Adams and Reese LLP v. American Distribution Systems Inc dba Defaultdata.com
Claim Number: FA0112000102860
The Complainant is Adams and Reese LLP, New Orleans, LA (“Complainant”) represented by William J. Kelly, III, of Adams and Reese LLP. The Respondent is American Distribution Systems, Inc. d/b/a Defaultdata.com, Denver, CO (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adamsandreese.com>, registered with Network Solutions, Inc.
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.
Alan L. Limbury as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on December 13, 2001; the Forum received a hard copy of the Complaint on December 13, 2001.
On December 14, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <adamsandreese.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 December 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 8, 2002 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 email@example.com by e-mail.
A timely Response was received on January 8, 2002. However, the exhibits to the Response were not received until after the deadline for the Response. The Panel admits the late exhibits under Rule 10(b).
Complainant’s Additional Submission was received January 14, 2002.
On January 28, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.
The Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is a law firm established in 1951. It uses the service mark Adams and Reese, in which it has established common law rights, and the Federally registered service mark comprising the words Adams and Reese LLP (in blue) over a graphic design (in gold).
The disputed domain name is identical to Complainant’s common law service mark ADAMS AND REESE and is confusingly similar to Complainant’s registered service mark ADAMS AND REESE LLP AND DESIGN.
Respondent has not previously used nor made any 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. The website solely displays graphics of dollar signs, sharks circling a diver and fish being eaten by larger fish, as well as the content: “…have a swim with us…”. There are no services or products offered which relate to the <adamsandreese.com> domain name. There is no indication on the site of any business that was carried on or is being carried on by the registrant that relates to the domain name.
Respondent has not been commonly known by the domain name, as an individual, business, or other organization, and has no trademark registration for the domain name or any part of it.
Respondent is not making a legitimate noncommercial or fair use of the domain name because he is misleadingly diverting consumers and tarnishing the service mark at issue. Respondent has associated the domain name with a “parody” of the legal system to misleadingly divert consumers searching for Adams and Reese. Respondent tarnishes Adams and Reese’s service mark by virtue of the material located at the website under the domain name <adamsandreese.com> (i.e., pictures of sharks and dollar signs). The domain name is not a “parody” as the law is clear that a “parody” “must convey two simultaneous – and contradictory – messages: that it is the original, but also that it is not the original and is instead a parody.” Morrison & Foerster LLP v. Wick, 94 F.Supp.2d 1125, 1134 (D. Colo. 2000); see also Robo Enterprises, Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000) (holding that in order to qualify as a protected parody which would confer rights or a legitimate interest, the domain name itself must signify critical purposes, as opposed to imitation of the service mark).
As one of Respondent’s other domain names is <nameisforsale.com>, one may reasonably assume that the Respondent has registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to Adams and Reese or to a competitor of Adams and Reese, for valuable consideration in excess of Respondent’s out-of-pocket costs. Such use constitutes a bad faith use, and only supports the Firm’s assertion of unlawful use and infringement. See, e.g., Corinthians Licenciamentos LTDA v. Sallen, D2000-0461 (WIPO July 17, 2000) (finding bad faith where Respondent’s claimed use for the mark was an excuse for trafficking the domain name).
Respondent has registered the domain name in order to prevent Adams and Reese, owner of the service mark, from reflecting the mark in a corresponding domain name, as is evident from the pattern of conduct engaged in by Respondent. In this respect, Brian Wick, American Distribution Systems, Inc., DefaultData.com and NameIsForSale.com are all alter egos of and/or related to one another. Respondent has a history of registering the actual name or something very close to the actual name of well-known law firms. In each of the following cases, McKenna & Cuneo, L.L.P. v. NameIsForSale.com, FA 93677 (Nat. Arb. Forum Mar. 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 v. Hecker L.L.P. v. Nameisforsale.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); Glenmaura v. American Distribution Systems, Inc., AF-0144a and AF-0144b (eResolution June 30, 2000); Bandon Dunes L.P. v. DefaultData.com, D 2000-0431 (WIPO July 13, 2000); Hunton & Williams v. American Distribution Systems, Inc. et al., D 2000-0501 (WIPO Aug. 1, 2000); Dykema Gossett PLLC v. DefaultData.com and Brian Wick, FA 97031 (Nat. Arb. Forum May 29, 2001); Winchester Properties, LLC v. DefaultData.com, FA 97114 (Nat. Arb. Forum June 22, 2001); and Lord, Bissell & Brook v. DefaultData.com, FA 97334 (Nat. Arb. Forum July 17, 2001), 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 firms or trademarks of others, that Respondent(s) had no legitimate interests or rights therein, and that the domain names should be transferred to the Complainants. The majority of these cases in which adverse decisions have been found against Respondent are those involving law firms in the same situation as Adams and Reese.
It is clear from the current conduct of the registrant, as well as past similar conduct by this same registrant, that the registrant is acting in bad faith and has no intention of operating a legitimate business with the use of the domain name.
[The following is a summary of the main points of a lengthy submission. The Panel has had regard to the entire submission in making its determination].
The Internet inherently conflicts with the United States Constitution, which allows people to exercise their right of free speech at the exact same address at which a business is conducted.
Just as, in 1979 as a student, I passed out free speech flyers at the physical address of Wardenburg Hospital and at the Rocky Flats Nuclear Weapon Plant, so in 1999 I started an Internet project which represents an electronic version of what I did in 1979. I target bricks & mortar big business and have reserved hundreds of Internet addresses similar to the names of large companies and law firms and the resorts and country clubs where the people from these large businesses entertain each other.
The public Internet Information Superhighway is just a faster version (via hyperlink) of what occurred off the physical public roads at the Rocky Flats address.
My Internet project simply represents an electronic version of what I experienced at physical addresses to Wardenburg and Rocky Flats 20 years ago and what I experienced at a UPS facility while dropping off packages a only few years back when the Teamsters were on strike.
[M]y intentions from early on [have been] to mess with (or parody) big business and especially their legal representatives at possible Internet addresses to their businesses.
C. Additional Submissions
Complainant has demonstrated that it is the owner of the U.S. Service Mark Registration Nos. 2405238 and 2359583, and the disputed domain name is identical the name of the Complaint’s law firm, Adams and Reese, LLP. Respondent does not dispute the rights of Complainant in the name Adams and Reese. Moreover, Respondent has not placed before this Panel one shred of evidence to demonstrate that it likewise has rights or legitimate interests in the name Adams and Reese. Respondent flatly admits that it has registered this and other names of “corporate America” in an attempt to criticize the US legal establishment. These admissions alone are sufficient for Complainant to prevail; there are no disputes of fact for this Panel to resolve.
Complainant is a law firm established in 1951. It has offices in Louisiana, Texas, Mississippi, Alabama and Washington D.C. It uses the service mark ADAMS AND REESE, in which it has established common law rights, and the Federally registered service mark ADAMS AND REESE LLP AND DESIGN. That mark was registered on November 21, 2000, based on use since June 1998.
The current record of the registration of the disputed domain name with the Registrar was created on November 19, 2001. The disputed domain name resolves to a web site at which it is made clear that the site claims to be a ‘free speech flyer’ and has no relation to any law firm claiming rights to Adams & Reese. Sharks and dollar signs are depicted.
For the following reasons, the Panel finds that all elements of the Policy entitling Complainant to the relief sought have been established.
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
The disputed domain name is clearly identical to the Complainant’s common law service mark and confusingly similar to its registered service mark. The Respondent has not argued otherwise.
Rights or Legitimate Interests
This Panel has no authority to determine whether the Internet or the Policy violate the Constitution of the United States of America. It is also beyond the scope of a proceeding under the Policy to consider issues such as the boundaries of free speech and the manner and extent to which a trademark may be used without liability for infringement: Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000).
The Respondent claims that its registration and use of the disputed domain name are no different from the exercise of Respondent’s Constitutionally guaranteed right of free speech in handing out flyers at the Wardenburg Hospital and the Rocky Flats Nuclear Weapon Plant in 1979. But there are two critical differences.
First, whereas the Constitution permits everyone to exercise the right of free speech at a hospital and a nuclear weapon plant, the Respondent’s registration of the disputed domain name precludes everyone without the permission of Respondent from exercising the right of free speech at the website reached by means of the disputed domain name.
Second, the right to freedom of speech is subject to the rights of others under laws such as those of defamation, trademark infringement, misrepresentation and breach of confidence. As stated by the Seventh Circuit Court of Appeals in James Burrough Limited v. Sign of the Beefeater, Inc., 572 F.2d 574, 578 (7th Cir. 1978): “…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”.
The U.S. Constitution does not permit a person to misrepresent his or her identity, to the detriment of the person whose identity is assumed:
The issue here is whether the disputed domain name itself signifies critical purposes, as opposed to imitation of the service mark. A domain name for the purpose of parody or criticism must on its face indicate that any site to which it leads is not that of the service mark holder but is instead a site for the criticism of the service mark holder. Otherwise, there is created impermissible initial interest confusion: Dykema Gossett PLLC v DefaultData.com and Brian Wick, FA 97031 (Nat. Arb. Forum May 29, 2001) and Robo Enterprises, Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000).
Here, Respondent’s use of the disputed domain name will cause initial interest confusion of the type discussed in Brookfield Communications, Inc. v. West Coast Entertainment Corp., 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.”
By registering and using the disputed domain name, Respondent has falsely and misleadingly identified itself as Complainant and its site as that of Complainant. Accordingly, Respondent is not making fair use of the Complainant's mark under paragraph 4c(iii) of the Policy.
Respondent has no right or legitimate interest in respect of the disputed domain name. Complainant has established this element.
Registration and Use in Bad Faith
There is nothing in the domain name to indicate that the site to which Internauts are about to travel is not that of the Complainant. Respondent registered the disputed domain name, and thus impermissibly misrepresented his site as that of the Complainant, as part of his intention “to mess with (or parody) big business and especially their legal representatives at possible Internet addresses to their businesses”. As already mentioned, the disputed domain name does not constitute parody because it fails to indicate a source other than Complainant.
There is no evidence Respondent registered the disputed domain name for sale at a profit, within paragraph 4(b)(i) of the Policy.
Respondent admits selecting possible Internet addresses of legal representatives with whom Respondent intended to mess. The Panel finds that one of Respondent’s purposes in registering the disputed domain name was to prevent Complainant from reflecting its service mark in a corresponding domain name. Respondent has engaged in a pattern of such conduct, as is clear from the many cases cited by Complainant and from Respondent’s admission that Respondent has “reserved hundreds of Internet addresses similar to the names of large companies and law firms”. Under paragraph 4(b)(ii) of the Policy, this constitutes evidence of both bad faith registration and bad faith use.
Paragraph 4(b)(iii) of the Policy provides that it is evidence of both bad faith registration and bad faith use if it is established that:
"you have registered the domain primarily for the purpose of disrupting the business of a competitor."
The natural meaning of the word "competitor" is one who acts in opposition to another. The context of paragraph 4(b)(iii) does not imply or demand any restricted meaning such as a commercial or business competitor: Mission KwaSizabantu v. Benjamin Rost, D2000-0279 (WIPO June 7, 2000).
As in Gardere Wynne Sewell LLP v. DefaultData.com, D2001-1093 (WIPO Nov. 16, 2001), the Panel finds Respondent is a competitor of Complainant in this broad sense, in that Respondent seeks to convince Complainant's clientele to seek alternatives to Complainant's services.
The Panel finds that Respondent's primary purpose in registering the disputed domain name was to disrupt Complainant’s business of providing legal services and that, accordingly, for this reason also, the disputed domain name was registered and is being used in bad faith.
Complainant has established this element.
In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the relief sought by Complainant is hereby granted.
Alan L. Limbury, Panelist
Dated: February 6, 2002
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