Lord, Bissell & Brook v.
DefaultData.com
Claim Number: FA0203000108064
PARTIES
The
Complainant is Lord, Bissell & Brook,
Chicago, IL (“Complainant”). The
Respondent is DefaultData.com,
Kansas City, MO (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <lordbissellandbrook.com>,
registered with Network Solutions.
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.
Edward
C. Chiasson, Q.C. as Panelist.
PROCEDURAL HISTORY
The
Complainant submitted a Complaint to the National Arbitration Forum (“the
Forum”) electronically on March 29, 2002; the Forum received a hard copy of the
Complaint on March 29, 2002.
On
April 2, 2002, Network Solutions confirmed by e-mail to the Forum that the
domain name <lordbissellandbrook.com>
is registered with Network Solutions and that the Respondent is the current
registrant of the name. Network
Solutions has verified that the Respondent is bound by the Network Solutions
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
April 4, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 24,
2002 by which the Respondent could file a Response to the Complaint, was
transmitted to the Respondent via e-mail, post and fax, to all entities and
persons listed on the Respondent’s registration as technical, administrative
and billing contacts and to postmaster@lordbissellandbrook.com by e-mail.
A
timely Response was received and determined to be complete on April 24, 2002.
A
timely additional submission by the Complainant was received on April 29,
2002. This was followed by a further
timely submission from the Respondent which was received on April 30, 2002.
On May 10, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Edward C.
Chiasson Q.C. as Panelist. The Panelist has considered all of the
submissions of the parties.
RELIEF SOUGHT
The
Complainant requests that the domain name be transferred from the Respondent to
the Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
Complainant is a law firm that has been in existence since 1914. In 1954, the firm’s name became Lord,
Bissell & Brook.
For
the past 48 years, the Complainant has continuously and extensively used the
common law mark “Lord, Bissell & Brook” to identify the source of the legal
services it has provided to thousands of clients throughout the United States
and throughout the world. The firm has
five offices in the United States (Chicago, New York, Los Angeles, Atlanta, and
Rockford, Illinois) and one in London.
The
firm presently has approximately 333 attorneys and more than a thousand
clients. It has provided legal services
to clients located in most states (including Colorado, the state of Mr. Wick)
and in numerous foreign countries.
The
Complainant registered the domain name <lordbissell.com> in September
1995 and has operated a web site via that domain name since September
1998.
In
November 1997, more than four years prior to the Respondent’s registration of
the subject domain name, the Complainant was recognized as the 78th
largest law firm in the United States.
The Respondent is affiliated with Brian
G. Wick, an individual who has registered domain names identical or confusingly
similar to scores of major law firms and numerous corporations.
The Complainant has not authorized the
Respondent or Mr. Wick to use the Complainant’s mark or law firm name. To the contrary the Complainant has
successfully pursued a prior ICANN proceeding against the Respondent in
connection with another domain name reflecting the Complainant’s mark.
Neither the Respondent nor Mr. Wick have
manifested any intention to use the subject domain name in connection with a
bona fide offering of goods or services.
The Complainant visited the Respondent’s
web site on March 21, 2002. The home
page of the Respondent’s web site began with the insult of the federal judge
(dubbed a “1st Amendment Challenged Country Club Good ole’ Boy”) who
ruled against the Respondent in the Morrison & Foerster case. There followed a series of references to
objects of the Respondent’s purported parody. The textual portion of the site
concluded with a statement that “the web site has no relation to any person,
organization, lawyer or law firm claiming rights to Lord, Bissell & Brook.”
Below this text is the phrase “Lord Bissell and Brook.com ... ‘have a swim with
us...’” The site features fish swimming
about, kangaroos hopping about, and dollar signs moving about.
The Respondent has never been commonly
known by the subject domain name. In
fact, the Respondent’s purported disclaimer on the web site admits a lack of
affiliation with the Complainant.
In a prior ICANN proceeding between these
parties, the Respondent argued that it was operating a “free-speech” or
“parody” site at the domain name <lordbissellbrook.com>. The panel in that case rejected the
Respondent’s “rights or legitimate interests” argument, observing that “[i]t is
clear that this [domain name] registration was an attempt on the Respondent’s
behalf to misleadingly divert customers and tarnish Complainant’s service
mark.” Lord, Bissell & Brook v.
DefaultData.com, FA 97334 (National Arbitration Forum July 17, 2001).
The Complainant relies on its use the
name Lord Bissell & Brook and says that the subject domain name essentially
is identical. It states: “The lack of
capital letters and the lack of spacing between words in the Domain Name, and
the use of “and” instead of an ampersand, do not remove confusing similarity”.
The previous conduct of Mr. Wick and the
fact that the Respondent is not identified with or known by the subject domain
name support the Complainant’s position that the Respondent does not have a
legitimate interest in the subject domain name.
B.
Respondent
The
Respondent did not address the factual issues, but argued that it is exercising
a right of free speech and that the Complainant’s position violates the
Respondent’s rights under the United States’ Constitution.
Because more and more commerce is occurring on the
Internet, Mr. Wick’s Internet project targets Brick & Mortar big business.
He states that he has reserved hundreds of Internet addresses similar to the
names of large companies, law firms and the resorts and country clubs where
people from these large businesses entertain
each other.
The original free
speech flyer website content at the <MorrisonFoerster.com> address
was practically identical to what is found today at the subject domain
name. It is at these free speech flyer websites and free speech
flyer websites at well over 100 additional Internet addresses similar to
the names of large law firms where Mr. Wick’s provides information about the
overall legal system – this same information to which current and former
employees and partners of law firms, including the Complainant, may want to
add. It is his intention to
emphasize the Internet’s inherent conflict
with the United States Constitution by operating free speech flyer websites at
Internet addresses similar to the names of numerous law firms.
Mr. Wick
has never offered his Trademark Internet addresses for sale, let alone for a
profit.
The Respondent says: “The Complainant
claims it has rights to the [subject domain name]. Under the guidelines of
UDRP, I do not dispute this claim”.
C.
Additional Submissions
The
Complainant delivered a further submission in which it asserted that the United
States’ Constitution is not relevant to the disposition of the Complaint
because the issues are contractually based and relate to the Complainant’s
trademark rights.
The
Complainant notes that the Respondent is not a client or former client of the
Complainant
The
Respondent replied to the Complainant’s additional submission and addressed
legal arguments advanced by the Complainant.
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.
The
Policy provides a number of examples of factual situations from which evidence
of bad faith can be inferred. They are
not exhaustive.
The
parties have referred to a number of previous decisions. While they are neither controlling nor
binding on this Panel reference to them can be of assistance.
Identical and/or Confusingly Similar
The Respondent concedes that the subject
domain name is identical or confusingly similar to the Complainant’s rights.
Rights or Legitimate Interests
The Respondent uses the Complainant’s
name as a vehicle to comment critically on the legal system and matters
associated with it. The Complainant
points to the usual indicia of a lack of legitimate interest – for example, no
authorization and the fact that the Respondent is not normally known by the name. The Respondent contends that it is
exercising its right of free speech. In
the context of this matter, it is not.
Free speech allows criticism. Insofar as the criticism is directed towards
a particular entity, reference to and potentially the use of the entities name,
may be permissible. Use of another’s
mark to attract users for the purpose of criticizing issues that merely relate
to the general activity of an entity is not legitimate.
The Respondent does not have a legitimate
interest or right in the subject domain name.
Registration and Use in Bad Faith
Findings that the a respondent does not
have a legitimate interest in a domain name that is identical or confusingly
similar to the rights of another, do not lead automatically to bad faith, but
the facts that the support the findings may be relevant to the issue.
In this case the Respondent contends that
it is entitled to draw users to its web-site through the use of the subject
domain name. By doing so, at a minimum
it risks confusing users into thinking that the Complainant supports the
criticism. It trades on the
Complainant’s reputation and recognition to criticize the legal system and by
association risks tarnishing the Complainant’s reputation and mark.
The potential harm to the Complainant
comes not from criticism direct to it, to which it could respond with
particularity, but from criticism of others who operate in the legal system and
of the legal system itself.
Again, the Respondent’s right to free
speech is not engaged. It can
criticize, but it cannot draw users to its criticism by using the intellectual
property rights of another. Registration and use of a domain name for this
purpose is bad faith.
Identical and/or Confusingly Similar
The subject domain name is identical or
confusingly similar to the Complainant’s name and mark.
Rights or Legitimate Interests
The Respondent does not have a right to
or a legitimate interest in the subject domain name.
Registration and Use in Bad Faith
The subject domain name has been
registered and is being used in bad faith.
DECISION
Based on the information provided to the
Panel and on its findings of fact, the Panel concludes that the Complainant has
established its case.
The Complainant asks that the subject
domain name be transferred to it.
The Panel so orders.
Edward C. Chiasson, Q.C., Panelist
Dated: May 23, 2002
.
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