DECISION

Johnnie L. Cochran, Jr. v. Brian Wick d/b/a DefaultData.com

Claim Number: FA0310000198946

PARTIES

Complainant is Johnnie L. Cochran, New York, NY (“Complainant”) represented by Sherri N. Blount, of Fitch, Even, Tabin & Flannery.  Respondent is Brian Wick d/b/a DefaultData.com, Denver, CO (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <johnniecochran.com> and <johnnycochran.com>, registered with Enom, Inc.

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Honorable Paul A. Dorf (Ret.), Honorable Richard DiSalle (Ret.), and Honorable R. Glen R. Ayers, Jr. as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 1, 2003; the Forum received a hard copy of the Complaint on October 6, 2003.

On October 8, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain names <johnniecochran.com> and <johnnycochran.com> are registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 October 8, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 28, 2003 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@johnniecochran.com and postmaster@johnnycochran.com by e-mail.

The Response was received after the deadline as defined in UDRP Rule #5(a) and (b) and is not in compliance with the UDRP Rules.  Even though the Response was not timely filed, the Panel has considered the Response in reaching its decision.  See Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a Panel may consider a response which was one day late, and received before a Panelist was appointed and any consideration made); see also Strum v. Nordic Net Exchange AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (“Ruling a Response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process").

On November 12, 2003, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.), Honorable Richard DiSalle (Ret.), and Honorable R. Glen Ayers, Jr. as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that the domain names at issue are identical or confusingly similar to Complainant’s trademark;  that Respondent lacks rights or legitimate interests in the domain names at issue were registered and are being used in bad faith.

B. Respondent

Respondent appears to question why Complainant filed this action; if Complainant has exclusive rights in the domain names at issue; and that UDRP Element #2 (rights and legitimate interests) and #3 (registration and use in bad faith) are irrelevant in the scope of Respondent’s internet speech project.

FINDINGS

Complainant has been engaged in the practice of law in the United States since 1963 under the name Johnnie Cochran, and has used his name continuously with his legal practice since that time. 

Complainant has gained notoriety by serving as the lead attorney in many well publicized legal cases.  Complainant has represented celebrities in high profile cases, including Michael Jackson and O.J. Simpson.  Complainant is considered one of the foremost trial attorneys in the United States. 

Complainant’s celebrity status has provided him with common law trademark rights for the “Johnnie Cochran” mark.  Further, given Complainant’s extensive use and promotion of his name in connection with legal services dated back to 1963, his name has become a famous and distinctive mark.

The Respondent used the organization name DefaultData.com to register the domain name at issue, and lists Denver, Colorado post office box as the organization’s address.  Respondent has also used the organization name American Distribution Systems, Inc. d/b/a NameIsForSale to register other domain names containing famous marks.

Respondent states “This case probably represents the pinnacle of my Constitutional Free Speech efforts….”  The First Amendment arguments are clearly outside the scope of this proceeding.  The Respondent also criticizes the UDRP process and the U.S. Legal System.

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:

(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

As stated above, Complainant has used his name in connection with legal services since 1963. Also, Complainant has aquired both consumer and media regcognition by serving as the lead attorney in many highly publicized legal cases.   See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy 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); see also Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (finding that a “person may acquire such a reputation in his or her own name as to give rise to trademark rights in that name at common law”).

Also, the <johnniecochran.com> domain name at issue was created by simply adding the .com top level domain to Complainaint’s common law trademark.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).  Further, the <johnnycochran.com> domain name was created by simply misspelling Complainant’s name; however, the pronunciation remains the same.   See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy).

Respondent does not contest this element of the Complaint.

Rights or Legitimate Interests

When an internet user looking for the Complainant on the internet using a search engine, and comes upon the domain names at issue, the same as Complainant’s trade name and trademark, said user could reasonably assume that the web site would contain information on the Complainant.   Instead, by Respondent’s admission, they were shown free speech material.  The Respondent has not produced any evidence to convince this Panel that he is using the domain name in connection with a bona fide offering of goods or services or that the Respondent has acquired any common law trademark rights in the domain names at issue or any similar marks.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist).

Registration and Use in Bad Faith

The Respondent has a history of registering famous names.  Respondent admits to some of these registrations in his Response.  Respondent admits to using these domain names to provide free speech material to an area of the Internet where it can be heard.  See Corinthians Licenciamentos LTDA v. Sallen, D2000-0461 (WIPO July 17, 2000) (finding bad faith where Respondent’s claimed use for the mark was “most likely an excuse for camouflaging the purpose of trafficking with the domain name”)

Further, Respondent’s pattern of registering domain names that prevent Complainant from reflecting its mark online evidences Respondent’s bad faith registration and use of the domain names at issue. See YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent has registered numerous domain names that infringe upon Complainant’s marks and in addition, Respondent has registered domain names that infringe upon other entities’ marks).

Also, registration of the domain name will prevent the Complainant from reflecting its trademark in a corresponding domain name.  See Morrison & Hecker L.L.P., v. Defaultdata.com, FA 94386 (Nat. Arb. Forum May 11, 2000) (finding “the fact that Respondent has registered <morrisonhecker.com> and <morrisonandhecker.com> along with approximately 75 other law firms and put them to use in a disparaging manner” shows bad faith). 

DECISION

Having established all three elements required under the ICANN Policy, the Complainant is entitled to relief and it shall be GRANTED.

Accordingly, it is Ordered that the <johnniecochran.com> and <johnnycochran.com> domain names be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Honorable Richard DiSalle (Ret.),

and Honorable R. Glen Ayers, Jr., Panelists
Dated: December 9, 2003

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