Allen Fagin v. Crystal Cox (WIPO Case No. D2011-0678), and
Joseph Leccese v. Crystal Cox (WIPO Case No. D2011-0679)
Filed: April 15, 2011; Decided: June 30, 2011 (Panelists: Robert A. Badgley, Richard G. Lyon [Proskauer Rose LLP case]/Andrew D.S. Lothian [other cases], and Debra J. Stanek)
Disputed domain names:
These complaints were filed by Complainant Proskauer Rose, “one of the largest law firms in the United States,” and by Allen Fagin, Joseph Leccese, and Gregg M. Mashberg. The individual complainants are partners at Proskauer (as its been known since 2000), and have been quoted in various media outlets and named “Super Lawyers” by several publications. They point out that their names appear prominently on the firm’s website and appear in firm promotional materials, and that their names appear on bills sent to clients of the firm.
Respondent Crystal Cox bills herself as an “Investigative Blogger.” According to the Complainants, she shares the views of Eliot Bernstein, who sued Proskauer in 2007 accusing it of “contribut[ing] to the Enron bankruptcy and the presidency of George W. Bush.” She uses the disputed domain names to operate sites that accuse the firm and its attorneys of fraud, theft, corruption, and perjury.
Identical or Confusingly Similar
The Panel finds that Proskauer has rights in the mark PROSKAUER through its registration and use of that mark. The domain name
Though individuals can prove trademark rights (even unregistered rights) in their names, the Panel finds that the individual attorneys here failed to do so. The Panel acknowledges that the attorneys are “highly respected, prominent lawyers,” but points out that there is no evidence that they market or provide services independently of the Proskauer firm. Rather, “it appears that the Proskauer firm is the platform on which [they] provide [their] legal services.” Furthermore, there is no evidence that the individual attorneys spent money advertising their names, or billed clients in their own names; nor were they the driving force behind, or the alter ego of, the Proskauer firm.
Cases cited by the Complainants involving trademarks for individual names did not persuade the Panel. Those cases involved a banker whose name was incorporated into the bank name, and a fashion designer who used his personal name in connection with his fashion design business. “The context of an accomplished partner at a prominent, well-known law firm is generally not analogous.”
For those reasons, the Panel finds that the individual attorneys did not have trademark rights in their names sufficient to support a UDRP proceeding.
Rights or Legitimate Interests
“A majority of this Panel maintains that the use of the Domain Name [
Ultimately, the Panel declines to address these case squarely:
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.
In light of the Panel’s decision on the second prong, it declines to consider the third prong.
The complaint is denied.
Lawyers are always being told that they are their own “brand”; I guess this Panel doesn’t read the same marketing books I do. So what can a lawyer do to establish trademark rights in an individual name (short of becoming a named partner)?
For the Panel to find in favor of Proskauer, it would have to get around the free speech/fair use issue. Of course, free speech is not unlimited; defamatory statements are not protected by the Constitution. But the limited scope of the UDRP does not allow the Panel to make the fact-intensive determination of whether the Respondent’s statements are defamatory. Though it was likely worth filing these complaints and taking a shot, Proskauer may need a court to find defamation in order to recover the domains. Otherwise, the gripe sites they point to will likely be considered fair uses."