complainant attempted to pressure Respondent's domain registrar unless the Domain Name was released to her.
Respondent admits that the Domain Name registration information has been updated, but denies these changes were made without Complainant's consent. Complainant consented when she sold the Domain Name along with other assets of her prior firm to SLL for USD 250,000. Respondent contends that Complainant unequivocally transferred the Domain Name to SLL when she, as a lawyer with 30 plus years of experience, endorsed an operating agreement that stated, "Lanard Law hereby transfers all…websites, trademarks (exclusive of her rights to her personal name…)…and all intellectual property of any kind related to the Law Offices of Nancy L. Lanard, P.C. wherever located, to the [SLL]." Respondent contends that Complainant has no authority over the assets acquired by SLL; therefore, her authorization was not required.
Respondent further contends that personal name does not mean "surname" and does not mean "domain name." Instead, "personal name" means the name a person is identified by, as opposed to the name her family is identified by. As defined by Merriam-Webster, "a name (as the praenomen or the forename) by which an individual is intimately known or designated and which may be displaced or supplemented by a surname, a cognomen, or a royal name." Respondent states Complainant's reference in the Complaint to "her personal name, as well as…the Lanard Mark and the Lanard Domain Name," makes clear that these are separate and distinct items, and neither the alleged LANDARD mark nor the Domain Name contain Complainant's personal name.
Respondent denies the existence of the LANARD mark. Respondent denies that LANARD has secondary meaning because Complainant had a small law firm for ten years called "The Law Offices of Nancy L. Lanard, P.C." Respondent admits that Complainant used her surname prior to her association with SLL and continued to use it on behalf of SLL. Respondent admits that Complainant's former law firm provided services to many clients and built significant goodwill over the years before transferring it to SLL.
Respondent argues that to the extent Complainant ever had a trademark, it was "Lanard Law", which was transferred to SLL. Respondent states that "law" is descriptive, in that it could not be added to the dominant portion of a valid existing trademark for legal services to create a new distinguishable mark for legal services. If, however, the descriptive term is already part of the mark, removing it can, and in this case does, create a different commercial impression.
Respondent acknowledges that entering the Domain Name, Lanard or Complainant's personal name, Nancy Lanard, into an Internet search engine will likely cause SLL to appear in the search results. The fact that Lanard and Associates and SLL are competitors is likely enough that each will show up when the other is searched. Add that SLL purchased the assets of Complainant's firm, Complainant's LinkedIn profile includes SLL, Complainant was part of SLL for over 4 years and there is an obvious association which would cause search algorithms to list SLL. When searching "Spadea Lignana" in Google, "Nancy Lanard" is the fourth organic result on the first page. In spite of SLL's efforts, it has yet to completely eliminate every connection to Complainant from the SLL website. Respondent denies that any reasonable person visiting the SLL website could be misled to think that Complainant is still a member of the firm. One of SLL's attorneys briefly joined Complainant's new firm before returning to SLL. Despite working there less than a month and resigning in May 2016, her profile is still on the website for Complainant's new firm, as well as a testimonial referring to her by name.
(ii) Rights or Legitimate Interests
Respondent contends that the Domain Name was transferred and assigned to Respondent. Complainant's personal name is not at issue and the purported LANARD mark does not exist. All rights in the LANARK mark, to the extent there is a mark, vest fully in Respondent.
Respondent admits its use of the Domain Name is commercial. However, Respondent denies he is causing consumer confusion; on the contrary, 3 out of 4 people who constituted the law firm that was known as "Lanard Law" and performed an estimated 95% of the legal services sought by its clients, are with Respondent's law firm. If any client who bookmarked the site at any time during the past fifteen years were to click on that link in hopes of finding their attorney, they would likely find her without further inquiry. If by chance they were seeking Complainant, SLL personnel would direct them. Respondent argues it is Complainant who is maliciously seeking to cause confusion. Of all the names she could use, which would incorporate her surname, the only apparent reason she would choose the one that she transferred to SLL, is to cause confusion.
Respondent states that Complainant is aware that, since June 2016, anyone emailing "[…]@lanardlaw.com" receives an autoreply with Complainant's new contact information. Even though SLL no longer has any ethical obligation to maintain an email address for Complainant, this system remains in place. Prior to June 1, 2016, all emails to […]@lanardlaw.com were forwarded directly to Complainant at her new firm.
Lanard Law clients attempting to contact Lanard Law through the Domain Name get Lanard Law, as Lanard Law is now part of SLL, along with 3 of 4 Lanard Law attorneys. Anyone who contacts SLL while attempting to contact Nancy Lanard is redirected to Complainant's new firm. Lanard Law is a trademark of SLL. Any confusion is caused by Complainant's resumption of the name after selling it to SLL. Whether SLL continues to actively promote the name or allows it to return to the public domain, Complainant's actions alone have caused the confusion, if any.
Respondent argues that Complainant has failed to meet its burden and has not established that Respondent has no rights or legitimate interests in the Domain Name.
(iii) Registered and Used in Bad Faith
Respondent states that while the Domain Name was held in SLL's account, where it has been held and paid for by SLL since 2012, Complainant was still the listed registrant for the Domain Name. Respondent states this was a simple oversight, which was brought to Respondent's attention when, upon information and belief, Complainant attempted to pressure Respondent's domain name registrar to release the Domain Name to Complainant. Respondent states the Domain Name registration information was corrected, and Complainant was removed. Respondent denies that this change was made without Complainant's consent – she consented when she sold the Domain Name among other assets to SLL for USD 250,000. Thus, Respondent denies that the registration was changed in bad faith, but instead was corrected in response to Complainant's attempt to take advantage of the mistaken information to hijack the Domain Name.
Respondent states it paid Complainant USD 250,000 for the assets of Complainant's former law firm, the Law Offices of Nancy L. Lanard, doing business as Lanard Law. Respondent contends that among those assets were the Domain Name and any intellectual property associated with the trade name "Lanard Law". Three of the four people who were working for Lanard Law when it was acquired (representing an estimated 95% of the services delivered) are still delivering services on behalf of Respondent, and are not delivering services on behalf of Complainant. Thus, consumers seeking Lanard Law services are far more likely to find them with Respondent. Respondent argues that knowing this, and having accepted money in exchange for the assets of her previous firm, if there is bad faith and an attempt to confuse consumers, it is on the part of Complainant. Respondent concludes that Complainant has failed to meet its burden and has not established that Respondent has acted in bad faith.
6. Discussion and Findings
As the detailed review of the record above demonstrates, this is not a typical cybersquatting case. Rather, the case presents a dispute between lawyers who were former business partners practicing law together. The only arguable reason that Complainant is seeking relief under the Policy is because part of the dispute concerns who has rights to the Domain Name.
Here, the Panel observes, having carefully reviewed the complete record, that there is a genuine dispute between Complainant, Respondent, and Mr. Spadea regarding the following two issues:
- Whether the sale and transfer of assets from Complainant's former law firm ("the Law Offices of Nancy L. Lanard, P.C., d/b/a Lanard Law") to the SLL law firm in 2011 included the Domain Name and all trademark rights that Complainant might have held in the LANARD or LANARD LAW marks.
- Whether the actions of Respondent and Mr. Spadea, when Complainant resigned from the SLL firm in March 2016, violated relevant rules of professional conduct for attorneys in Pennsylvania.
The Panel determines that the resolution of each of these issues does not fall with the scope of the Policy. In this regard, the Panel agrees with the decision in The Thread.com, LLC v. Jeffrey S. Poploff, WIPO Case No. D2000-1470, where the panel recognized, early in the development of UDRP jurisprudence, that some cases involving domain names are not within the scope of the Policy:
"This Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names. Rather, the Policy is narrowly crafted to apply to a particular type of abusive cybersquatting. To invoke the Policy, a Complainant must show that the domain name at issue is identical or confusingly similar to a mark in which the Complainant has rights, that the Respondent lacks rights or a legitimate interest in the domain name, and that the Respondent registered and used the name in bad faith. Policy, paragraph 4(a). To attempt to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy."
Here, the Panel's decision that this case does not fall within the Policy should not be read as a vindication of a party's conduct as to the matters in dispute between them. Instead, the issue of whether rights in (or corresponding to) the Domain Name were transferred from Complainant to the SLL law firm (and the related question of whether there was "consent" for updating the Domain Name's registration into Respondent's name) would appear to depend on an interpretation, under Pennsylvania law, of the contract that was executed between the parties – the 2011 operating agreement, along with any circumstances that might be considered relevant. Further, Complainant's claims of ethics violations by Respondent and Mr. Spadea, when Complainant resigned from the SLL firm, are clearly outside the scope of the Policy.
For these reasons, the Panel declines to decide whether the three elements enumerated in paragraph 4(a) of the Policy have been satisfied.
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Date: October 29, 2016