Foley & Lardner v. Brian G. Wick et
al.
Claim Number: FA0207000114758
PARTIES
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.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
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 postmaster@foleyandlardner.com 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
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.
B.
Respondent
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.
FINDINGS
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).
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
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.
DECISION
Tyrus R. Atkinson, Jr., Panelist
Dated: September 10, 2002
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