Law Offices of Marvin Lundy, LLP; Marvin Lundy v. Scott E. Diamond

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Marvin Lundy and Law Offices of Marvin Lundy, LLP v. Scott E. Idmaond

(Scott E. Diamond)

Case No. D2001-1327

1. The Parties

The Complainant is Marvin Lundy, an individual with address in Philadelphia,

Pennsylvania, United States of America (USA), who is a member of a limited liability

partnership, and Law Offices of Marvin Lundy, LLP, also with place of business

in Philadelphia, Pennsylvania, United States of America.

The Respondent is Scott E. Idmaond, known as Scott E. Diamond, with

address in Philadelphia, Pennsylvania, United States of America.

2. The Domain Name and Registrar

The disputed domain name is <marvinlundy.com>.

The registrar of the disputed domain name is Domain Bank, Inc., with

business address in Bethlehem, Pennsylvania, United States of America.

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) The Complainant initiated the proceeding by the filing of a complaint via

courier mail received by the WIPO Arbitration and Mediation Center ("WIPO")

on November 6, 2001. Following the receipt from WIPO of notice of

technical deficiencies in the complaint, Complainant sent an amended complaint

by e-mail received by WIPO on November 26, 2001, and by courier mail

received on November 30, 2001. Complainant paid the requisite filing

fees. On November 15, 2001, WIPO transmitted a Request for Registrar

Verification to the registrar, Domain Bank, Inc., with the Registrar’s Response

received by WIPO on November 16, 2001.

(b) On December 3, 2001, WIPO transmitted notification of the complaint and

commencement of the proceeding to Respondent via e-mail, telefax and courier

mail.

(c) On December 28, 2001, Respondent’s response was received in hardcopy by

WIPO, having been dispatched by international air courier prior to the due date

for response. Respondent also transmitted its response to Complainant.

(d) On January 15, 2002, WIPO invited the undersigned to serve as panelist

in this administrative proceeding, subject to receipt of an executed Statement

of Acceptance and Declaration of Impartiality and Independence ("Statement

and Declaration"). On January 16, 2002, the undersigned transmitted

via telefax the executed Statement and Declaration to WIPO.

(e) On January 24, 2002, Complainant and Respondent were notified by WIPO of

the appointment of the undersigned sole panelist as the Administrative Panel

(the "Panel") in this matter. WIPO notified the Panel that, absent

exceptional circumstances, it would be required to forward its decision to WIPO

by February 7, 2001. The Panel received a hard copy of the file in

this matter by courier from WIPO.

(f) Following notification from the Panel of circumstances requiring an extension

of the date for decision in this matter, WIPO notified the parties that the

Panel had extended the projected date for a decision until February 14, 2002.

The Panel has not received any requests from Complainant or Respondent regarding

further submissions, waivers or extensions of deadlines, and the Panel has not

found it necessary to request any further information from the parties. The

proceedings have been conducted in English.

4. Factual Background

Complainant Marvin Lundy is a law practitioner and is licensed to practice

law in the state of Pennsylvania. He has apparently been so licensed since 1960.

Mr. Lundy was a member of various law firms that included "Lundy"

among names in the partnership name (e.g., "Manchel Lundy &

Lessin"). The partnership "Haymond & Lundy" was dissolved

on October 8, 1999 and, although the complaint is not clear on this

point, it would appear that Mr. Lundy began doing business as "Law Offices

of Marvin Lundy" after that date.

Complainant appears to assert a common law service mark right in the name "Marvin Lundy"

on the basis that such name is inherently distinctive. Other than to state that

Complainant is "a well known attorney at law in Philadelphia, Pennsylvania,

and has been in practice for over forty years", Complainant has furnished

no evidence of recognition of the name among consumers of legal services.

According to the registrar’s (Domain Bank, Inc.’s) verification response to

WIPO, dated November 15, 2001, "Scott E. Idmaond" [sic]

is the listed registrant of the domain name <marvinlundy.com>. According

to that verification, "Diamond, Scott", is the Administrative Contact

for the name. According to a Network Solutions’ WHOIS database printout submitted

by Complainant, the record of registration for the disputed domain name was

created on October 19, 1999 (Complaint, Exhibit A).

Complainant asserts in paragraph 15 of its complaint that "On information

and belief, no other legal proceedings have been commenced or terminated in

connection with or relating to the domain name MARVINLUNDY.COM". However,

the record of legal proceedings commenced by Complainant against Respondent

and others in connection with the dissolution of a prior partnership indicates

that Complainant has asserted unfair competition claims regarding the disputed

domain name in a U.S. state court proceeding (Marvin Lundy v. Robert Hochberg,

John Haymond, Scott E. Diamond, et al., Court of Common Pleas, Philadelphia

County, PA (No. 00676, Feb. Term 2001), at amended complaint, paras.

94 & 111), and has attempted to assert Lanham Act claims regarding the disputed

domain name in a related federal court proceeding (John Haymond and Haymond,

Napoli and Diamond v. Marvin Lundy, Civ. Action No. 59-5048, E.D. Penn.,

hearing transcript of January 8, 2001). (Response, para. 11.G.5 and

Exhibits A-C.) These proceedings were consolidated and tried before a federal

court, a jury finding against Complainant on breach of contract claims that

were ultimately taken to trial.

It is common ground among the parties that Respondent was formerly associated

with Mr. Lundy in different law firm permutations, and that the professional

relationship between them was terminated in or about October 1999.

The disputed domain name has not been used in connection with an active Internet

website. Respondent asserts that there is a website under construction that

will be used to notify clients of Respondent (and others in former firms involving

Mr. Lundy) regarding where Respondent and others are practicing law, as Mr.

Lundy is alleged not to provide such information when contacted by Respondent’s

clients.

By letter of October 26, 2001, Complainant via counsel sent a cease and desist

and transfer demand to Respondent regarding the disputed domain name. By reply

letter of October 30, 2001, Respondent replied that he would be interested

in receiving legal substantiation for the demand, that he had received threats

from Mr. Lundy in the past, and stated "Of course, if your client wishes

to purchase the domain name from me in order to settle this dispute, I will

entertain his offer."

The Service Agreement in effect between Respondent and Domain Bank, Inc. subjects

Respondent to Domain Bank, Inc.’s dispute settlement policy, the Uniform Domain

Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999,

and with implementing documents approved by ICANN on October 24, 1999.

The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires

that domain name registrants submit to a mandatory administrative proceeding

conducted by an approved dispute resolution service provider, of which WIPO

is one, regarding allegations of abusive domain name registration and use (Policy,

para. 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant asserts that Marvin Lundy is a well known attorney who has practiced

law in the same area for a substantial period of time (see Factual Background,

supra). Complainant states, "The mark ‘Marvin Lundy’ is distinctive.

It is misleading to use the mark, Marvin Lundy, because there is no person named

Marvin Lundy associated with Respondent."

Complainant asserts that the disputed domain name is confusingly similar to

its mark.

Complainant alleges that Respondent has no rights or legitimate interests in

the disputed domain name. Complainant asserts that Respondent has not made a

bona fide offering of goods or services under the name, has not been commonly

known by the name, has not been authorized to use it, and has not made legitimate

noncommercial or fair use of the name.

Complainant alleges that Respondent has registered and is using the disputed

domain name in bad faith because: (a) he was aware of Complainant’s rights in

its mark when he registered it; (b) use of the name to identify a website would

create initial interest confusion, even if the site could ultimately be determined

not to be affiliated with Complainant, and (c) Respondent’s offer to sell the

disputed domain name to Complainant evidenced an intention to register and use

it in bad faith.

Complainant requests the Panel to order the registrar to transfer the disputed

domain name to it.

B. Respondent

Respondent denies that Complainant has rights in "Marvin Lundy" as

a mark. Respondent states that Complainant is not well known, and that "Marvin

Lundy" is not inherently distinctive. Respondent asserts that "Marvin

Lundy" is not a famous name.

Respondent asserts that there would be no confusion in the market place resulting

from use of the disputed domain name "to advise the general public of the

whereabouts of those formerly employed or partnered with Marvin Lundy."

Respondent asserts rights or legitimate interests in the disputed domain name.

He asserts that use of the name to advise the public of contact information

for prior associates and partners of Mr. Lundy would be "a legitimate,

commercial and fair use" and that this "offers information that is

useful to the general community at large."

Respondent states that he did not act in bad faith since his offer to sell

the name to Complainant was in the nature of an offer to resolve a dispute.

Respondent denies that Complainant has accurately responded to whether there

are or were other legal proceedings involving the disputed domain name, referring

to certain litigation (see Factual Record supra).

Respondent requests that the Panel deny Complainant’s request for an order

to transfer the disputed domain name.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive

domain name registration and use. The Panel will confine itself to making determinations

necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process

requirements be met. Such requirements include that a respondent have notice

of proceedings that may substantially affect its rights. The Policy, and the

Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"),

establish procedures intended to ensure that respondents are given adequate

notice of proceedings commenced against them, and a reasonable opportunity to

respond (see, e.g., paragraph 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary

to notify the Respondent of the filing of the complaint and initiation of these

proceedings. Respondent has filed a detailed response to the complaint indicating

that he received notice and was afforded an adequate opportunity to respond.

Paragraph 4(a) of the Policy sets forth three elements that must be established

by a complainant to merit a finding that a respondent has engaged in abusive

domain name registration and use, and to obtain relief. These elements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark

or service mark in which the 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.

Each of the aforesaid three elements must be proved by a complainant to warrant

relief.

Establishing abusive domain name registration and use presupposes the existence

of a valid trademark or service mark.

Complainant has not registered "Marvin Lundy" as service mark on

the Principal Register at the USPTO[1].

Complainant’s asserted mark does not enjoy a presumption of secondary

meaning under federal law based on registration[2].

Common law rights in a trademark or service mark may arise under the federal

Lanham Act or state law[3] , and

a substantial number of decisions by administrative panels under the

Policy have been based on common law trademark or service mark rights[4].

A principal issue in this proceeding is whether Complainant has established

such common law rights.

It is a basic rule of service mark law in the United States that personal names

(combining a first name and surname) are not considered inherently distinctive[5].

In order to establish common law service mark rights in a personal name,

it is necessary to show that the name has acquired secondary meaning among consumers

in the relevant market; that is, to show that consumers associate the name with

a specific provider of services.

In the present proceeding, Complainant has asserted that the name "Marvin

Lundy" is "distinctive", and that Complainant is "a well

known attorney at law in Philadelphia." As noted above, from the standpoint

of the U.S. common law regarding personal names claimed as service marks, such

names are not inherently distinctive. An assertion of distinctiveness will not

suffice to establish rights.

The mere assertion by Complainant that "Marvin Lundy" is "well

known", a fact denied by Respondent, does not suffice to establish that

consumers associate the name "Marvin Lundy" with a specific provider

of legal services. Complainant has provided no information or materials that

support its assertion, such as published news reports, survey responses, evidence

of advertising, or other materials that might establish at least a prima facie

case in support of its assertion.

Because Complainant has failed to establish common law service mark rights,

it has failed to establish the first element necessary for a finding of abusive

domain name registration and use. Since all three elements set out in paragraph

4(a) of the Policy must be established to succeed on a claim, Complainant fails

to establish abusive domain name registration and use against Respondent.

As a matter of administrative efficiency, the Panel will not consider the other

claims asserted by Complainant.

The Panel admonishes Complainant and his counsel for failing to disclose that

Complainant had previously asserted an unfair competition claim in state court

proceedings regarding the disputed domain name. Rule 3(b)(xi) requires that

a Complainant "Identify any other legal proceedings that have been commenced

or terminated in connection with or relating to any of the domain name(s) that

are the subject of the complaint."

7. Decision

The Panel determines that Complainant, Marvin Lundy and Law Offices of Marvin

Lundy, has failed to establish rights in a service mark. The panel determines

that Respondent, Scott E. Idmaond, known as Scott E. Diamond, did not engage

in abusive registration and use of the disputed domain name, <marvinlundy.com>,

within the meaning of paragraph 4(a) of the Policy. The Panel therefore rejects

Complainant’s request to order the registrar to transfer the disputed domain

name to it.

Frederick M. Abbott

Sole Panelist

Dated: February 14, 2002

1. See Factual Background, supra.

2. See 15 USCS § 1057(b) (establishing

presumption of exclusive right to use based on registration).

3. See, e.g., Century 21 Real Estate v. Billy

Sandlin, 846 F.2d 1175 (9th Cir. 1988).

4. See, among others by this sole panelist,

Adobe Systems Incorporated v. Domain OZ, WIPO

Case No

D2000-0057, decided March 22, 2000, and; Desert Schools Federal Credit Union

v. Symlink Communications, llc, WIPO Case No. D2001-0528,

decided July 4, 2001.

5. McCarthy observes:

"Personal names (surnames and first names) have been placed by the common

law into that category of non-inherently distinctive terms which require proof

of secondary meaning for protection. Thus, since personal names are not regarded

as being inherently distinctive marks, they can be protected as trademarks only

upon proof that through usage, they have acquired distinctiveness and secondary

meaning." [footnotes omitted] J. Thomas McCarthy, McCarthy on Trademarks

and Unfair Competition § 13:2 (4th ed. 1996 and updated)