Personal names that are unregistrable as trademarks have no actionable claim under the UDRP for abusive registration of their names. Attorneys (but not their law firms) are in no better position than other professionals. There has to be a trademark right. It does not come with admission to the Bar; from longevity in practice; from partnership in a major law firm [Gregg M. Mashberg v. Crystal Cox, D2011-0677 (WIPO June 30, 2011), Allen Fagin v. Crystal Cox, D2011-0678 (WIPO June 30, 2011), Joseph Leccese v. Crystal Cox, D2011-0679 (WIPO June 30, 2011)]; or from combining law with public service [Peter Bober v. National Institute for Mortgage Education, D2008-1668 (WIPO December 15, 2008) (Mayor of the City of Hollywood, Florida and a lawyer; is the author of scholarly articles, but not of commercially successful books)]. Personal names are not included for protection under the UDRP except where they have “branded” themselves, such as entertainers, athletes, artists, writers as well as persons whose names are eponymous (which can include attorneys) with their businesses. See, for example, Daly & Figgis Advocates v. Tilleman, D2011-0153 (WIPO February 15, 2011), in which Complainant was a very old and well established Kenyan law firm, which had been founded in 1899, and which was the owner of a pending trademark application for DALY & FIGGIS. Notwithstanding “pending” the Panel held that the law firm had common law trademark rights.
The distinction between partner and contract attorneys and attorneys who offer legal services under their own names is well drawn in Marc J. Randazza v. Reverend Crystal Cox, Eliot Bernstein, D2012-1525 (WIPO November 30, 2012). In fact, forfeiture of the subject domain names in Randazza is writ in precedent. The Bober Panel, for example, noted that “if [Bober] had been offering legal services under the name the Law Offices of Peter Bober” rather than “Bober & Bober, P.A.” he might have succeeded. Randazza is a principle attorney who practices under the name RANDAZZA LEGAL GROUP. Attorneys Mashberg, Fagin and Leccese complaining about the same respondent as Randazza failed because their names are not source indicators, whereas RANDAZZA LEGAL SERVICES is:
In the present dispute, the Complainant renders services under both his own personal name including his surname Randazza and the name of his law firm, Randazza Legal Group, specifically including, as its formative element, his surname. Hence, due to commonality of the surname in both instances, the Complainant has established that he acquired common law trademark rights not only in his own personal name but also in the name of his law firm.
“Reverend” Cox “who [in the Panel’s words] calls herself an ‘investigative blogger,’ [and] has a broad range of conspiratorial/journalistic interests” alleged in defense “that her websites provide commentary critical of the Complainant and thus forms protected speech under the First Amendment to the US Constitution.” The Panel – citing 322 West 57th Owner LLC v. Administrator, Domain,D2008-0736 (WIPO August 8, 2008) – rejected the defense outright:
[While it is] rather well established in UDRP precedent that, at least in cases involving parties based in the US, a respondent’s site that solely provides criticism, regardless of the severity or directness of that criticism, is protected under the First Amendment to the US Constitution as being an exercise of that respondent’s right of free speech … such protection is not absolute. If the respondent engages in actions that evince bad faith, and particularly conduct that commercially exploits the name for the respondent’s pecuniary benefit, thus indicating that the respondent’s intentions were not aimed solely at providing critical comment, then any such protection which would otherwise arise is lost (Emphasis added).
The Randazza Panel concluded that “under the present facts is not surprising [that protection which would otherwise arise is lost] inasmuch as her conduct clearly evidences bad faith.” Interesting though the Randazza case is in the UDRP context, it is even more interesting as a federal action for injunctive and legal remedies under the Anticybersquatting Consumer Protection Act. 15 U.S.C. § 8131 provides protection to un-trademarked individuals. Of this provision, Senator Orrin Hatch in explanation stated that
As with trademark cybersquatting, cybersquatting of personal names poses similar threats to consumers and e-commerce in that it causes confusion as to the source or sponsorship of goods or services, including confusion as to the sponsorship or affiliation of websites bearing individuals’ names. In addition, more and more people are being harmed by people who register other people[‘]s names and hold them out for sale for huge sums of money or use them for various nefarious purposes.” 145 Cong. Rec. S14,986, S15,019 (1999).
The domain names in Randazza’s UDRP proceeding related in him and his firm. A multitude of other domain names (32) relating to his wife and daughter are currently in litigation against Cox in the United States District Court for the District of Nevada (filed November 28, 2012). More to come after (inevitable) motions are decided. Much looked forward to.