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Generic Top Level Domain Name (gTLD) Decisions |
The State Bar
of California v. eWebNation.com, Inc.
Claim Number: FA0105000097137
PARTIES
The Complainant is The State Bar of California, San Francisco, CA, USA (“Complainant”) represented by Barbara L. Friedman, of McCutchen, Doyle, Brown & Enersen, LLP. The Respondent is eWebNation.com, Inc., Manhattan Beach, CA, USA (“Respondent”) represented by Scott H. Linden.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <castatebar.com>, registered with Register.com.
PANEL
The undersigned 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.
Hon. R.P.Kerans (ret’d) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on May 2, 2001; the Forum received a hard copy of the Complaint on May 4, 2001.
On May 3, 2001, Register.com confirmed by e-mail to the Forum that the domain name <castatebar.com> is registered with Register.com and that the Respondent is the current registrant of the name. Register.com 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”).
On May 7, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 29, 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@castatebar.com by e-mail.
A timely response was received and determined to be complete on May 29, 2001. However, the attached exhibits did not arrive on time and were considered late under ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”).
On
June 5, 2001, the Complainant sought to file a Response, but this was not
received on that date and was therefore not timely.
On
June 5 2001, pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the Forum appointed
Hon. R.P.Kerans (ret’d) as Panelist.
On
June 11, the Complainant filed a special request for the leave of the panel to
permit late filing of its supplementary submission.
On
June 12, 2001, the Respondent filed an answer opposing the request for leave.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
A. Complainant
1.
The
organization “The State Bar of California” is a California public corporation established by
the California Legislature on June 29, 1927.
On November 8, 1966, California voters approved a constitutional
amendment that made the State Bar a constitutional agency in the
judicial
branch of government. The State Bar is
an integrated bar that is qualified by California’s highest court to adopt
reasonable rules and regulations for admission
to the bar (Calif. Bus. &
Profs. Code § 6047) and formulate and enforce rules of professional conduct for
all members of the
bar. Calif. Bus.
& Profs. Code § 6076. Under Section 9 of the Constitution of California,
“every person admitted and licensed to practice law in this State is and shall
be a member of the State Bar except
while holding office as a judge of a court
of record”. As of April 2, 2001, there were 137,269 active members of the
State Bar, and thousands more inactive members.
2. The
State Bar’s primary responsibilities and activities include, without
limitation, the admission of new attorneys to the practice
of law,
administering the statewide bar examination, implementing a system of attorney
discipline, conducting legal education programs
for its members and certifying
other legal education providers, administering standards for legal
specialization practitioners, certifying
legal referral services and promoting
and conducting legal education programs for the public
3. Through
its Committee of Bar Examiners, the State Bar is responsible for administering
the California bar examination and certifying
qualified applicants for
admission to practice law to the Supreme Court of California. The State Bar acts as the administrative arm
of the Supreme Court of California in the admission and regulation of
California attorneys.
4.
Protecting
the public, the courts, and the legal profession from lawyers who fail to fulfill
their professional responsibilities--is
one of the State Bar's primary
functions. In 1989, the State Bar created an independent State Bar Court,
appointed and monitored
by the state Supreme Court, to fulfill this function. The State Bar responds to consumer
complaints and investigates and prosecutes allegations of attorney misconduct.
5.
The
State Bar is also responsible for monitoring compliance of its members with
continuing legal education requirements.
As a condition of membership, all California attorneys must complete
twenty-five hours of continuing legal education every three years. The State Bar also certifies providers of
legal education programs and sponsors education activities for continuing legal
education
credit.
6.
The
State Bar also sponsors legal forums for its members and the public and
maintains a website from which its members and the public
can gain access to
information about lawyers and the legal profession. Its publications include the “California Bar Journal,” a monthly
newspaper sent to every member and available to the public on the
State Bar’s
website; the “California State Bar Court Reporter,” a digest of State Bar Court
cases; newsletters and journals produced
by sections of the State Bar; and
pamphlets on various legal topics, including one entitled “How Can I Find and
Hire the Right Lawyer,”
which until recently was posted without permission on
Respondent’s website.
7.
As
a result of these activities, the name and mark THE STATE BAR OF CALIFORNIA
have become highly distinctive, and have acquired significant
secondary meaning
signifying both Complainant itself and the goods and services provided by
Complainant. The STATE BAR OF
CALIFORNIA name and mark are thus assets of incalculable value to Complainant.
8.
Since
its inception in 1927, The State Bar has made extensive and prominent use of
its THE STATE BAR OF CALIFORNIA name and marks
in connection with a wide
variety of goods and services, as described above, thus establishing strong
common law rights in this name
and in its marks.
9.
The
domain name that is the subject of this Complaint, castatebar.com, is confusingly similar to Complainant’s THE STATE
BAR OF CALIFORNIA trademarks, service marks, and trade name. The domain name incorporates the most
prominent words from the State Bar’s mark, i.e., “state,” “bar,” and an
abbreviation of “California,”
and excludes only the article “the” and the
preposition “of.” Further, there is a
clear similarity between the marks and the domain name at issue in their
entireties as to appearance, sound, connotation,
and commercial impression.
10.
Given
the strength of Complainant’s name and marks, persons encountering Respondent’s
domain name will be confused and mistakenly
assume that the castatebar.com web site originates
with, or is sponsored or endorsed by, or is associated with the products and
services offered by the State Bar
under its name and marks. To imply a
sponsorship or official relationship where no relationship exists is prohibited
under U.S. law,
15 U.S.C. 1125(a)(1), and
is evidence of bad faith under the
UDRP.
11.
Likelihood
of confusion is compounded by Respondent’s use of CA STATE BAR as a service
mark on its web site.
12.
Actual
confusion has, in fact, already occurred.
As Respondent admits in its letter to Complainant’s counsel, Respondent has
received a letter from a legal secretary inquiring about
credit for mandatory
continuing legal education (“MCLE”) credits. Likelihood of confusion was even
noted by participants in a conversation
in Respondent’s online chat room
Confusion in this case is likely to have an especially pernicious
effect. Consider, for example, the
California attorney who mistakenly submits his bar dues or the aggrieved client
who mistakenly reports
her grievance to Respondent.
13.
As
further evidence that the marks are confusingly similar, two separate Internet
search engines, in a response to a search for Complainant’s
mark, displayed
Respondent’s domain name.
14.
Respondent
has no rights or legitimate interests in the domain name castatebar.com. Respondent
registered the castatebar.com domain
name on November 23, 1999, see As a
member of the California Bar, Respondent’s CEO, Scott Linden, was clearly aware
of Complainant’s marks when he registered the
castatebar.com domain name, and obviously did so to trade off of
consumers’ recognition of Complainant’s name and marks and the goodwill
associated
therewith.
15.
Complainant
is informed and believes that “California State Bar” is not a name by which
Respondent is or has ever been known.
Furthermore, on information and belief, Respondent has no common law
trademark or service mark, no U.S. registered trademark or service
mark, and no
trademark or service mark application or registration anywhere in the world for
CALIFORNIA STATE BAR or THE STATE BAR
OF CALIFORNIA. Moreover, the State Bar’s name and marks are so well known that
there is no conceivable fair use Respondent could have made under
this domain
name.
16. Respondent’s registration and use of the domain name castatebar.com is in bad faith because it registered and is using the domain name primarily for the purpose of selling or otherwise transferring the domain name registration to the State Bar (as owners of the corresponding trademark and service mark its most likely target audience) for valuable consideration in excess of Respondent’s out-of-pocket costs. Respondent was offering to sell the domain name on Afternic.com for $100,000. Also offered for sale by Respondent on this site is the domain name nystatebar.com.
17. Furthermore, as additional evidence of Respondent’s bad faith, Respondent has failed to modify his website as promised to Complainant
B. Respondent
1.
This
forum has no jurisdiction over the Respondent.
The Register.com agreement
entered into by Respondent did not include the ICANN Agreement as evidenced by
Exhibit “A”. Register.com implemented
the ICANN Agreement on December 1, 1999 however; Respondent registered its site
on November 23, 1999
2.
If
this action is held to be under the ICANN jurisdiction, then it must fail
because there is no trademark infringement
3. Laches – The Complainant knew of Respondent’s ownership of castatebar.com since its purchase in November 1999 and made no communication or complaint to Respondent until the March 2001.
4. The use of “The State Bar of California” does not create common law trademark rights in all combinations of these words. castatebar.com is not confusingly similar nor does it use any of the distinct words Complainant states. Complainant states that the incorporation of the words “state” and “bar” and an abbreviation for the State of California should be enough to support their contention. The names appear and sound different as well as have completely different commercial directives. The Complainant itself uses the abbreviation “cal” for California on its own website, calbar.org.
5. The name castatebar.com will not be confused as an entity that appears to originate with or is sponsored by Complainant. There has only been one incident of confusion.
6. Respondent’s site, castatebar.com, does not offer any services that are offered by the Complainant. The site is designed to derive its income through the sale of advertising space. The site draws Internet traffic by offering free legal research tools and links. Complainant does not offer free Internet research or research tools. Further, Complainant requires members to pass an accredited law school, two tests, pay an annual membership fee and complete continuing education hours to join and maintain membership, castatebar.com is a completely free service to all consumers. Castatebar.com does not accept clients, give legal advice or refer consumers to attorneys or any attorney related personnel. The site does not offer any of the same or similar services offered by Complainant.
7.
Complainant’s statement that there is a possibility
that a California admitted and licensed attorney would send their state bar
dues
to a website with no address listed and disclaimers on every page is both
ludicrous and implausible.
8. Complainant performed a Google.com search of the phrase “STATE BAR OF CALIFORNIA”. Respondent’s site is located on that search at the fourth page, listed as number forty-four in that engine and clearly states, “We’re Not the Bar…We’re Better”, the site’s slogan. Because search engines continually update their databases, the location of any site may move up or down within a period of minutes. Complainant additionally does not show the previous three pages of the Google.com search results as does Respondent’s. Complainant’s second search was on Dogpile.com.
9.
Respondent’s use of the site is not in bad faith
because it was not purchased for nor is it being used for the purpose of
selling
or otherwise transferring the domain name registration to the
Complainant for valuable consideration in excess of Respondent’s out-of-pocket
costs. The fact that the site is listed
for sale to the general public on Afternic.com
for $100,000 shows no intention to sell or transfer solely to the
Complainant. The listing is an offer to
sell to the general public placed on Afternic.com
after the NASDAQ decreased sharply.
As a dot com company selling a dot com site for profit, Respondent did
not violate any laws by placing the site for sale on Afternic.com. Regardless of the medium used to sell the site or the
amount requested for sale, the Complainant cannot use the site because it is
a
“.com” site, a commercial, for profit denotation as opposed to a “.org” site,
one normally reserved for non-profit organizations
such as Claimant.
10. Respondent’s site cost it $70 for a two year Internic registration plus approximately $300 for two years of hosting. Furthermore, the site has cost hundreds of man-hours to perform Internet legal research, design and build, maintain and update, and submit to search engines the site’s numerous pages. Complainant preferred to spend $950 plus an unknown cost on legal fees to initiate this action instead of requesting an accounting from Respondent or even offering any amount to purchase the site without initiating any proceeding, including just covering Respondent’s out-of-pocket expenses which is less than the amount that Claimant spent to initiate these proceedings.
11.
Complainant demanded that all links to its website be
in a new window and not in a frame.
Respondent made every attempt to be fulfill this request but admits to
missing one link on one page throughout its entire website. Please note that upon receipt of this
Complaint, its first notification of this error, Respondent immediately
corrected this oversight. Additionally,
this letter requested that certain issues be changed by Respondent, which were
repaired, and in response this action
was filed. Claimant had no intention of settling this matter. If Claimant had a good faith intent to
settle, then the changes made per the March 2, 2001 letter would have sufficed
to resolved
any issues; there was no need to institute this proceeding.
12. As further evidence of Respondent’s intent to settle and avoid any misunderstandings between itself and Complainant, Respondent added additional disclaimers in bold, colored, oversized letters stating “NOT AFFILIATED WITH THE STATE BAR OF CALIFORNIA”, which is also a web link to the Complainant’s website, to every page within castatebar.com. Complainant made no acknowledgement of Respondent’s intent to avoid litigation, but instead initiated the present action.
13. Complainant has shown its bad faith by filing this action without first attempting any form of Settlement negotiations with Respondent. Complainant has further evidenced its bad faith by demanding the transfer of the domain name instead of an injunction for its use. If this forum does find for Complainant and does transfer the site to Complainant, it cannot use the site because it is a “.com” site which can only be used by a commercial, for profit entity, which clearly the Complainant is not. Complainant is requesting this forum perform a taking of Respondent’s property and the time and hard work used to make it a viable entity and transfer it to Complainant without just compensation.
14. Complainant’s bad faith in filing this action is compounded by a further whois.net search of closer related names to the Claimant’s official site calbar.org. These include calbar.com, calbar.net, Californiabar.com, claiforniabar.net, and statebarca.com. None of these entities have been approached by the Claimant regarding their sites. Further, none of these sites are up and running, they are all dead sites.
15. Claimant has recently been purchasing domain names such as castatebar.net, castatebar.org, and statebarca.net. This action was not filed until a very short time after these names were purchased while the Claimant’s official site was purchased in 1995. This only further evidences Claimant’s bad faith in attempting to acquire Respondent’s site for free.
16. Additionally, the Claimant has only filed for its trademark on November 15, 2000, a date after Respondent’s purchase and use of the domain name, therefore, there was no possible constructive notice. Here, the Claimant’s purchase of numerous other domain names closely related to Respondent’s, but not their own official site, shows that the Claimant falls directly into this area of “overreaching trademark owners.”
1. Leave for late filing.
The material was sent June 5 but did not arrive until June 7.
The Complainant has argued that the term “submit” in the Forum Supplemental Rules is ambiguous in that it refers to the day material is sent, not the day received. But the attorney also admitted that she telephoned the Forum and was told June 5 was the deadline for “filing.” I see no ambiguity there. My sense of the matter is that she knew June 5 was the deadline, and thought she could make it but was thwarted for technical problems she had not foreseen.
ICANN arbitrations are intended to be cheap, quick, and simple. To permit this it falls to the parties to insure by every reasonable means that these objects are met. The Complainant has not met that demanding standard and the application is dismissed.
2. Jurisdiction.
The Respondent alleges that the Policy was only implemented by Register.com on December 1, 1999, and he had obtained the domain name on November 23. But nothing in the Policy implemented by Register.com limits its application to new registrations. On the contrary, paragraph 2 contains a warning of the need to comply with the new standards of conduct when one applies for a domain name or “asking us to maintain or renew a domain name,” a warning that would be unnecessary if the Policy did not apply to pre-existing sites. Moreover, paragraph 9 warns that any amendments to the Policy will apply to existing sites. The Policy in my view applies and the jurisdiction issue is without merit.
3. Failure to settle.
The Respondent complains that the Complainant has not made reasonable efforts to settle the dispute between them, and has bought up other sites but offered it nothing. It also asserts that it was willing to settle. I have no comment on this except to say that, whether or not the allegation is true, it is irrelevant to this dispute.
4. Laches.
The Respondent contends that the Complainant is guilty of unreasonable delay. His web-site has been in operation since November, 1999 and he first heard a protest from the Complainant, he says, in March 2001. This bald statement is insufficient to attract the equitable rule called laches, even assuming that one can plead the rule in these proceedings. Nothing before me, for example, persuades me that the delay was unreasonable.
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.”
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;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or
Confusingly Similar
It is true that “castatebar” at first sounds like gobbledegook. But Cal-state-bar immediately gives rise to a possible connection with the Complainant. And “ca”, while a less frequent abbreviation of the word California, nevertheless is in usage. I take notice is the official abbreviation for postal purposes. See Minnesota State Lottery v. Mendes, FA 96701 (Apr. 2, 2001) (finding that the <mnlottery.com> domain name is confusingly similar to Complainant’s MINNESOTA STATE LOTTERY registered mark).
The Complainant makes a good point: While a human may not always see the similarity, a search engine will. The Respondent begs this question when he replies that a search will always also show the Complainant’s web-site before it shows his. The point is that they are sufficiently similar that many searches will offer his site along with many pages for the official Bar site. Some persons some times may confuse them. Indeed, one did, as the Respondent admits.
The fact that, after protest, the Respondent added a disclaimer to the site does not change this basic fact. The name continues to attract even if later the disclaimer warns.
The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
Rights or Legitimate Interests
I am aware that the term “California state bar” may be used to describe the California legal profession generally, as opposed to the profession’s governing body. In other places, the governing body distinguishes itself from the profession by limiting words in its name, like “society” or “association” or the like. But that is not the case in California, and the use of “California State Bar” to describe the Complainant has been sanctioned by history (since 1927), the US patent office, and the State Constitution. In the result, the Complainant has not overreached. The Complainant obviously has a substantial and legitimate interest in this three-part name. To assert a legitimate interest in a name that includes all of its protected names save for an accepted abbreviation of the name of the State of California is not to overreach its rights. I have no comment about its existing name,“calbar.org.”
The Respondent has not explained why it chose a name that refers to the state bar. Nor has it asserted any previous business or other connection with this name. It says it seeks to draw visitors by offering free legal links and tools. It offers no reason for me to think it has any right to purport to speak for the state bar, whether one uses that term to describe the profession or the profession’s governing organization. I am as a result very dubious about any claim of right by it to employ the term “state bar” in any business, let alone to employ “California State Bar” or any confusingly similar abbreviation. Its sole claim rests on the fact that it used this name on this site for over one year before the Complainant acted. That is not good enough.
The Respondent has no rights or legitimate interests in respect of the domain name.
But the matter does not end there. The Respondent shows one Scott Linden to be its Chief Executive officer, and Register.com shows him to be the current owner of the site. The Complainant asserts, and the Respondent does not deny, that Linden is an attorney in California and a member of the California State Bar.
I therefore infer that the Respondent had to be perfectly well aware of the existence of the Complainant and its name and therefore its rights when it/he began the web-site. I have already said the Respondent has no evident right to lay claim to speak for the state bar, and I now add it/he must have known that.
It is important to note that the heading for the Respondent web-site is “CA State Bar,” so there can be no question what the Respondent intended by the abbreviated domain name. The site also displays these tabs to included pages: Law Students, Legal News, Employment, Legal Listings, Reference Desk, Laws and Codes, Research Portal, Topical Research. There can be no doubt that the site is pitched primarily to members of the California state bar, and, contrary to what the Respondent alleges, the site offers the sort of lawyer’s aids that a lawyer may well assume are offered or sponsored by the California State Bar.
In the absence of any explanation what it had in mind when it chose this name, I infer the Respondent with this choice sought to trade on confusion with the California State Bar, and exploit its reputation and stature. The Respondent is guilty of bad faith as that is defined by the Policy in this particular:
. . . you have intentionally attempted to
attract, for commercial gain, Internet users to your web site . . . by creating a likelihood of confusion with
the complainant's mark as to the source, sponsorship, affiliation, or endorsement
of
your web site. . .
I hereby direct that the domain name castatebar.com be transferred to the Complainant.
Hon. R.P. Kerans, Panelist
Dated: June 14,2001
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