WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Law Offices of Michael Lupolover, P.C., Michael Lupolover, Esq. v. Registration Private, Domains By Proxy, LLC / Anton Ewing
Case No. D2017-1200
1. The Parties
The Complainants are Law Offices of Michael Lupolover, P.C. and Michael Lupolover, Esq. of Englewood Cliffs, New Jersey, United States of America (“USA” or “US”), represented by Iazzetta Law, LLC, USA.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, USA / Anton Ewing of San Diego, California, USA, represented by Law Office of Danny McDonald, USA.
2. The Domain Name and Registrar
The disputed domain names <lupolover.com>, <lupolover.me>, and <lupolover.co> (the “Domain Names”) are all registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2017. On June 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name <lupolover.com>. On June 21, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name <lupolover.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 23, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 23, 2017. The Center received email communications from the Respondent on June 23, 2017 and June 26, 2017. Taking into account the Respondent’s emails, the Center sent an email to the Parties inviting the Complainant to suspend the proceedings. As no suspension request was submitted, the Center notified the Parties that the proceeding would continue.
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 the Respondent of the Complaint, and the proceedings commenced on June 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 16, 2017. On July 5, 2017, and July 13, 2017, the Respondent requested extensions of the Response due date. On July 5, 2017, the Center extended the Response due date to July 20, 2017 in accordance with the Rules, paragraph 5(b). On July 14, 2017, the Center invited the Complainant to submit any comments to the Respondent’s request for extension by July 16, 2017. On July 17, 2017, the Center extended the Response due date to July 24, 2017. On July 17, 2017, the Complainant objected to the Respondent’s request for an extension. The Respondent sent an email on July 17, 2017 discussing the Complainant’s objections. The Complainant sent a supplemental filing to the Center on July 18, 2017, and the Respondent replied to the supplemental filing on the same date. A further supplemental filing was sent by the Complainant on July 21, 2017. The Response was filed with the Center on July 24, 2017.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on July 28, 2017. 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 Complainant submitted a supplemental filing on August 2, 2017, including, among other things, a certification including the phrase “under penalty of perjury”, which was missing from the original certification of Michael Lupolover, as well as “newly discovered evidence” of alleged cybersquatting. The supplemental filing also asked the Panel to add to the proceeding three more “lupolover” domain names registered by the Respondent since the filing of the amended Complaint. The Respondent sent an email to the Center on August 3, 2017, objecting to the supplemental filing. The Respondent sent emails to the Center on August 7, 2017 attaching “new evidence” allegedly concerning the Complainant’s involvement with telemarketing “scams”. Each of these submissions will be treated as “supplemental filings” in the discussion below.
The Panel issued Administrative Panel Procedural Order No. 1 dated August 7, 2017, adding the Additional Domain Names <lupolover.me> and <lupolover.co> to the proceeding, directing the Center to obtain registrar verification for the Additional Domain Names, and inviting the Respondent to make a Further Response in relation to the Additional Domain Names by August 19, 2017. (The other new “lupolover” domain name recently registered by the Respondent is a “.us” generic Top-Level Domain name, for which the Center does not provide dispute resolution services.) On August 13, 2017, the Respondent requested additional time to respond, citing among other things the Respondent’s and counsel’s pre-existing travel plans. The Complainant objected to this request on August 14, 2017. On August 15, 2017, the Respondent furnished evidence to the Center of the cited travel arrangements. Consequently, the Panel issued Administrative Panel Procedural Order No. 2 on August 18, 2017, granting an extension until September 2, 2017 for the Further Response.
On August 18, 2017, the Respondent sent an email to the Center asserting that the Complainant was continuing to “harass and stalk” the Respondent with “telemarketing calls”. The Respondent referred to existing litigation over alleged violations of the US TCPA (Telephone Consumer Privacy Act), asking whether the UDRP proceeding would continue if the Respondent filed a civil lawsuit against the Complainant on TCPA and other grounds. The Complainant sent the Center an email dated August 22, 2017, denying harassment of the Respondent and accusing the Respondent of improper direct contacts with the Complainant. The Complainant attached another supplemental filing with exhibits consisting of recent emails from the Respondent to the Complainant. In each of these instances, the Center advised the parties that the communications would be submitted to the Panel.
The Respondent filed a Further Response concerning the Additional Domain Names on September 2, 2017, including a request that the Center “strike from the file” statements concerning the Respondent quoted by the Complainant from an unrelated criminal proceeding. The Center replied that all of the Complainant’s supplemental filings had been forwarded to the Panel as required. The Respondent sent a further communication to the Center on September 4, 2017 with its objections.
4. Factual Background
The Complainants are a lawyer in New Jersey, USA and the professional corporation organized by that lawyer under New Jersey law in 2009 for the practice of law. Mr. Lupolover is currently licensed in New Jersey, New York, and the District of Columbia, USA. According to the Complaint, he is the managing attorney of the Law Offices of Michael Lupolover, P.C; seven other lawyers appear on the firm’s website at the time of this Decision.
The Complainants apparently have no registered trademarks but claim common law protection for LUPOLOVER and three LUPOLOVER-formative marks: LUPOLOVER LAW, LAW OFFICES OF MICHAEL LUPOLOVER, and MICHAEL LUPOLOVER LAW OFFICES. The Complaint attaches a Certification of Michael Lupolover stating that these names have been used for a predominantly consumer law practice since 2009 and in connection with an associated website at “www.lupoloverlaw.com” (the “Complainants’ website”). The Complainants’ interests in the asserted marks are clearly shared, as the names are used in their common enterprise.
The Domain Name <lupolover.com> was registered on April 6, 2017 in the name of the Respondent’s domain privacy service. After receiving notice of the current dispute, the Registrar identified Anton Ewing (hereafter the “Respondent”) as the registrant. The Respondent registered the Additional Domain Names <lupolover.me> and <lupolover.co> on June 25, 2017, along with the domain name <lupolover.us>, which is not included in this proceeding.
The Respondent is evidently an individual residing in San Diego, California, USA who disapproves of the Complainants. The Response characterizes the Respondent’s website at “www.lupolover.com” as “a public service and news gathering web page”. The website does not include information or contact details about the Respondent and does not advertise goods or services offered by the Respondent or any third party. Originally headed “Michael A. Lupolover, Esq. Law Office”, the home page of the Respondent’s website is now headed with the words, “This page is about the bad acts of Michael A. Lupolover, Esq.” and includes a disclaimer of affiliation: “This is not a law firm web page. If you want to hire Lupolover, then go to www.lupoloverlaw.com”. The Respondent’s website argues that the Complainants “run” a company called Creditors Relief, LLC, which hired a telemarketing firm that allegedly violated federal law in calling telephone numbers in the “do not call” database. The website includes links to information about lawsuits in Pennsylvania, New York, and New Jersey, as well as a Consumer Financial Protection Bureau administrative proceeding. The Respondent’s website summarizes TCPA telemarketing rules and provides information on filing telemarketing complaints and bar grievances against attorneys. The Panel notes that the browser tab for the Respondent’s website, in popular browsers, displays the phrase “Lupoloversucks”.
The Domain Name <lupolover.co> is associated with a similar criticism website attacking the Complainants. At the time of this Decision, that website is headed, “Michael Lupolover – Telemarketer”, with the tag line, “Creditors Relief Scam”. The website has a disclaimer of affiliation with the Complainants similar to the one found on the Respondent’s website described above, as well as the same links to third-party sites with information about lawsuits, TCPA complaints, and bar complaint procedures. The website includes the caution, “Do not trust Michael Lupolover.” Again, in at least some browsers, the browser tab reads, “Lupoloversucks”.
At the time of this Decision, the Domain Name <lupolover.me> resolves to a parking website “parked FREE courtesy of Domains Priced Right”. This advertises web development and offers the domain name for sale, as well as displaying pay-per-click (“PPC”) advertising links to apparently unrelated third parties.
5. Parties’ Contentions
The Complainants claim LUPOLOVER, LUPOLOVER LAW, LAW OFFICES OF MICHAEL LUPOLOVER, and MICHAEL LUPOLOVER LAW OFFICES as “protected marks” and argue that the Respondent has no rights or legitimate interests in using identical or confusingly similar Domain Names.
The Complainants contend that the Respondent selected and used the Domain Names in bad faith, to harm the Complainants’ business, persuade website visitors to join a lawsuit against the Complainants, and “extort money” from the Complainants.
The Respondent is represented by counsel but has made several communications directly to the Center and to the Complainants since the Complaint was filed in this proceeding. As with the Complainants’ submissions, the Panel will give greater weight to the Response and Further Response submitted within the prescribed time limits and with the required certification of accuracy and completeness.
The Response and Further Response challenge the Complainants’ trademark claims, assert a right to criticize the Complainants, and deny bad faith in registering and using the Domain Names. Much of the Response is devoted to arguing the truthfulness of the Respondent’s criticism of the Complainants (such as whether they were ever indicted or named in consumer complaints) and contending that the Complainants have lied in this proceeding and before other tribunals. The Response alludes to the Complainants’ “truly horrific acts”, suggesting that the Respondent is providing a public service in calling attention to them as a form of free expression protected by the First Amendment of the United States Constitution.
The Further Response does not explain why the Respondent registered Additional Domain names or what the Respondent plans to do with them. The Further Response argues that portions of the Complainant’s Supplemental Filings should be disregarded because they include statements made by a prosecutor in an earlier, unrelated criminal proceeding and should be considered more prejudicial than probative.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Supplemental Filings
Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding “with due expedition”. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only owing to some exceptional circumstance, such as to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.6.
The parties’ acrimonious exchanges in this proceeding do not, on the whole, warrant successive rounds of pleading, and much of what is offered in the supplemental submissions is either not pertinent to the elements of the UDRP Complaint or simply re-argues points made in the Complaint and Response. The Complainant rectified its defective certification, which could otherwise have been the subject of a panel administrative order. The Panel accepts the supplemental filings for limited purposes in addition to correcting the Complainant’s certification. The Respondent opened new issues by registering the Additional Domain Names a few days after the Complaint was filed. In the Panel’s view, it was then fair to allow the Complainant to add the Additional Domain Names to the proceeding, recognizing that this meant the proceeding would be delayed to give the Respondent time to submit a Further Response. Much of the other material submitted by the parties is designed to discredit their opponents generally but has no direct bearing on the facts at issue in this proceeding and must be disregarded.
B. Identical or Confusingly Similar
The Policy does not require a registered trademark, but to establish rights in an unregistered or common law trademark for purposes of the UDRP, the Complainants must show that the claimed LUPOLOVER marks have become “distinctive identifiers” that consumers associate with the Complainants’ legal services. See WIPO Overview 3.0, section 1.3:
“Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”
The WIPO Overview, based on a review of panel decisions, observes that “[s]pecific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning.”
In this proceeding, the Complainants rely on the Certification of Michael Lupolover, the Complainants’ business registration, screen shots of the Complainants’ website in 2009, and the current version of the Complainants’ website. These establish that the Complainants have been doing business since 2009 using the name “Law Offices of Michael Lupolover, P.C.” and that the law practice has been advertised in New York, New Jersey, and the District of Columbia most frequently as LAW OFFICES OF MICHAEL LUPOLOVER (hereafter the “LUPOLOVER mark”). The Panel finds insufficient evidence on this record to establish that the family name “Lupolover” alone or the other forms of the name have acquired secondary meaning as common law service marks in those jurisdictions. The Panel observes that there is no evidence that the Complainants have previously taken formal action to protect any form of the name as a trademark or service mark. There is no indication in the record that they have asserted trademark rights against other parties. They have not applied for trademark registration. The Complainants’ website does not display a “TM” or “SM” symbol by any of these names indicating a claim to a common law trademark or service mark. However, the Panel concludes that the consistent use of a business form of the name over a period of more than eight years satisfies the requirement for a common law mark on which this Complaint may be grounded.
The first element of a UDRP complaint “serves essentially as a standing requirement” and entails “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name”. See WIPO Overview 3.0, section 1.2. Each of the Domain Names incorporates the name “lupolover”, which is not a common family name and represents the distinctive portion of the LUPOLOVER mark. The Panel concludes under this test that the Domain Names are confusingly similar for purposes of the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Names, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Names, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
The Response suggests that “lupolover” is phonetically similar to “Loop Hole Lover”, a phrase relevant to the Respondent “as a tax professional”. This is not a persuasive argument, as the similarity is strained and the Respondent has not used, or made demonstrable preparations to use, any of the Domain Names in connection with the offering of tax services.
More to the point, the Respondent argues that two of the Domain Names, <lupolover.com> and <lupolover.co>, have been used for noncommercial, fair-use, criticism websites. Criticism can be constitutionally protected free speech, but that does not mean that using another party’s mark for the domain name of a criticism website is automatically deemed fair use. “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner” (WIPO Overview 3.0, section 2.5).
Here, the “lupolover” name alone, with no clearly discriminating text, forms the Domain Names (see id., sections 2.6.2, 2.6.3). The Respondent’s criticism websites now include prominent disclaimers of affiliation, as well as a critical browser tab (which will not be seen by all users, depending on the kind of browser and device they employ). But that was not originally the case. As demonstrated by screen shots accompanying the Complaint, the Respondent’s website associated with <lupolover.com> formerly included the Complainant’s contact details in the “About Us” section, and each page of the Respondent’s website was formerly headed “Michael A. Lupolover, Esq. Law Office”, a patently misleading label as the website was never associated with the Complainants. The Respondent urges the Panel to ignore this evidence because the website was subsequently revised, but this does not change the fact of the Respondent’s conduct. The Domain Names lack a distinguishing word such as “truth” or “sucks”, and the associated website was, until recently, affirmatively misleading. See WIPO Overview 3.0, sections 2.5.1, 2.5.2; Mr. Willem Vedovi, Galerie Vedovi S.A. v. Domains By Proxy, LLC / Jane Kelly, WIPO Case No. D2014-0780. The Panel concludes that the Respondent has not met the standard for demonstrating fair use of the Domain Names <lupolover.com> and <lupolover.co> in furtherance of the Respondent’s rights or legitimate interests, within the meaning of the Policy. The Respondent has a right to name the Complainants in order to criticize them, but it has no right to use their name in such a way that Internet users are attracted to a website because they are led to believe, at least initially, that it is a website sponsored by the Complainants. The Panel concludes that the second element of the Complaint has been established for the Domain Names <lupolover.com> and <lupolover.co>.
The Panel also concludes that the second element of the Complaint has been established with respect to the Domain Name <lupolover.me>, which has been used only for a PPC parking website and for which the Respondent has offered no evidence of demonstrable preparations for legitimate commercial or noncommercial use.
D. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):
“(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 the 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 web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
These examples do not squarely fit the circumstances of this case, and the Complainants do not rely on them. Rather, the Complainants argue that the Respondent similarly selected and used the Domain Names in bad faith to harm the Complainants’ business, persuade website visitors to add “specious” claims to a lawsuit against the Complainants, and ultimately “extort money” from the Complainants, presumably in a settlement of litigation or threatened litigation (the record includes an exchange of rather colorful emails aimed at the settlement of potential TCPA claims by the Respondent). The Complainants contend that bad faith is evident as well in the Respondent’s former misleading web page headers (“Michael A. Lupolover, Esq. Law Office”), the listing of the Complainant’s own postal address in the “About Us” page on the Respondent’s website, and the publication of “false statements” on the Respondent’s website, including an allegation that the Complainants “practice law in CA without a license” and have been “indicted” and “busted by the feds”.
The record indicates that the Respondents’ motivation is to publicly condemn the Complainants’ conduct in representing certain of its clients and in its own telemarketing practices. The websites associated with the Domain Names <lupolover.com> and <lupolover.co> have been used only for that purpose and do not have any evident commercial application. This is generally protected speech under US law, if the defamatory remarks are not factually untrue. It is not necessary to conduct a sort of libel mini-trial in the context of this UDRP proceeding, to determine the truth or falseness of the statements made on the Respondent’s website. Under the Policy, genuine criticism can be a good faith use of the Domain Names, whether or not those views prove to be factually well grounded.
However, using the Domain Names to engender confusion as to source or affiliation, in an apparent effort to disrupt the Complainants’ business, cannot be considered good faith within the meaning of the Policy. See Mr. Willem Vedovi, Galerie Vedovi S.A. v. Domains By Proxy, LLC / Jane Kelly, supra. As noted above in connection with the second element of the Complaint, the Domain Names do not include any words distinguishing them from the Complainants, and the Respondent’s website was, until recently, affirmatively misleading as to source or affiliation.
The Domain Name <lupolover.me> has been used only for PPC advertising. The Respondent is aware of the Complainants’ mark and must be accountable for allowing it to be exploited commercially without permission.
The Panel concludes that the third element of the Complaint has been established with regard to all three Domain Names.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <lupolover.com>, <lupolover.co>, and <lupolover.me>, be transferred to the Complainant.
W. Scott Blackmer
Date: September 10, 2017