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Generic Top Level Domain Name (gTLD) Decisions |
Dykema Gossett
PLLC v DefaultData.com and Brian Wick
Claim Number: FA0104000097031
PARTIES
The Complainant is Dykema Gossett PLLC, Detroit, MI, USA (“Complainant”) represented by William F. Kolakowski III. The Respondents are DefaultData.com, and Brian Wick, Denver, CO, USA (“Respondent”) represented by Brian G. Wick.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <dykemagossett.com>, registered with Register.com, Inc. New York, NY.
PANEL
The undersigned certifies that, after conducting a check to clear potential conflicts of interest, he has acted independently and impartially and, to the best of his knowledge, does not have a known conflict in serving as Panelist in this proceeding.
Jonathan Hudis is the Sole Panelist in this Proceeding.
PROCEDURAL HISTORY
The Complaint for this Proceeding was submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (ICANN Policy), the Rules for Uniform domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (ICANN Rules) and the National Arbitration Forum (NAF) Supplemental Rules (NAF Supp. Rules). ICANN Rule 3(b)(i).
Complainant submitted its Complaint to the National Arbitration Forum (“the Forum”) electronically on April 6, 2001; the Forum received a hard copy of the Complaint on April 6, 2001.
On April 9, 2001, Register.com confirmed by e-mail to the Forum that the domain name <dykemagossett.com> is registered with Register.com and that Brian Wick is the current registrant of this domain name. The WhoIs information submitted by Complainant shows that DefaultData.com was the domain name registrant at the time the Complaint was submitted to the Forum. In any event, Mr. Wick, in the Response, confirms that DefaultData.com is his alter ego for domain name registration and business purposes. So, in this Proceeding, Mr. Wick and DefaultData.com shall be treated as “Respondent”. The Registrar has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”).
On April 10, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 30, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@dykemagossett.com by e-mail.
The response was received and determined to be complete on May 1, 2001, one day late. Complainant’s Reply was submitted to the Forum on May 4, 2001, but the required fee therefor was late. The Panel, in its discretion, has considered all of the submissions of the parties.
On
May 11, 2001, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum
inquired whether the undersigned would agree to serve as the Sole Panelist for
this Proceeding. On May 14, 2001, after
clearing potential conflicts of interest, the undersigned agreed to serve as
the Sole Panelist for this Proceeding.
On May 16, 2001, the Forum appointed the undersigned to serve as the
Sole Panelist for this Proceeding, and forwarded the file to
the undersigned to
arbitrate this matter.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a law firm comprised of
approximately 230 attorneys with several offices in Michigan, and other offices
in Chicago,
Illinois and the District of Columbia. Complainant began providing legal services under the name Dykema,
Jones, &Wheat in 1926. In 1970,
Complainant’s name was changed to Dykema, Gossett, Spencer, Goodnow &
Trigg. In 1988 Complainant’s name was
shortened to Dykema Gossett and Complainant has provided legal services under
this name ever since.
The service mark DYKEMA GOSSETT is used by
Complainant to distinguish its services from the services of others. Complainant uses the mark DYKEMA GOSSETT on
letterhead, business cards, and advertising brochures and in other ways. Copies of letterhead, business cards, and
advertising brochures were attached to the Complaint. Complainant also uses the mark DYKEMA GOSSETT on its website
located at the URL http:\\www.dykema.com. A copy of the homepage from Complainant’s
web site was attached to the Complaint.
Complainant states that the legal services it provides are referred to
and identified by the service mark DYKEMA GOSSETT by Complainant’s
customers,
competitors, and others. Complainant’s
mark, DYKEMA GOSSSETT & Design, is registered with the U.S. Patent and
Trademark Office under Service Mark Registration
No. 2,354,800. A copy of this registration was attached to
the Complaint. The registration was applied
for in November, 1998, and granted on June 6, 2000.
Complainant asserts that the contested domain name <dykemagossett.com> is identical to or confusingly similar to the service marks DYKEMA GOSSETT and DYKEMA GOSSETT PLLC & Design owned by Complainant. It is asserted that the domain name is similar in appearance to Complainant’s marks and sounds identical to Complainant’s marks. The only arguable difference in appearance between the domain name and
Complainant’s marks, says Complainant, is the inclusion of the top-level domain (TLD) .com and the inability to use spaces in domain names.
Complainant next asserts that, although the domain name does not appear to be used to provide the same services as Complainant, the domain name is used to tarnish the type of services provided by Complainant. In particular, it is alleged that Respondent hosts a web site using the domain name in which Respondent claims to “parody” the legal system. A copy of the homepage for Respondent’s web site was attached to the Complaint. In using its web site to tarnish the legal system and the services provided by Complainant, it is asserted that Respondent increases the likelihood that an individual searching for Complainant will arrive at Respondent’s web site.
Complainant next contends that it and Respondent operate using an identical channel of trade—in this case, the Internet—wherein Complainant and Respondent attempt to provide information regarding the legal system and legal services. Because of the scope and ease of access of the Internet, says Complainant, potential customers or viewers of Complainant’s website and Respondent’s website will include relatively unsophisticated consumers as well as more sophisticated consumers, thereby increasing the likelihood of confusion.
Complainant urges that its marks are famous. As support for this contention, Complainant states that it is celebrating its seventy-fifth anniversary and has been operating under the name Dykema, Gossett, Spencer, Goodnow & Trigg since 1970 and Dykema Gossett since 1988. Complainant’s legal services, says Complainant, generate ten of millions of dollars in sales each year and Complainant states that it advertises heavily using its marks as evidenced by the Annexes to the Complaint.
Complainant also urges that its marks are strong. Complainant says it is unaware of a single other entity that provides legal services—or any other product or service period—under the name Dykema Gossett. Complainant states that its use of its marks has been substantially continuous and exclusive for many years.
Complainant next urges that Respondent should be
considered as having no rights or legitimate interests in respect of the domain
name
<dykemagossett.com>. According to the WhoIs listing for <dykemagossett.com> attached to the
Complaint, Respondent registered the domain name on October 27, 1999. To
Complainant’s knowledge, Respondent
has never made use of the domain name in
connection with a bona fide offering
of goods of services. Further, as shown
by a printout attached to the
Complaint, the domain name is not currently being used in connection with a bona fide offering of goods or services.
Complainant also submits that, to the best of its
knowledge, Respondent has not been commonly known by the domain name as an
individual,
business, or organization.
Rather, says Complainant, Respondent obtained the domain name <dykemagossett.com> along with the
domain names of numerous additional law firms without having any connection to
them.
Complainant further submits that Respondent is not making a
legitimate noncommercial or fair use of the domain name because Respondent
is
using the domain name to misleadingly divert consumers and to tarnish the
service marks at issue. In particular,
Respondent, says Complainant, has associated the domain name with what
Respondent refers to as a “parody” of the legal
system. By using the unique name of a well-known law
firm in connection with this “parody,” Respondent allegedly attempts to
misleadingly
divert consumers searching for the Complainant.
Complainant contends that no one looking for a
“parody” on the legal system itself would enter the name of a well-known law
firm in
an Internet search engine expecting to find such material. Accordingly, says Complainant, Respondent is
attempting to divert consumers searching for Complainant. Respondent also tarnishes Complainant’s
service marks by virtue of the material located at the website under the domain
name <dykemagossett.com>. Respondent allegedly attempts to tarnish
Complainant with images of sharks and dollar signs. Further, Respondent engages in obvious copyright infringement by
including a reappearing image of a famous cartoon character on its
web site. This link between a well-known law firm and
a violation of United States and international copyright laws allegedly further
tarnishes
Complainant.
Complainant submits that Respondent should be
considered as having no rights or legitimate interest in the domain name by
virtue of
Complainant’s U.S. Service Mark Registration. Complainant’s service mark application was
filed on November 23, 1998, thereby
allegedly providing Respondent with constructive nationwide use of—and
therefore priority in—the service mark pursuant to
15 U.S.C. 1057(c). As previously stated, the <dykemagossett.com> domain name was
registered on October 27, 1999.
Complainant also submits that the domain name was
registered and is being used in bad faith.
Respondent is alleged to have engaged in a pattern of conduct wherein
Respondent registers the domain names of well-known law firms
such as
Complainant without their consent and at the expense of their service mark
rights. It is contended that UDRP
Arbitration Panels already have heard no fewer than five disputes
brought by law firms against Respondent and/or aliases used by Respondent. In
each of these decisions, Complainant states,
the Forum has ordered the transfer
of the domain name at issue to the law firm.
Complainant next submits that Respondent
registered the domain name <dykemagossett.com>
primarily for the purpose of selling the domain name registration to
Complainant or a competitor for valuable consideration in
excess of
Respondent’s out-of-pocket costs related to the domain name. Respondent, it is alleged, originally
registered the domain name in the name of “NameIsForSale.com”. Respondent subsequently altered the WhoIs
contact information for <dykemagossett.com>
and other domain names, it is asserted, to conceal the purpose behind
Respondent’s registration of the domain names. When Complainant’s
authorized
representative entered the domain name “nameisfor.sale.com” into an Internet
search engine on March 28, 2001, however,
Complainant’s authorized
representative was transferred to defaultdata.com (i.e., the domain name
registrant identified in the WhoIs
listing for the <dykemagossett.com>.
Further, the contact information in the WhoIs listings for
defaultdata.com and nameisforsale.com is identical, as shown by evidence
attached to the Complaint. Accordingly,
Complainant submits that Respondent registered the domain name primarily for
the purpose of selling the domain name registration
to Complainant—the rightful
owner of the service mark—for valuable consideration in excess of Respondent’s
out-of-pocket costs directly
related to the domain name.
Complainant additionally submits that Respondent
registered the domain name <dykemagosett.com>
in order to prevent the rightful owner of the DYKEMA GOSSETT service mark (i.e., Complainant) from reflecting the
mark in a corresponding domain name. As
set forth above, Complainant asserts that Respondent has engaged in a pattern
of such conduct leading to no less than four adverse
decisions before the
Forum.
Complainant moreover submits that Respondent’s
actions disrupt the business of Complainant (even if Respondent is not in
“direct competition”
with Complainant).
As a result of Respondent’s actions, according to Complainant, many of
Complainant’s customers have difficulty accessing Complainant’s
website because
such customers may be inclined to look for Complainant using the domain name
<dykemagossett.com>.
Finally, Complainant submits that Respondent has intentionally attempted to attract Internet users to Respondent’s web site and to divert customers of Complainant by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site. These actions have been taken for the purpose of commercial gain because, says Complainant, Respondent hopes to force Complainant to purchase the domain name registration as discussed hereinabove.
B. Respondent
Respondent, in the Response, states that he/it is “not the best in communicating”. The Panel agrees. Respondent’s long, rambling, and often repetitive discourse may be summarized into 4 lines of argument:
1. Respondent’s registration and use of the <dykemagossett.com> domain name is a non-commercial parody in the nature of fair use;
2. To deprive Respondent of the <dykemagossett.com> domain name would be deny Respondent of his/its free speech rights to disseminate information about the legal system;
3. Any Internet user, upon reviewing Respondent’s web site located at a URL under the contested domain name, would immediately realize that he/it is not associated with Complainant; and
4. Previous rulings against Respondent, and the ICANN/UDRP system in general, have resulted from “railroaded adjudication” against Respondent.
The Panel notes that Respondent does not contest, and in fact several times concedes, the evidence and argument submitted by Complainant. Rather, what Respondent contests is Complainant’s assertion of Respondent’s lack of legitimate rights or interests and ill-motives in registering and using the disputed domain name.
C. Additional Submissions
Complainant’s
Reply asserts that Respondent should be
considered in default, in that the Response failed to comply with numerous
requirements of the (“UDRP”) and the
Supplemental Rules of the Forum; namely,
the Response: (i) substantially exceeds the Forum’s page limit, (ii) does not
provide a
postal address or telefax number, (iii) does not specify a preferred
method of communication for hard copy transmissions, (iv) does
not state that a
copy of the response has been transmitted to Complainant, (v) does not include
the required certification statement,
and (vi) does not include a schedule
indexing annexes.
Further, as of the date of its Reply, Complainant had not
received any of the exhibits referenced in the Response. Finally, Complainant alleges that the
Response was not filed within the required time limit, and that Respondent’s
belated extension
request should be denied — in that Respondent failed to
comply with the Forum’s Supplemental Rules in requesting such an extension.
FINDINGS AND
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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:
(i) the contested domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name; and
(iii) the contested domain name has been registered and is being used in bad faith.
In an administrative proceeding pursuant to the Policy, Rules and Supplemental Rules, the Complainant must prove that each of these three elements are present. Policy, ¶ 4(a).
The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the registrant registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it is shown that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s web site or location or of a product or service on his web site or location.
Policy, ¶ 4(b).
On the other hand, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the registrant’s rights or legitimate interests to the domain name:
(i) before any notice to the registrant of the dispute, his use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the registrant (as an individual, business, or other organization) have been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or
(iii) the registrant is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Policy, ¶ 4(c ).
Respondent’s Response was one day late, and contains numerous violations of the Rules and the Forum’s Supplemental Rules. Complainant submitted late the fee for its Reply. Notwithstanding Complainant’s request, the Panel declines to find Respondent in default, and the Panel has considered all of the parties’ submissions.
Respondent’s criticisms of the ICANN UDRP process in general, and specific Panel decisions rendered pursuant to the UDRP in particular (due to alleged “railroaded adjudications” against Respondent) are not appropriate in this administrative proceeding. These types of criticisms should be directed to the ICANN Board of Directors and Staff.
Identical and/or
Confusingly Similar Domain Name to Mark(s) in which Complainant Has Rights
Complainant has asserted its long use of the DYKEMA GOSSETT name and mark. Complainant has used earlier versions of this name and mark going back 75 years. The DKYKEMA GOSSETT name and mark has been used in this exact form at least as early as 1988. Complainant has been issued a U. S. Service Mark registration for DYKEMA GOSSETT & Design.
Respondent does not contest, and in fact numerous times concedes, Complainant’s rights in the DYKEMA GOSSETT name and service mark. Respondent also concedes the fame and strength of the DYKEMA GOSSETT name and service mark in connection with legal services. The Panel, however, does not opine upon, nor does it make any factual findings regarding, the fame or acquired strength of the DYKEMA GOSSETT name and mark. Insufficient evidence was provided by Complainant to make such findings (which is due to the nature of the limited submissions that can be made in a UDRP proceeding), and in any event such findings are not necessary for the Panel to reach its decision. The Panel does find, however, that Complainant has provided ample evidence to support its claimed rights in the service marks DYKEMA GOSSETT and DYKEMA GOSSETT PLLC & Design.
Complainant contends that the domain name <dykemagossett.com> is identical to or confusingly similar to the service marks DYKEMA GOSSETT and DYKEMA GOSSETT PLLC & Design. Complainant asserts that the domain name is similar in appearance to Complainant’s marks and sounds identical to Complainant’s marks. The Panel agrees. See, Barney’s Inc. v. BNY Bulletin Board, D2000-0059 (WIPO Apr. 2, 2000) [“That Respondent has omitted the punctuation and spacing that appears in Complainant’s mark from the domain name does not defeat this identity.” And “[t]he top level domain designator ‘.com’ simply functions to indicate that the domain name owner purports to be a business.”].
The requirements of paragraph 4(a)(i) of the Policy have been met.
Respondent’s
Alleged Rights or Legitimate Interests
Complainant contends that Respondent should be
considered as having no rights or legitimate interest in respect of the domain
name
<dykemagossett.com>.
Complainant asserts that Respondent has never
made use of the domain name in connection with a bona fide offering of goods of services, and that the contested
domain name is not currently being used in connection with a bona fide offering of goods or
services. Respondent concedes this, so
the Panel need not go further.
Complainant also asserts that, to the best of its
knowledge, Respondent has not been commonly known by the domain name as an
individual,
business, or organization.
Again, Respondent concedes this, so the Panel need not go further.
Complainant further submits that Respondent is
not making a legitimate noncommercial or fair use of the domain name because:
(i) Respondent
is using the domain name to misleadingly divert consumers and to
tarnish the service marks at issue, (ii) Respondent has associated
the domain
name with a “parody” of the legal system to misleadingly divert consumers
searching for the Complainant, (iii) Respondent
tarnishes Complainant’s service
marks by virtue of the material located at the web site under the domain name
<dykemagossett.com> (i.e., images of sharks and dollar
signs), (iv) Respondent engages in copyright infringement by including a
reappearing image of a famous
cartoon character on its web site, and (v)
Complainant’s registered service mark
and application therefore provided Respondent with constructive
nationwide use of—and therefore priority in— Complainant’s service
mark. The Panel finds evidentiary support for each
of Complainant’s contentions, except item (iv).
Respondent asserts that any Internet user, upon reviewing Respondent’s web site located at a URL under the contested domain name, would immediately realize that he/it is not associated with Complainant. Respondent also asserts that he/it has rights or legitimate interests in the contested domain name by the nature in which it is being used. In making these assertions, Respondent heavily relies on the majority decision in Bruce Springsteen v. Jeff Burgar D 2000-1532 (WIPO Jan. 25, 2001). As the Panel for the instant proceeding previously stated in Judy Larson v. Judy Larson Club, FA 96488 (Nat. Arb. Forum Mar. 13, 2001), the reasoning of the majority in Springsteen is “fatally flawed”, and thus this Panel does not, and will not, rely herein on the reasoning of the majority of Springsteen in its analysis.
Whether Respondent
has rights or legitimate interests in the contested domain name is inexorably
tied to Respondent’s parody, fair
use, and First Amendment defenses asserted in
this Proceeding. Respondent relies
heavily on the copyright case of Campbell
v. Acuff-Rose Music Inc, 510 U.S. 569 (S. Ct. 1994) to support his claim
that his registration and use of the domain
name <dykemagossett.com> is a
parody and fair use.
A relevant portion of the Acuff-Rose opinion is instructive:
Modern dictionaries … describe a parody as a “literary or artistic work that imitates the characteristic style of an author or a work for comic effect or ridicule” …. [T]he heart of any parodist’s claim to quote from existing material, is the use of some elements of a prior author’s composition to create a new one that, at least in part, comments on that author’s works. … If, on the contrary, the commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another’s work diminishes accordingly (if it does not vanish), and other factors, like the extent of commerciality, loom larger.
Acuff-Rose, 510 U.S. at 580.
During the Panel’s consideration of this case, it reviewed the web page resolving to the URL http://www.dykemagossett.com. In the background, the music from “What a Wonderful World” plays. Dollar signs are seen floating by, as are images of sharks eating smaller fish. There appears little, if any, commentary on the legal system in general, or about Complainant in particular. In small text at the top of the page, references are made to links of several web sites mentioned in the Response. All of the links were “dead” (i.e., inaccessible). There is an equally small disclaimer, disassociating the sponsor of the web site with Complainant.
The Panel views this material on Respondent’s web site not as parody-type commentary, but rather as a collection of metaphors and symbols serving to bring contempt or disdain upon the name DYKEMA GOSSETT, which normally is associated with a law firm of long standing. If, as claimed by Respondent, the purpose of his/its web site is to provide parody-like commentary on the legal system in general, but not specifically the services and activities of Complainant, this is not parody. Further, as a previous UDRP panel has held, the contested domain name itself must indicate that it is likely being used for purposes of parody, comment or criticism, see, Robo Enterprises, Inc. v. Tobiason, FA 98857 (Nat. Arb. Forum Dec. 24, 2000), which the contested domain name does not.
Respondent’s other pleaded defense is his
Constitutionally-asserted claim of “free speech” under the First Amendment to
the Constitution. In this connection,
Complainant asserts in its Reply that Respondent has many avenues for advancing
his “free speech parodies” including
using other domains on the Internet. As such, says Complainant, Respondent’s
“free speech” rights are not being suppressed.
The Panel agrees. Further, it is
beyond the scope of a UDRP proceeding to consider any issues such as the
boundaries of free speech generally and the
manner and extent to which a
trademark may be used without liability for infringement. See,
Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000).
Further, as stated by the Seventh Circuit Court
of Appeals, “a Court [here, this Panel] must keep in mind the fact that a
trademark
infringement action involves not only the right of the trademark
owner to control the reputation of his product, but also the right
of the
consuming public to be free of confusion.” James
Burrough Limited v. Sign of the Beefeater, Inc., [1978] USCA7 305; 572 F.2d 574, 578 (7th
Cir. 1978). In this respect,
Respondent’s use of the domain name <dykemagossett.com>
will cause “initial interest confusion” of the type discussed in Brookfield Communications, Inc. v. West
Coast Entertainment Corp., [1999] USCA9 225; 174 F.3d 1036, 1062 (1999), by “capturing
initial consumer attention, even though no sale [or other economic benefit] is
finally completed [or
realized] as a result of the confusion.” Nevertheless, such confusion results in a
trademark type injury.
The requirements of paragraph 4(a)(ii) of the Policy have been met.
Respondent’s
Registration and Use of the Contested Domain Name in Bad Faith
Complainant contends that Respondent registered or acquired the contested domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the service marks asserted herein, or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. Respondent admits that the contested domain name originally was registered in the name of “NameIsForSale.com”, but denies that he/it has ever attempted to sell the <dykemagossett.com> to Complainant or any of its competitors. This disputed factual issue cannot be resolved in the context of this UDRP proceeding, and thus this issue cannot be resolved in Complainant’s favor.
Complainant also contends, and on this point the
Panel agrees, that Respondent has registered the contested domain name in order
to
prevent Complainant from reflecting its mark in a corresponding domain
name. Complainant further has shown
that Respondent has engaged in a pattern of such conduct. In this respect, Brian Wick, American
Distribution Systems, Inc. (“ADSI” – of which Mr. Wick is the sole owner and
shareholder), DefaultData.com,
and NameIsForSale.com all are admitted to be
alter egos of, and/or are related to, one another. In each of McKenna
& Cuneo, L.L.P. v. NameIsForSale.com, FA 93677 (Nat. Arb. Forum March 16, 2000); Morrison & Foerster, LLP v. Brian Wick and American Distribution
Systems, Inc. ("ADSI”) individually and collectively d/b/a
“NameIsForSale.com”, FA 94301 (Nat. Arb. Forum Apr. 17, 2000); Morrison & Hecker L.L.P. v.
Namisforsale.com, American Distribution Systems, Inc. Defaultdata.com and Brian
G. Wick, FA 94386 (Nat. Arb. Forum May 11, 2000); Strasburger & Price, LLP v. NameIsForSale.com, FA 94290 (Nat.
Arb. Forum May 18, 2000); and Brandon
Dunes L.P. v. DefaultData.com, D 2000-0431 (WIPO July 13, 2000),
Respondent(s) were found to have registered and used in bad faith domain names
that were identical
and/or confusingly similar to those of known law firm names
or trademarks of others, that Respondent(s) had no rights or legitimate
interests therein, and that the domain names should be transferred to the
Complainants. Respondent admits to
having registered over a hundred domain names similar to the names of law
firms. Respondent concedes that 15% of
his/its domain name registrations are in the nature of “trademark” domain
names.
The Panel’s attention also has been directed to consent judgments and permanent injunctions entered in Vorys, Sater, Seymour & Peasse, LLP v. Brian Wick and American Distribution Systems, Inc. d/b/a DefaultData.com, Case No. C2-00-913 (S.D. Ohio), and Jones, Day, Reavis & Pogue, v. American Distribution Systems Inc., et al., Case No. 1:00cv613 (N.D. Ohio), wherein Mr. Wick and his related companies/entities agreed to transfer domain names corresponding to the names or marks of established law firms, after being sued by these law firms.
Complainant impliedly admits that the parties are not competitors, so the Panel cannot, and does not, find that the <dykemagossett.com> domain name was registered primarily for the purpose of disrupting Complainant’s business “as a competitor”. It is noted, however, that “Respondent” claims to be a competitor of Complainant with respect to the dissemination of legal information over the Internet.
However, by using the contested domain name, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/its web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on his web site or location. Respondent concedes that he/it is attempting to use the domain name registrations of multiple law firms to attract attention to his TownDrunk.com web site, and eventually to turn a profit resulting from the public attention paid to that site.
Finally, Respondent concedes that he/it registered his/its “trademark” domain names in the name(s) of multiple “bogus” (i.e., fictitious) entities, another element supporting Respondent’s bad faith.
The requirements of paragraph 4(a)(iii) of the Policy have been met.
DECISION
For the foregoing reasons, the Panel directs that the <dykemagossett> domain name be transferred to Complainant.
Jonathan Hudis, Esq., Panelist
Dated: May 29, 2001
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