DECISION

Edgar Snyder & Associates, L.L.C. v. The SW PA IT Plan c/o Administrator ITnetwork

Claim Number: FA0311000214399

PARTIES

Complainant is Edgar Snyder & Associates, L.L.C. (“Complainant”) represented by Leland P. Schermer of Leland Schermer & Associates, P.C., 11 Stanwix Street, 7th Floor, Pittsburgh, PA 15222. Respondent is The SW PA IT Plan c/o Administrator ITnetwork, P.O. Box 824, Monroeville, PA 15146 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <edgarsnyder.us> registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 21, 2003; the Forum received a hard copy of the Complaint on November 24, 2003.

On November 24, 2003, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the Forum that the domain name <edgarsnyder.us> is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

On December 1, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 22, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On December 30, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

            A. Complainant makes the following assertions:

1. Respondent’s <edgarsnyder.us> domain name is identical to Complainant’s EDGAR SNYDER mark.

2.  Respondent does not have any rights or legitimate interests in the <edgarsnyder.us> domain name.

3. Respondent registered and/or used the <edgarsnyder.us> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is a well known law firm in western Pennsylvania, which specializes in, inter alia, personal injury representation. Edgar M. Snyder is the president of the firm. The firm and Mr. Snyder have been doing business in the Pittsburgh, Pennsylvania area since 1982. For two decades, Complainant has advertised in newspaper, magazine, radio, television, billboards and telephone book advertisements. Mr. Snyder personally appears in most of the firm’s advertisements. Complainant has spent in excess of $10 million advertising and marketing the firm and Mr. Snyder. The name Edgar Snyder is well known in western Pennsylvania.

Complainant advertises on the Internet at its principal website at the <edgarsnyder.com> domain name. The firm’s name and Mr. Snyder are prominently featured throughout the advertising on the website.

Respondent registered the <edgarsnyder.us> domain name on June 25, 2002. The WHOIS information for the domain name indicates that Respondent’s address is in Monroeville, Pennsylvania, an address near Pittsburgh. Respondent is using the disputed domain name to redirect Internet users to a website entitled “Fuck the Skull of Jesus,” which purports to be “[t]he home of iconoclasm on the MIT web.”

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to Paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

Identical and/or Confusingly Similar

Under the Policy, Complainant must first establish its rights in a mark. In this case, Complainant must demonstrate that it has common law rights in the mark EDGAR SNYDER because the mark is a personal name. To establish rights in a personal name as a mark Complainant must provide proof that the personal name has acquired distinctiveness and secondary meaning. See McCarthy on Trademarks and Unfair Competition, § 13:1 (4th ed. 2002) (stating that the basic rules pertaining to the protection of personal names require actual proof of secondary meaning for protection).

Complainant has produced evidence that its Internet advertising prominently features the firm’s name and Mr. Snyder. Furthermore, Complainant has alleged that it has spent in excess of $10 million advertising and marketing the firm and Mr. Snyder, and that the Edgar Snyder name has become well known in western Pennsylvania. Based on the evidence and the reasonable allegations, the Panel finds that Complainant has established that the name Edgar Snyder has acquired distinctiveness and secondary meaning and therefore common law rights in the EDGAR SNYDER mark have been established for purposes of the Policy. See McCarthy on Trademarks and Unfair Competition, § 13:2 (4th ed. 2002) (stating that secondary meaning grows out of long association of the name with the business, and thereby becomes the name of the business as such; is acquired when the name and the business become synonymous in the public mind; and submerges the primary meaning of the name as a word identifying a person, in favor of its meaning as a word identifying that business); see also Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the UDRP does not require that Complainant have rights in a registered trademark and that it is sufficient to show common law rights in holding that Complainant has common law rights to her name).

Moreover, Respondent has failed to come forward with a Response. Therefore, the Panel accepts Complainant’s assertion of common law trademark rights as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Complainant contends that Respondent’s <edgarsnyder.us> domain name is identical to Complainant’s EDGAR SNYDER mark because the disputed domain name appropriates Complainant’s entire mark and simply adds the country coded top-level domain (“ccTLD”) “.us” to the end of the mark. The Panel finds that the addition of the ccTLD fails to sufficiently differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i) because top-level domains are required of domain names on the Internet. See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to Complainant’s TROPAR mark); see also InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (“The domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Besides accepting as true all of Complainant’s reasonable allegations and inferences, the Panel presumes Respondent lacks all rights to and legitimate interests in the disputed domain name for purposes of Policy ¶ 4(a)(ii) based on Respondent’s failure to respond. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Respondent is using the <edgarsnyder.us> domain name to redirect Internet users to a website entitled “Fuck the Skull of Jesus.” Such use of a domain name identical to Complainant’s common law mark fails to demonstrate a bona fide offering of goods under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use"); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

Complainant asserts that it has never authorized or licensed Respondent to register or use the disputed domain name or any other domain name that is identical or confusingly similar to Complainant’s mark. Moreover, Respondent has provided no proof and no evidence in the record indicates that Respondent is commonly known by EDGAR SNYDER or <edgarsnyder.us> or that Respondent holds trademarks in such marks. Thus, the Panel finds that Respondent has failed to demonstrate any rights to or legitimate interests in the <edgarsnyder.us> domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Unlike claims made under the UDRP, Complainants may establish the bad faith requirement of Policy ¶ 4(a)(iii) by proving bad faith registration or use.

The Panel infers that Respondent had actual or constructive knowledge of Complainant’s rights in its common law mark when the domain name was registered because the domain name completely incorporates Complainant’s mark. Furthermore, the record indicates that Respondent was located near Complainant and therefore Respondent had probably come into contact with Complainant's extensive marketing efforts. Respondent’s registration of the <edgarsnyder.us> domain name, which is identical to Complainant’s EDGAR SNYDER mark under the Policy, establishes Respondent’s bad faith because Respondent’s registration prevents Complainant, the owner of the common law mark, from reflecting the mark in a corresponding domain name, which is evidence of bad faith under Policy ¶ 4(b)(ii). See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith where there is no reasonable possibility, and no evidence from which to infer, that the domain name was selected at random since it entirely incorporated Complainant’s name).

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

Complainant having established all three elements required under the Policy, the Panel concludes that relief should be GRANTED.

Accordingly, it is Ordered that the <edgarsnyder.us> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated: January 12, 2004

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