Foley & Lardner v. Brian G. Wick et al.
Claim Number: FA0207000114758
Complainant is Foley & Lardner, Jacksonville, FL (“Complainant”). Respondent is Brian G. Wick et al., Denver, CO (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <foleyandlardner.com>, registered with Alldomains.com.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 2, 2002; the Forum received a hard copy of the Complaint on July 10, 2002.
On July 3, 2002, Alldomains.com confirmed by e-mail to the Forum that the domain name <foleyandlardner.com> is registered with Alldomains.com and that the Respondent is the current registrant of the name. Alldomains.com has verified that Respondent is bound by the Alldomains.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 July 15, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 5, 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 firstname.lastname@example.org by e-mail.
A Response was received on August 5, 2002 in electronic form. However, Respondent’s Response in hard copy form and exhibits were received on August 9, 2002, after the deadline established for the Response. Therefore, the Forum does not consider the Response to be in compliance with ICANN Rule #5(a).
Complainant’s Additional Submission was timely received without the required fee. Therefore, the Forum does not consider Complainant’s Additional Submission to be in compliance with Supplemental Rule #7. Respondent’s Additional Submission was timely received and determined to be complete on August 13, 2002.
On August 27, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is a full service law firm with over 950 attorneys located in 15 offices throughout the United States.
Complainant has common law rights in the mark FOLEY & LARDNER for use in connection with legal services. Complainant uses the mark on letterhead, business cards, advertising brochures and other marketing and promotional materials and has so used the mark since at least 1969.
Complainant uses the mark on its web site located at <foleylardner.com>.
The domain name <foleyandlardner.com> is identical or confusing similar to Complainant’s mark, FOLEY & LARDNER.
Respondent is a famous (or infamous) cybersquatter engaged in the improper and bad faith registration and use of domain names of major law firms and corporations.
Respondent does not and has not used the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. Nor has Respondent commonly been known by the name FOLEY & LARDNER or any other similar name.
Respondent’s use of Complainant’s mark is not protected by a right to free speech.
Respondent registered the domain name in order to prevent Complainant from reflecting its mark in the domain name and for the purpose of disrupting Complainant’s business.
Respondent is using <foleyandlardner.com> to draw users to his web site because he knows Internet users, such as clients and potential clients of Complainant, looking for Complainant’s site will frequently go to <foleyandlardner.com>. These users looking for Complainant are then exposed to a confusing criticism of the legal system, purporting to be a parody of the Justices of the United States Supreme Court, the Constitution, the U.S. Attorney General and the jury system. This message at a minimum confuses clients and potential clients of Complainant, and is likely to taint and damage Complainant’s reputation.
Respondent’s use of the domain name will create initial interest confusion to client and potential clients of Complainant.
Respondent intentionally chose the domain name to improperly trade on and use Complainant’s mark, as well as to cause damage to Complainant.
Respondent is a competitor of Complainant as that term has been interpreted for purposes of the Policy, and Respondent’s improper use of the domain name disrupts Complainant’s business.
Respondent has no rights or interest in the domain name and registered and is using the domain name in bad faith.
On January 8, 2002, Complainant demanded, by letter, that Respondent immediately cease and desist from using the domain name. Respondent failed to stop using the domain name.
Respondent failed to submit a timely Response.
C. Additional Submissions
None of the additional submissions of the Parties were submitted within the requirements of the Policy and Rules and will not be considered in this proceeding.
1. Complainant is a law firm operating on a national scale in the United States.
2. Complainant has common law rights in the mark, FOLEY & LARDNER, the same being established by continuous use of the mark since the year 1969.
3. Respondent registered the domain name <foleyandlardner.com> on October 24, 1999.
4. Complainant does not state to what use, if any, the domain name, <foleyandlardner.com> was put, by Respondent, from October 24, 1999, until June 20, 2002.
5. On June 20, 2002, Complainant found that <foleyandlardner.com> resolved itself on the Internet to a web page that plays music and prominently displays the text “Foley And Lardner.com…Every swimming pool is the same…have a swim.”
6. The web site at <foleyandlardner.com> refers to itself as a ‘free speech flyer’ that represents itself as a “free speech parody of the Supreme Court Judges, US Legal System, U.S. Constitution, US Attorney General, US Jury & US Courtroom.” No specific comments or criticism of Complainant is included.
7. The domain name, <foleyandlardner.com> is identical to Complainant’s mark, FOLEY & LARDNER.
8. Complainant has common law rights in the mark, FOLEY & LARDNER.
9. Respondent has no rights or interests in the mark, FOLEY & LARDNER, or <foleyandlardner.com>.
10. Respondent registered and is using the domain name, <foleyandlardner.com>, in bad faith.
11. Respondent failed to submit the hard copies of the Response and exhibits by the date specified by the Forum. No exceptional circumstances are found to exist. The Panel shall proceed to a decision on the Complaint under Rule 14(a).
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
Complainant must show that it has rights in a mark, which is identical or confusingly similar to the domain name, <foleyandlardner.com>.
Complainant contends that it has common law trademark rights in the FOLEY & LARDNER mark in connection with legal services. Complainant shows that it has been using the mark to designate its full service law firm since the year 1969. There are 15 offices and 950 lawyers throughout the United States who use the mark on letterhead, business cards, advertising brochures and other marketing and promotional materials. Complainant promotes its legal services by use of the website located at <foleylardner.com>. The Policy does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names. See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000); see also Smart Design LLC. V Hughes, D2000-0993 (WIPO Oct. 28, 2000) holding that ¶4(a)(i) does not require Complainant to demonstrate ‘exclusive rights’ but only that Complainant has a bona fide basis for making the Complaint in the first place; see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) finding that the Policy does not require “that a trademark be registered by a governmental authority for such rights to exist.”
Complainant contends that the <foleyandlardner.com> domain name is “identical or confusingly similar” to Complainant’s FOLEY & LARDNER mark. The only difference between the domain name and the mark is the use of the word “and” substituted for the ampersand. The mere substitution of a word for its representative mark is insufficient to avoid confusion. See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) finding that the <wrightandlato.com> domain name is identical to Complainant’s WRIGHT & LATO mark, because the ampersand symbol is not reproducible in a URL; see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) which noted that PG&E’s home web page is found at <pge.com> because the ampersand symbol is not reproducible in a domain name. The domain name, <foleyandlardner.com>, is identical to Complainant’s mark, FOLEY & LARDNER.
Rights or Legitimate Interests
Complainant shows that it has not authorized or licensed Respondent to use the FOLEY & LARDNER mark. There is no evidence to suggest that Respondent is owner of any trade or service mark that is identical to the domain name. No evidence is present to suggest that Respondent has ever been known as “Foley and Lardner.” Complainant contends that it has exclusive right to use the FOLEY & LARDNER mark. As a result of Complainant’s showing, and Respondent’s apparent lack of rights and legitimate interests in the domain name, the burden must shift to Respondent to demonstrate rights and legitimate interests in the domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
Respondent failed to come forward with a timely Response. Therefore, there is no evidence to rebut Complainant’s contentions. Respondent failed to submit a hard copy of the Response within twenty days of commencement of the administrative proceeding. Respondent submitted a Response in electronic form by the due date but the hard copy of the Response and exhibits were submitted four days late.
Rule 5 states that a Respondent “shall” submit a Response to the Provider and that the Response “shall” be submitted in hard copy and in electronic form by the due date. A Panel is required to conduct the administrative proceeding “in accordance with the Policy and these Rules.” See Rule 10(a). The use of the word “shall”, as stated in the Rules, indicates a mandatory direction to be followed by the Panel and Provider as it relates to due dates for the receipt of a Response.
Respondent’s inability to submit the Response on time is addressed in Rules 5 and 10. Rule 5(d) permits the Provider to extend a period of time for the filing of the response when there is a request by the Respondent, in exceptional circumstances, for an extension. Rule 5(d) also permits the parties to enter into a written stipulation for an extension that can be submitted “provided the stipulation is approved by the Provider.”
There was no request for an extension from Respondent made to the Provider in this case. There was no stipulation between the parties.
Rule 10(d) permits the Panel “at the request of a Party or on its own motion, to extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.” No request has been made to this Panel for an extension. The Panel searched the record in this case and discovers no circumstances that would make this case an exceptional case so as to justify an extension of time for filing the Response on the Panel’s own motion. No exceptional circumstances are alleged in the pleadings nor can any be inferred or otherwise be found in the submissions.
The Policy and Rules make it clear that except in exceptional circumstances, the time periods for submitting the Response is required to be applied as stated. The use of the word “shall” in the provisions appears to be calculated to restrict the discretion of the Panel to act only in exceptional circumstances. Unless exceptional circumstances can be found, the Panel has no discretion to ignore the clear time limitations imposed by the Rules for submission of the Response.
Under the facts and circumstances of this case, the Panel finds that Respondent did not submit the Response within the time period set out in the Rules. That being so, and there being no finding made of exceptional circumstances, Respondent is found not to be in compliance with the Rules. A Panel is required to make its decision in accordance with the Policy and the Rules. See Rules 15(a). “In the event that a Party, in the absence of exceptional circumstances, does not comply with any time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.” See Rule 14(a). The Panel will follow the clear direction of Rule 14 and find Respondent to be in default. The Panel will proceed to a decision on the Complaint.
It can be presumed that Respondent has no rights or legitimate interests in the domain name. See Pavilion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) finding that Respondent’s failure to respond can be construed as an admission that there are no rights or legitimate interests in the domain name.
Furthermore, when Respondent fails to submit a timely Response, the Panel is permitted to make all inferences in favor of Complainant. See Talk City Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000).
Once a Complainant makes a prima facie showing that Respondent has no rights or legitimate interests in respect to a domain name, the burden shifts to Respondent to illustrate rights or legitimate interests by the offer of concrete evidence to substantiate its claim. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). That burden cannot be carried when no timely Response has been submitted.
However, Complainant, by the citation in the Complaint of the content of Respondent’s web page as of June 20, 2002, raises certain issues that must be considered regarding Respondent’s rights or legitimate interests. Complainant cites in its Complaint the content of the web page that is reached when an Internet user keys in <foleyandlardner.com>. It is cited as follows: “The site…plays music and prominently displays the text ‘Foley And Lardner.com’…Every swimming pool is the same…have a swim”. The top portion of the site in smaller print contains the following message: “For the benefit of U.S.A. 1st Amendment Challenged County Club Good ole’ Boy Federal Judge Lewis Babcock, this web site is merely a ‘free speech flyer’ being passed out at a possible electronic address to an Established business (no different than free speech at a physical address to a business) and a similar ‘free speech flyer’ is also being passed out at several other possible electronic Constitutionally granted free speech parody of the Supreme Court Judges, US Legal System, U.S. Constitution, US Attorney General, US Jury & US Courtroom, including this Standard Disclaimer parody itself, and this web site has no relation to Saturday Night Live, any alien residing in Roswell Area 51, Mad Magazine, National Lampoon, National Inquirer or the 1812 Overture and this web site has no relation to any person, organization, lawyer or law firm claiming rights to Foley & Lardner.”
Respondent’s web page states that it is an exercise by Respondent of free speech and constitutes a parody of the legal system.
This case is another in Respondent’s personal Internet offensive against law firms and the legal system. see Morrison & Foerster LLP v. Brian Wick and American Distribution Systems, Inc., 94 F. Supp. 2d 1125 (D. Colo. 2000); Lord, Bissell & Brook v. DefaultData.com, FA 108064 (Nat. Arb. Forum May 23, 2002); Preston Gates & Ellis, LLP v. DefaultData.com and Brian Wick, D2001-1381 (WIPO Feb. 13, 2002); Adams & Reese, LLP v. American Distrib. Sys., Inc., DBA DeFaultData.com, FA 102860 (Nat. Arb. Forum Feb. 6, 2002); Valero Energy Corp. v. American Distrib. Sys., Inc., D2001-0581 (WIPO Aug. 12, 2001); Lord, Bissel & Brook v. DefaultData.com, FA 97114 (Nat. Arb. Forum July 17, 2001); Winchester Properties, LLC v. DefaultData.com, FA 97114 (Nat. Arb. Forum June 22, 2001); Dykema Gossett, PLLC v. DefaultData.com, FA 97031 (Nat. Arb. Forum May 29, 2001); Hunton & Williams v. American Distrib. Sys., Inc., D2000-0501 (WIPO Aug. 1, 2000); Brandon Dunes, L.P. v. DefaultData.com, D2000-0431 (WIPO July 13, 2000); Morrison & Hecker L.L.P. v. Nameisforsale.com, American Distrib. Sys., Inc., Defaultdata.com and Brian G. Wick, FA 94386 (Nat. Arb. Forum May 11, 2000); McKenna & Cuneo, L.L.P. v. NameisForSale.com, FA 93677 (Nat. Arb. Forum Mar. 16, 2000); Morrison & Foerster LLP v. Brian Wick and American Distrib. Sys., Inc. FA 94301 (Nat. Arb. Forum Apr. 17, 2000) and Strasburger & Price, LLP v. NameIsForSale.com, FA 94290 (Nat. Arb. Forum May 18, 2000).
The question to be decided in this case is whether the content of Respondent’s web page, illustrates a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain or if it tarnishes Complainant’s service mark. See Paragraph 4(iii).
Virtually identical web page content was cited and examined in Preston Gates & Ellis, LLP v. defaultdata.com and Brian Wick, D2001-1381 (WIPO Feb. 13, 2002) with the observation from the Panel that Respondent has posted virtually identical web pages in connection with domain names incorporating the service marks of other large law firms in other cases. The Panel, in examining Respondent’s position that the use was an exercise of free speech, stated as follows: “Respondent does not reasonably need to register and use the service marks of many of the major law firms in the United States because he wants to make a point that lawyers are evil. While this might facilitate his task, it interferes in a substantially too great way with the legitimate rights of the service mark holders to control the use of their names to conduct business…Respondent goes beyond the reasonable or fair use of a mark to make a statement and into unreasonably or unfairly interfering with the legally recognized interests of others. The Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain names within the meaning of paragraph 4 (d)(iii) of the Policy.”
The “parody” aspect of Respondent’s web site was considered in Hunton & Williams v. American Distribution Systems, Inc, et al, D2000-0501 (WIPO Aug. 1, 2000) where it was rejected with the following statement. “The content posted by Respondent does not constitute the imitation of any distinctive style of the Firm. The content is merely disparagement of the Firm as greedy, parasitical and unethical. The Policy paragraph 4(c)(iii) does not allow content which is intended merely ‘to tarnish the trademark or service mark at issue.’ Respondent has no apparent purpose other than to tarnish the reputation of the Firm.”
Respondent’s “parody” argument was rejected in Winchester Properties, LLC v. DefaultData.com, FA 97114 (Nat. Arb. Forum June 22, 2001) where it was found that the domain name itself must signify critical purposes, or parody, as opposed to imitation of the trademark at issue. “Foleyandlardner.com,” standing alone, implies no critical purpose or parody.
Respondent has no rights or legitimate interests in the domain name, <foleyandlardner.com>.
Registration and Use in Bad Faith
The burden is upon Complainant to show Respondent’s bad faith.
Complainant contends that Respondent registered the domain name in order to prevent the owner of the mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct. Complainant certainly has proven a pattern of conduct on the part of Respondent to register the names of law firms. The cases cited by Complainant establish the pattern of conduct. Respondent was found to be in bad faith under Policy Paragraph 4(b)(ii) in Preston Gates & Ellis, LLP v. defaultdata.com and Brian Wick, D2001-1381 (WIPO Feb 13. 2002) wherein it was stated “Respondent registered the disputed domain names incorporating Complainant’s service mark so that when Internet users entered the logical URLs identifying Complainant, they would not find Complainant, but instead Respondent. He must understand and assumed that by registering the logical identifiers for Complainant’s business, he would thereby prevent Complainant from registering its service mark in those names. It is not important that Complainant may have used a shorter version of its name in an alternative domain name. It was well within Complainant’s rights to register more than one logical URL identifier for its service mark.” That case compared Preston, Gates & Ellis to the domain name <prestongatesandellis.com>. Here the Panel considers Foley & Lardner and <foleyandlardner.com>. The Panel adopts the reasoning of Preston Gates & Ellis, LLP v. defaultdata.com, in finding bad faith registration and use on the part of Respondent under Policy ¶ 4(b)(ii).
It seems obvious that Respondent registered the domain name primarily for the purpose of disrupting the business of Complainant. Complainant argues for the broad interpretation of “competitor” found in Mission KwaSizabantu v. Benjamin Rost, D2000-0279 (WIPO June 7, 2000). See Policy ¶ 4(b)(iii). Complainant cites Gardere Wynne Sewell, LLP v. DefaultData.com, D2000-1093 (WIPO Nov. 16, 2001) that finds that Respondent is a competitor of Complainant in a broad sense, and that Respondent seeks to convince Complainant’s clients to seek alternatives to Complainant’s services. Considering the antagonistic attitude Respondent takes to Complainant with his attendant intent to embarrass or humiliate Complainant by use of the domain name, it is not difficult to find that Respondent has made himself a “competitor” of Complainant under the facts and circumstances of this case. Respondent seems to desire to do damage to Complainant, whether it be loss of clients or loss of the good will or prestige that Complainant has worked to establish over a number of years. That is evidence of bad faith under the “totality of circumstances” shown in this case. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 28, 2000).
Respondent registered and used the domain name, <foleyandlardner.com> in bad faith.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 10, 2002
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