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Generic Top Level Domain Name (gTLD) Decisions |
Schiff Hardin & Waite v. Schnugger
dba Bizcheck
Claim Number: FA0204000110847
PARTIES
Complainant
is Schiff Hardin & Waite,
Chicago, IL, USA (“Complainant”).
Respondent is Jens Schnugger, dba
Bizcheck and others, Seevetal, GERMANY (“Respondent”).
The
domain name at issue is <schiff.biz>,
registered with Schlund & Partner AG.
The
undersigned, Tom Arnold, certifies that he has acted independently and
impartially and to the best of his knowledge, has no known
conflict in serving
as Panelist in this proceeding.
Tom
Arnold is sole Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint;
it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel
and with the National Arbitration
Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 25, 2002; the Forum
received a hard copy of the Complaint on
April 25, 2002.
On
May 10, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 30,
2002, by which Respondent could file a Response to the Complaint, was
transmitted to Respondent in compliance
with paragraph 2(a) of the Rules for
the Start-up Trademark Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on May 30, 2002.
Following a conflicts check reported to the Forum, on
June 20, 2002, pursuant to STOP Rule 6(b), the Forum appointed Tom Arnold of
Houston Texas, USA, as the
sole Panelist.
Transfer
of the domain name from Respondent to Complainant.
I find it
convenient and meaningful in this case, to present some of the reactions to
various party contentions, along the way while
reciting those contentions I
find to be most relevant.
A. Who is
Respondent?
The Registrant
of the subject domain name is identified in the domain name registration as
BIZCHECK. Respondent is named in the Complaint
as BIZCHECK, in the Response as
Jens Schnugger of Seevetal, Germany.
As aforesaid, on
the evidence before me including Respondent’s Annex 1, I find that Mr. Jens
Schnugger selected the name BIZCHECK as a name or trademark under which to do a
business project in the nature
of “a page for business referrals by clients”.
That business project failed, but while it was still a project of Mr.
Schnugger, the
application for registration of the subject domain name, <Schiff.biz>,
was filed in the BIZCHECK assumed trade
name.
The BIZCHECK
domain name did not attract material hits or business and the BIZCHECK project
failed and the BIZCHECK “dba” was abandoned.
The evidence gives us no crisp
date of that abandonment; likely there wasn’t one. In any event the change of
the registrant’s name
to the name of the remainder-proprietor of it, Respondent
Jens was not timely and promptly accomplished for reasons that are unclear,
but
do not smack of fraud or bad faith.
I know nothing
of the German law of assumed trade names nor registration of assumed trade
names which might possibly have a bearing
on this case, beyond
Respondent’s “Annex 1, Register of a
Business [name]” which is supportive of Respondent’s Response. While this form
akin to a U.S. assumed name
registration was provided, no information on German
law relating to assumed trade names nor registrations was provided by the
parties.
There are a number of variations on those legal themes among the
states of the United States. But I
conclude that there is insufficient inequity involved in the innocent remainder
after the business project was abandoned, of
the dba BIZCHECK as the
registrant, to frustrate the conclusions I reach here where I treat Respondent
as being Mr. Schnugger in
the travel business, a business which begot his
interest in a ship-oriented domain name which he undertook to register quite
timely
after learning of the opening of the .biz
category of names in 2001.
Of course the
dba circumstance explains why Complainant’s trademark search did not turn up either
BIZCHECK (its use was very limited,
short lived, and in a far away country from
Complainant, not on any international register), or “Schiff” (it hadn’t been
used by
Respondent during the time of Respondent’s effecting the registration,
indeed apparently it still hasn’t been used). Respondent reports
“I’m not
allowed by law to use “Schiff” as a trademark, . . . I will be allowed to
register “Schiff.biz” as a trade mark.”
But I here find that the non-use and evidence of it are not tainted with
bad faith, so its occurrence of nonuse is irrelevant.
But while
operating under the BIZCHECK dba trade name on July 12, 2001,
Mr. Schnugger received a notice that “biz” domain names were available.
“Schiff” in German means “ship” in English. He says that he
felt <Schiff.biz>
is a perfect domain name for cruise selling to the German language market, and
so he registered <SCHIFF.BIZ>.
Though he feels he has thus far been precluded by German law from using
it, he had a legitimate interest in developing the cruise
business that he was
working on during BIZCHECK times as well as up until now. I have not been
persuaded that I should discount the
credibility of that testimony of his
intent in judging good faith which is one of the points before me. Written
evidence contrary
to Respondent’s good faith has not been presented and is
assuredly unlikely to exist, in context of the BIZCHECK effort and the ongoing
effort which begot a cruise business level amounting to 25% of the Respondent’s
several products by now.
As occurs on
some point in most dispute resolutions, I am of course aware that there is some
confusion in the evidence and incomplete
presentation of the applicable German
law on the topic of assumed trade names, but I conclude that the above is the
most realistic
and practical construction of the point in context of this
proceeding.
Yes, I noted
Complaint’s citation of the failure of Respondent to get the name transferred,
but there are some grounds for that event
occurring which have nothing to do
with the Respondent’s good faith and equitable viability of the dba concept as
applied here. So
that fact is not binding up me, indeed is not even meaningful
evidence of bad faith, which of course is a key phrase in this proceeding.
In all events I
find at the outset that Mr. Jens Schnugger is properly to be viewed as the
Respondent here, whether acting through
an assumed trade name or not.
B. Issues: The
Domain Name v. Complainant’s claim
The domain name
at issue is <Schiff.biz>. For purposes of this decision I dismiss
the “.biz” as irrelevant. Princeton
Linear Assoc., Inc. v. Copland o/b/o/ LAN Solutions Inc., FA 102811 (Nat.
Arb. Forum, Feb. 8, 2001). A case that
some would argue to be to the contrary, Commonwealth
Bank v. Rauch, FA 102729 (Nat. Arb. Forum, Feb. 23, 2002), I find to be
distinguishable from the Schiff v Schiff aspect, the primary if not sole
aspect
of the present case, in that the registered domain name was only substantially
the same and not totally “identical”, and otherwise.
Schiff as you will note, is the first name of the Complainant, a
Chicago law firm, Schiff Hardin & Waite. The three-name trade name
was
obviously widely used, including to some degree in Europe, before relevant
times here. Whether the single word “Schiff” was used
as a service mark or was
ever recognized by any appreciable segment of the public as a service mark of
Complainant, is a contested
issue. –And the answer to that question is
determinative of the issue of whether Complainant has viable trademark or
service mark
rights that could be interfered with by Respondent.
Three aspects of
the dispute thereby appear. One, is the
real case one between the three-word firm name, Schiff, Hardin & Waite and
the one word Schiff? If so that question
raises the second question in these STOP proceedings, whether Schiff, Hardin & Waite is “identical” to Respondent’s
“Schiff” domain name. And third, does use (admitted here) of a three-word
name
of a law firm, automatically give rise to a common law trademark or service
mark in only the first word standing alone, without
the firm’s promotion of the
word or use of it as a mark?
Of course, even
if the only words properly in issue are Schiff v. Schiff which are admittedly
identical, that alone is insufficient
to make out a case of trademark or
service mark rights or infringement as I will discuss a bit further in a
minute.
I find that the
German word “schiff” has a very explicit meaning of :
a.
“ship” as a noun for a seagoing vessel,
b.
as the English verb “to ship a package” as equivalent to “to send …”,
c.
a kind of transport, as by a private contract carrier by contrast with mail or
personal
hand delivery) not uncommonly over water,
and
d. it is a sort of natural key word
in the cruise travel business.
C. The Complainant
Complainant, Schiff
Hardin & Waite, is a Chicago-based, mature, large, law firm. Since l964
that firm has used the trade name
Schiff Hardin & Waite as its firm name.
In the years since then it has gradually become known in the U.S. that some
still-rare
few law firms whose names include multiple individual’s last name,
are nick-named or otherwise sometimes, increasingly in recent
years, referred
to by the first name in the firm, as in this instance, “SCHIFF”. I can take
judicial notice of that fact, but even
now the vast majority of firms with
multiple person’s names in the firm name, do not themselves use only one
name. Some longer names are often
shortened to two names, as Baker Botts, Vinson Elkins, Fulbright and Jaworski,
but still as of now it
is rare indeed for a law firm with the names of several
lawyers in the firm name, to use only one name as a trade name or trade mark
for the firm, or to register a single name as their trademark or assumed name.
Complainant
alleges and provides affidavit evidence to the effect that the single name, Schiff,
has been in use as the trade name of the firm since l964, a date
when I (then a lawyer of 15 years national experience, officership
in national
bar associations, etc.) had never heard of a firm with several partners in the
firm name, using only the first name as
its trade name. Complainant asserts it
has used “Schiff” which the context biases it to use. It has used in this
proceeding also
another likely abbreviation for its firm, the acronym composed
of the initials of the names in the firm, SHW. In this proceeding
dispute
Complainant on occasion referred to itself on occasion by those initials SHW
rather than Schiff. This is very
interesting. It is at least some evidence of a habit contrary to Complainant’s theme.
More
significant, lawyers of major firms such as Complainant here are very familiar
with the concept that a mere conclusionary allegation
(which is all I have
here) is not a viable preponderance of the evidence, unsupported by evidence
of such use. –Evidence like samples of
relevant letterheads, or correspondence to and from the firm where the authors
use “Schiff” in the manner
of a service mark, or invoices using “Schiff” in the
heading, or internal office memoranda stationary headings, or court memoranda
or briefs, or brochures for new
recruits, or an assumed name registration or trademark registration, or in this
case, some document published
in a German language. I feel I can depend upon the fact that if the conclusionary
allegation is meaningfully true, I would have been provided with at least
some
evidence of some such sort, because it is so easy to come by and lawyers know
how very important it is that they provide evidence
in support of their
conclusionary allegations, at the very least when it is available and practical to do.
Complainant
here, a major world-class law firm with hundreds of lawyers, appears pro se,
but there is no way I can excuse them for
failure to provide evidentiary
support for the subject allegation, if any exists. The firm’s failure to
provide meaningful evidence
in support of its conclusionary allegation, is
itself evidence to the contrary—is evidence that the real fact is that their
uses
that the public somewhere might recognize as a brand name, was the
three-name “Schiff Hardin & Waite” rather than “Schiff” alone.
That makes
the identity of the alleged service mark and domain name become very important.
There are at
least eight details that are important to one or another of the STOP Policy or
Rules. An allegation such as I got here,
in generality to the effect that
Complainant is an international firm that has an office in Ireland and
“European” clients, says
nothing about the important, in some cases critically
important, detailed themes I can list thusly:
(
i ) common use of Schiff alone,
(
ii ) by the firm,
(iii)
recognized and known by the public at least somewhere (common law marks in
Complainant’s country require public
awareness of the relationship between
the mark and its proprietor, a
so-called “secondary meaning”),
(iv)
as its trade name or trade or service mark, i.e., in what style/context of
use,
(v)
before the issues of this dispute arose and before Respondent’s domain name
registration,
(vi)
the use being sufficient to establish trade or service mark rights in it, i.e.,
to establish
secondary meaning in the public
mind, or
(vii)
sufficiently in Germany to make it likely that Respondent in an entirely
different line
of trade would or should be aware of such
use by Complainant,
(viii)
all at Respondent’s domain name application time.
The Complaint
makes it clear that the Complainant knew
and assuredly should have known
that evidence of service mark style use of “Schiff” alone, was important to this case, that if the
conclusionary allegation was meaningfully true as to “Schiff” alone there would
be some rather
obvious documentary evidence handy to introduce in this
proceeding, and that Complainant has not offered responsible credible evidence on any one of those eight
points with respect to “Schiff” standing alone.. I find for Respondent on each of those eight points, as to
“Schiff” standing alone.
D. Respondent
During the
relevant time here Respondent was trying to develop its cruise business. The
cruise business now accounts for as much as
25% of Respondent’s gross
travel-business income and appears to be doing well enough, illustrating a good
faith intent to develop
that business line at least back to and past the very
recent registration time. The cruise-travel business line has connotative
connections
with “ship” or “schiff”.
There is no
evidence that Respondent had ever heard of the Complainant law firm prior to
filing his application to register, or prior
to being notified of Complainant’s
claim that initiated this dispute resolution proceeding. The nature of the
geographical distance
and the difference in business interests and channels of
trade make a strong case for the conclusion I reach, that Respondent was
not
aware of the Schiff Hardin & Waite law firm at the time of his application
to register, and generates an even stronger conviction
that he was not aware of
any body using the first name only, Schiff,
as a service mark for a U.S. law firm. In that context his good faith
intent to develop the cruise business on line using the German
word for “ship”
as a domain name, is the more credible view and I so find.
I of course am
acutely aware that this dispute resolution process, necessarily focused as it
is upon fast and inexpensive decisions,
does not afford an opportunity for
expensive discovery American style, by which Complainant might have learned
something on that
topic to present in evidence, but for good reasons the
parties and I are stuck with that lack of discovery, and I must base my ruling
in part upon the context of the absence of contrary evidence on that factual
detail that happens to be so important to this case.
I am confident that it is
not unjust that I depend upon that evidence being offered, if it existed in
print or otherwise. So I find
that no such tangible evidence exists.
As I recall it
from some example I heard or read or created somewhere, perhaps a made-up
fictional example in some course or book
involving trademarks, NBC has been
used in the U. S.
-
by National Broadcasting Company for broadcasting services,
-
by National Bank of Commerce for banking services,
-
by National Biscuit Company for crackers.
In classic
trademark law analysis, though the marks are identical, no one of those marks
infringes another because the lines of trade
and products are so disparate that
no significant number of the buying public would be likely ever be confused
into thinking that
any two of them came from or were controlled by the same
source. Broadcasters and Banks simply
don’t bake and sell crackers and the buying public feels it can depend upon
that.
Yes, I’m aware
of an exception in this era of gigantic diverse conglomerates, but exceptions
to that concept do not destroy the viability
of this point in aid of my
findings/conclusions in this case: It is clear that the buying public believes
that not one law firm in
the world is also engaged in the cruise business
beyond an internal service to its own employees, that not one cruise travel
agent
is really in the business of rendering legal services if for no other
reason than that cruise companies don’t have a license to practice
law. There
is no likelihood of confusion between
such disparate product/service lines. If that be so, there is no motivation for
Respondent knowingly to seek to trade upon
Complainant’s good will or obstruct
Complainant’s use of a domain name, no motivation that is important to
Respondent.
The cruise
business now accounts for as much as 25% of Respondent’s gross travel-business
income and appears to be doing well enough,
illustrating a good faith intent to
develop that business line at least back to the very recent registration time.
The cruise-travel
business line has connotations connected with “ship” or
“schiff”, sufficient to give some bit of plausibility to the Respondent’s
theme
on this topic. At the very least the connotation does not imply any
implausibility.
There is no
evidence that Respondent had ever heard of the Complainant law firm until
notified of Complainant’s claim. The nature
of the geographical distance and
the difference in business interests and channels of trade make a strong case
for the conclusion
I reach, that Respondent was not aware of the Schiff Hardin
& Waite law firm at the time of his application to register, and
generates
an even stronger conviction that he was not aware of any body using the first
name only, Schiff, as a nick name for
a U.S. law firm.
I of course am acutely aware that this
process, necessarily focused as it is upon fast and inexpensive decisions, does
not afford
an opportunity for expensive discovery American style, by which
Complainant might have learned something on that topic to present
in evidence,
but for good reasons the parties and I are stuck with that lack of discovery,
and I must base my ruling in part in context
of the absence of contrary
evidence on that factual detail that happens to be so important to this case. I
am confident that it is
not unjust that I can depend upon that evidence being
offered if it existed in print or otherwise.
Paragraph 15(a) of the STOP 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.”
Paragraph 4(a)
of the STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order
that a domain name should be
transferred:
(1) the domain name
is identical 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.
Due to the
common authority of the ICANN policy governing both the Uniform Domain Name Dispute
Resolution Policy (“UDRP”) and these
STOP proceedings, I exercise my discretion
to rely on relevant UDRP precedent where applicable.
4(a)(1) COMPLAINANT’S RIGHTS IN THE
MARK.
Under the STOP
Policy a STOP Complaint may be properly filed only when the domain name in
dispute is identical to a trademark or service
mark in which the Complainant
has rights and for which a Complainant has registered an Intellectual Property
(IP) claim form. Therefore, every STOP proceeding
necessarily involves a disputed domain name that is identical to a trademark or
service mark in which
a Complainant asserts rights.
As aforesaid the
existence of the “.biz” generic top-level domain (gTLD) in the disputed domain
name is not a factor for purposes
of determining that a disputed domain name is
not identical to the mark in which the Complainant asserts rights. Princeton Linear Assoc. Inc. v. Coland o/b/o LAN Solutions, Inc.,
FA 102811
As noted or
implied above, I have concluded that Complainant has common law rights in the
trade name and service mark “Schiff Hardin
& Waite.” I now also conclude that the three words
“Schiff Hardin & Waite” is not identical to the one word “Schiff” which has
been registered
by Respondent. See, for example, Commonwealth Bank v. Rauch, FA 102729 (Nat. Arb. Forum, Feb. 23,
2022) where one extra letter in the mark was held sufficient to make it not
identical to the
domain name.
Therefore to any
extent that domain name rights are being urged by Complainant to have been
derived from “Schiff Hardin &
Waite” in which I find Complainant has common law trade name and service mark
rights, its cause fails under the STOP proceedings
for want of identity between
the Complainant’s rights and the Respondent’s domain name.
Perhaps for this
reason, Complainant’s case is focused on the word “Schiff” as being its trade
name or service mark. I conclude
“Schiff” IS identical to the “Schiff”
in Respondent’s domain name, the “biz” of course being disregarded. The
difficulty with Complainant’s
cause on this issue as so founded, is that while
Complainant makes a conclusionary statement of “schiff” being its common law
trade
name, trade mark and service mark, it provided no evidence of that to
which I can attribute credibility.
As explained
above there was no real evidence, no credible and admissible evidence,
presented as to the use of SCHIFF alone and not
in context of “Schiff, Hardin & Wait” or perhaps
“Schiff Hardin”. Complainant does not
tell us whether it relies upon the firm’s telephone receptionist answering the
phone “Schiff Hardin”, or whether
she answers the phone some other way.
Complainant
alleges that “The domain name “Schiff.biz” is identical to the Complainant’s
service mark . . . Schiff Hardin
& Waite … is also widely recognized and known for the legal services it
provides by use of the first name in its
trade name, “Schiff.”
I found no
meaningful admissible evidence supporting that conclusionary allegation, no
real evidence as to public recognition of the
word SCHIFF standing alone. Yes, one of Complainant’s partners filed an
affidavit containing a conclusionary statement of “widely recognized and
known”. That
is less reliable evidence at best, than hearsay, and the fact that
the conclusion was sworn to does not fill the void of lack of
responsible
evidence.
He purports to
tell us what others know and think. But did he personally ask 1000 persons, 100
from each of ten different countries
or states of the U.S.? No, I think not.
Did he employ a
survey firm to perform a properly structured survey like all trademark lawyers
are familiar with? He doesn’t say so.
Any person with my experience will tell
you confidently from a reading of the record here, no he didn’t do that.
Were the
questions asked in any survey leading and therefore not meaningful
evidence? Had the interviewees been
coached what to say? All
evidence-law-experienced lawyers know he told us what HE believed without
undertaking to survey the folks whose belief he was
reciting.
He did not offer
even a shred of evidence from the others as to what those others believe. How did he know? He did not tell us what
evidence he relied upon as giving him his belief. And of course in the
proceedings here,
he could not be cross examined, which inherently puts a
fiduciary sort of burden upon him to support his beliefs of what others
believe,
with the evidence of what brought him to his conclusion.
Yes affidavit
evidence is admissible, but I do not think any jurisprudential tribunal is
bound by uncross-examined unrebutted affidavits
with no evidentiary support.
And as discussed
some pages above he offered not even his own knowledge as to the style of use
by the firm, whereby I could judge
whether it was a service mark use or some
other style of use. He offered no
suggested number of instances in which the firm had put “SCHIFF” standing alone
in print on a letterhead, statement
in a letter, CLE program, or elsewhere in
print. --No copy of newspaper articles
or client correspondence referring to the firm as simply “SCHIFF”. Etc. In the
absence of underlying
supporting evidence as outlined before and supplemented
here, this conclusionary statement appears to be not properly supported with
non-hearsay, responsible evidence to support the conclusion.
So I conclude
that the record fails to show by responsible admissible evidence, as it is
Complainant‘s burden to do, that Complaint
has perfected any common law
trademark/servicemark rights in the
word SCHIFF not accompanied by Hardin & Waite..
Accordingly, the
Complaint must be dismissed.
4(a)(2) RESPONDENTS
RIGHTS/LEGITIMATE INTERESTS IN THE DOMAIN NAME.
The STOP Policy
requires a successful Complainant to show that the Respondent has no rights or
legitimate interests in the Domain
Name.
It appears that
as of the time of registration, Respondent had no rights in the domain name,
except the right to take actions that
in the future would perfect some rights
(as indeed he
did—he perfected
his domain registration).
But skip
rights. He says that he has legitimate
interests in using the domain name in aid of development of his travel cruise
business. That is something
of which he had personal knowledge. As aforesaid,
on the record before me I have concluded that I must find that Respondent had
no
knowledge of any Complainant’s use of the same mark as he sought to develop,
and no motivation to use a mark the law firm might possess
if he did have such
knowledge. Even if he did have some
acquaintance with it, it would not appear that the Chicago law firm’s business
name or a part thereof, could
have the kind of good will connected to it so as
to be of economic advantage to Respondent to plagiarize that law firm name or
part
of it.
Complainant has
speculated that Respondent had no legitimate intent properly to use the domain
name, but that is rank speculation
of the purest sort, unsupported by any
evidence. In context of Respondent’s rebuttal and his position in terms of then
business interests,
the absence any evidence to support the Complainant’s
speculation is determinative.
I conclude that
Complainant has failed to prove responsibly that Respondent has no legitimate
interest in use of the domain name as
of the time he registered the name. However, Respondent has not sufficiently
proven with evidentiary paper its rights to the domain name such that I elect
not to preclude
further IP claimants from claiming any rights that they may
have.
4(a) (3) RESPONDENT’S REGISTRATION OR USE
IN BAD FAITH.
Respondent
having not yet used, Respondent has not used in bad faith.
There is no
evidence (by comparison with speculation) that Respondent registered only for
purposes of sale of the domain name, or
only for purposes of precluding
Complainant from using its trade name or trade or service marks. Respondent has
not offered the domain
name registration for sale.
Respondent, at
the time of his application having no knowledge of any trade name or trade or
service mark rights in the Complainant,
and no knowledge of any value in
Complaint’s rights (if any there was) that would be relevant to Respondent’s
business interests
or purposes, I find that he did not register in bad faith.
but in independent good faith pursuit of his own business interests.
Note that I can
and do reach that conclusion without reliance upon the further conclusion
expressed earlier, that Complainant’s claim
to service mark rights is in error
for want of any appropriate supporting evidence. --And vice versa. I find “belt and suspenders”.
Complainant’s
Complaint is dismissed. Further
challenges against this domain name under the STOP Policy shall be
permitted
Tom Arnold, Panelist
Dated: July 7, 2002
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