Jenner & Block LLC v. Defaultdata.com
Claim Number: FA0207000117310
Complainant is Jenner & Block LLC, Chicago, IL (“Complainant”) represented by Brian P. O'Donnell. Respondent is Defaultdata.com, Denver, CO (“Respondent”) represented by Brian G. Wick.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <jennerblock.com> and <jennerandblock.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. Respondent respectfully requested in the Response that this case be assigned to a retired judge as panelist who has not yet heard Respondent’s U.S. Constitutional arguments. This Panelist determined the case Adams and Reese LLP v. Am. Distribution Sys. Inc d/b/a Defaultdata.com, FA 102860 (Nat. Arb. Forum Feb. 6, 2002) but nevertheless brings an open mind to the consideration of this case.
Alan L. Limbury Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 29, 2002; the Forum received a hard copy of the Complaint on July 31, 2002.
On August 7, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <jennerblock.com> and <jennerandblock.com> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 August 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 3, 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 and email@example.com by e-mail.
A timely Response was received and determined to be complete on September 3, 2002.
Both parties filed supplemental submissions without having sought or obtained the permission of the Panel. For the reasons given by the learned 3-member Panel in Am. Online, Inc. v. Adrian Paul Miles d/b/a AD2000D.com, FA 105890 (Nat. Arb. Forum May 31, 2002), this Panel finds that the Forum’s Supplemental Rule 7 cannot override the discretion vested in the Panel by the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) and declines to have regard to those submissions.
On September 13, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury Esq., as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant is one of the 100 largest law firms in the United States, founded in 1914 and since 1969 operating as Jenner & Block. Complainant’s clients are located throughout the United States and the rest of the world.
Complainant owns United States service mark registration No. 2,320,842 for JENNER & BLOCK and has been extensively and continuously using that mark for legal services since 1969.
On February 12, 2000, Respondent registered the disputed domain names, which are virtually identical and confusingly similar to Complainant’s service mark JENNER & BLOCK in appearance, sound and connotation. Respondent has merely removed the “&” in the first registration and substituted “AND” for “&” in second.
Defaultdata.com is the assumed or trade name of American Distribution Systems, Inc., whose only officer is Mr. Brian G. Wick.
Respondent Has No Right to the Domain Names
Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services. The websites under those domain names mainly display graphics of dollar signs, sharks circling a diver and fish being eaten by larger fish. No goods or services are offered on these websites. No business whatsoever is being carried on in these websites that relates to the domain name.
Upon information and belief, Respondent has not been commonly known by the domain names and does not have a trademark or service mark registration or any other intellectual property rights for the domain names or any part of them.
Upon information and belief, Respondent has engaged in a pattern of interference with law firms by registering trade names and domain names confusingly similar to the names or service marks of prominent law firms such as Morrison & Foerster, Graham & James, Hunton & Williams, Quarles & Brady, Clausen Miller, Rosenman & Colin, D’Ancona & Pflaum, Lord, Bissell & Brook, Pillsbury, Madison & Sutro, Proskauer Rose, and Morrison & Hecker.
Upon information and belief, Respondent is not making any legitimate noncommercial or fair use of the disputed domain names. By registering and using them Respondent has falsely and misleadingly identified itself as Complainant and its websites as those of Complainant. Moreover, Respondent’s use of pictures of sharks and dollar signs on websites under the disputed domain tarnishes Complainant’s reputation and harms the substantial good will associated with Complainant’s service mark.
The Domain Names Have Been Registered in Bad Faith
Respondent has an extensive pattern and practice of registering domain names identical or confusingly similar to the service marks of other law firms and attempting to sell those domain names for a profit. Respondent has registered the trademarks of over seventy-five famous law firms as domain names. See, e.g., Hunton & Williams v. Am. Distribution Sys., Inc., D2000-0501 (WIPO Aug. 1, 2000).
In the last two years, Respondent, or some alter ego or related corporate entity of Respondent, were named as defendants in at least nine UDRP arbitration proceedings involving some of these seventy-five famous law firms. In each of the foregoing arbitration proceedings, panelists from this forum and WIPO found that Respondent acted in bad faith in registering domain names identical or confusingly similar to those of known law firms, that Respondent had no legitimate rights or interests in the domain names at issue and that the domain names should be transferred to the law firm.
Also in the last two years, Respondent, or some alter ego of Respondent, has been sued by at least six law firms in federal district court for violating, among other things, the Anti-Cybersquatting Consumer Protection Act and the Lanham Act.
The Response identified Respondent as “Defaultdata.com and Brian Wick”. The Panel therefore takes the use of the first person singular in the Response as referring to Mr. Wick as the person responsible for Respondent.
The purpose of the “bad faith” element of the Policy is to deprive citizens of their right of free speech under the U.S. Constitution. To be effective, free speech must be heard.
Anybody driving down the Information Super-highway going to the <jennerblock.com> or <jennerandblock.com> Internet addresses expects to find websites sponsored by Complainant. This is exactly why I reserved these addresses – so speech can be heard.
Complainant has not established absence of rights or legitimate interests in the disputed domain names on my part.
Visitors expecting to go to a physical business address using their car and public roads are no different from visitors expecting to go to an electronic business address (like <jennerblock.com> and <jennerandblock.com>) using their computer keyboard and Public Internet Information Superhighway. 20 years ago I exercised my right of free speech at businesses’ physical addresses. Today I exercise my same Constitutional speech rights at businesses’ electronic Internet addresses. Designating free speech in an area of town where no one wants to go, like at <jennerblock.vacantlot> is not effective.
An exact physical address to a business allows for two concurrent uses – i.e. the Constitutional right to free speech and the conduct of the business itself, whereas an electronic Internet address to a business, like <jennerblock.com>, can satisfy only one of the lawful uses. The Anti Cybersquatting Consumer Protection Act (“APCA”) and the Policy have failed to identify this inherent conflict between the Internet and the U.S. Constitution.
Under APCA, bad faith intent may not be found where the court determines that the person “believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful”: APCA 3002(d)(1)(B)(ii). This was enacted to acknowledge that every American free speech author, including myself, has rights to every Internet address similar to a mark. I believe and have reason to believe, because of my experiences at the physical addresses to businesses off public roads, that the use of the disputed domain names off the Public Internet Information Superhighway are fair use and otherwise lawful.
To find that no one other than a mark holder may have a website at an Internet address where the court thinks people would expect to find the website sponsored by the mark holder would effectively remove Constitutional free speech from all public roads at public addresses to businesses – those same public roads the consumer uses to go to businesses and buy from those businesses – namely a public road called the Internet Information Superhighway.
This Panel must find reasons to encourage effective Constitutional speech rather than find creative ways to circumvent it and when that occurs my Internet free speech project will have accomplished its goal – at which time I can then focus on marketing to small business my 6000 generic (non-trademark) Internet addresses bundled with my software packages and my programming services as computer programming is how I have always made my living.
It’s no secret that messing with the frail egos of paranoid lawyers is pure sport to me.
Speech is the purest form of bona-fide offering of services using a mark – i.e. a public service providing consumer protection.
This element is irrelevant. I’ll pass on it.
Complainant has established all the elements of its case entitling it to relief.
Paragraph 15(a) of 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.
Respondent virtually admits the first element; hotly disputes the second, and makes no substantive submission as to the third, arguing that it is irrelevant.
Identical and/or Confusingly Similar
Essential or virtual identity is sufficient for the purposes of the Policy. See The Stanley Works and Stanley Logistics, Inc v. Camp Creek. Co., Inc., D2000‑0113 (WIPO April 13, 2000); see also Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corp. v. S&S Enters. Ltd., D2000-0802 (WIPO Sept. 9, 2000); Nokia Corp. v. Nokiagirls.com a/k/a IBCC, D2000-0102 (WIPO April 18, 2000) and Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO April 27, 2000).
The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors, such as the “Sleekcraft factors” – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,346 (9th Cir. 1979), usually considered in trademark infringement or unfair competition cases. See BWT Brands, Inc. and British Am. Tobacco (Brands), Inc v. NABR, D2001-1480 (WIPO March 26, 2002); Koninklijke Philips Elecs. N.V. v. In Seo Kim, D2001-1195 (WIPO Nov. 12, 2001); Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum (February 19, 2001); Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc., D2001-1121 (WIPO Nov. 7, 2001) and the cases there cited. See also the similar approach adopted by the U.S. Federal court in Northern Light Tech., Inc. v. N. Lights Club 2000 U.S. Dist. LEXIS 4732 (D. Mass. Mar 31, 2000).
The Panel finds each of the disputed domain names is virtually identical and confusingly similar to Complainant’s registered trademark JENNER & BLOCK.
Complainant has established Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Respondent is not commonly known by either disputed domain name and has no license to use Complainant’s service mark nor other association with Complainant. No goods or services are offered at the websites reached by means of the disputed domain names. These circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interest in the disputed domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in those names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) and the cases there cited.
This Panel has no authority to determine whether the APCA or the Policy violate the Constitution of the United States of America.
Respondent claims rights and a legitimate interest in the disputed domain names because he is exercising his Constitutional right to free speech. In rejecting such a claim in Robo Enters., Inc. v. Orvin Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000) the panel distinguished between the content of the respondent’s web site (which may enjoy first amendment and fair use protection) and the use, in order to reach that website, of a domain name which is confusingly similar to another’s trademark (to which those protections do not extend). Likewise Chi-Chi’s Inc. v. Restaurant Commentary, D2000-0321 (WIPO June 29, 2000); State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) and Compagnie de Saint Gobain v. Com-Union Corp.,D2000-0020 (WIPO March 14, 2000).
Respondent relies upon Pensacola Christian College Inc v. Peter Gage, FA 101314 (Nat. Arb. Forum (Dec. 12, 2001), in which the respondent had a prior relationship with the complainant on which the panel placed some weight. The domain name at issue used the “.com” gTLD when the complainant might have been expected to use “.edu”. The panel did not appear to consider the distinction between the content and purpose of the website and the choice of domain name to lead to that site. Since the primary purpose of the site was to express and allow others to express opinions and criticism of complainant's activities, policies and rules, the panel found this constituted a legitimate right and interest in respect of the domain name and fair use, citing Newport News v. VCV Internet,AF-0238 (eResolution July 18, 2000) and Bridgestone/Firestone Research, Inc. and Bridgestone Corp. v. Jack Myers, D2000-0190 (WIPO July 6, 2000).
Newport News v. VCV Internet was not a free speech case. Respondent offered “virtual city web site services” about the city of Newport News and these were held to constitute valuable, bona fide service offerings. Bridgestone Firestone et al. v. Myers was a free speech case in which transfer was denied partly because the domain name <bridgestone-firestone.net> as the address of a complaint site incorporated the ".net" gTLD rather than ".com", thereby serving to convey that it was not complainant’s domain name. A similar case was Ahmanson Land Co. v. Save Open Space and Elec. Imaging Sys., D2000-0858 (WIPO Dec. 4, 2000).
Here Respondent has used the “.com” gTLD, which a law firm would be expected to use, so there is nothing in either disputed domain name to convey a free speech purpose. Nor does Respondent assert any prior relationship with Complainant that might enable him to take advantage of the reasoning in Pensacola.
Respondent relies on PRL USA Holdings Inc. v. Polo, D2002-0148 (WIPO April 29, 2002); PRL USA Holdings v. Elyn Latta, D2002-0314 (WIPO May 31, 2002); The Clorox Co. v. Marble Solutions, D2001-0923 (WIPO Nov. 20, 2001); Novell Inc. v. Marinelli Co., D2001-1100 (WIPO Nov. 13, 2001) and Minnesota Mining & Mfg. Co. v. Overbey, D2001-0727 (WIPO Oct. 15, 2001) but all of these cases involved failure to establish registration and use in bad faith and are therefore of no assistance on the issue of legitimacy.
Respondent also relies on Koninklijke Philips Elecs. v. Relson Ltd., DWS2001-0003, in which the complainant failed to allege lack of legitimacy; Roberto Tomassini and ors v. Mike Chan, D2001-1366 (WIPO Jan. 26, 2002)(not a free speech case), in which the mark was weak and the domain name was somewhat different and the respondent was held to have a legitimate interest in the domain name because he was selling goods on his site which could have included genuine goods of the complainant. See Alcoholics Anonymous World Servs. Inc. v. Friends of Bill W & Jimmy K, D2001-1124 (WIPO Dec. 28, 2001), in which the respondent was held to have a legitimate interest in the domain name because of the decentralized nature of the complainant’s organization. None of these cases afford Respondent any assistance.
In North Am. Wilderness Recovery, Inc v. Citizens With Common Sense, FA 97058 (Nat. Arb. Forum July 1, 2001) the panel accepted that fair use can include the name of the person or business the critic would attack and that it will depend on the circumstances of each case whether that use is fair or not:
“It may well not be a fair use if the domain name offers no hint of its real purpose, but the use of a non‑commercial suffix like '.org' or '.net' may suffice to differentiate when criticizing a commercial enterprise. It may well also be a fair use to employ the name together with some added words to indicate a critical purpose."
In Sears Roebuck and Co. v. Hanna Law Office, the panel found the domain name <searsroebuck.com> failed to include any "communicative message or expression of respondent's right to air its negative opinions about Complainant” and held that use of that domain name as an address of a complaint site was illegitimate and diluted complainant's marks.
In Meijer, Inc. v. Porksandwich Web Servs., FA 97186 (Nat. Arb. Forum July 6, 2001), it was suggested that the proper approach in cases of this kind is to scrutinize the facts of each case to assess whether reasonable alternatives exist to use of a contested domain name that will still provide an effective avenue for a respondent's critical comment.
The numerous and sometimes conflicting free speech cases involving <trademarksucks> domain names have turned upon the issue of confusing similarity and are therefore of no assistance on the issue of legitimacy. See, for a compendious list of those cases, Koninklijke Philips Elecs. N.V. v. In Seo Kim, D2001-1195 (WIPO Nov. 12, 2001).
Here Respondent does not argue that the disputed domain names convey to Internauts the free speech purpose of the website at which they will arrive. Instead he claims that his registration and use of the disputed domain names, to which he himself states that Complainant has rights, are no different from the exercise of Respondent’s Constitutionally guaranteed right of free speech at a physical address of a business. But, as this Panelist held in Adams and Reese LLP v. Am. Distribution Sys. Inc. d/b/a Defaultdata.com, FA 102860 (Nat. Arb. Forum Feb. 6, 2002), there are two critical differences.
First, whereas the Constitution permits everyone to exercise the right of free speech on a public street at a business address (so long as traffic is not blocked from reaching its intended destination), Respondent’s registration of the disputed domain names precludes everyone without the permission of Respondent from exercising the right of free speech at the websites reached by means of the disputed domain names. This is where the analogy with a public roadway is flawed. An Internet address is more like a telephone number: unless it “belongs” to one subscriber only, the good order of the telephone system would collapse.
Second, the Constitutional right to freedom of speech is subject to the rights of others under laws such as 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:
If a domain name for the purpose of free speech such as parody or criticism does not on its face indicate that any site to which it leads is not that of the trademark or service mark holder but is instead a site for criticism or parody, there is likely to be created impermissible initial interest confusion. See Dykema Gossett PLLC v DefaultData.com and Brian Wick, FA 97031 (Nat. Arb. Forum May 29, 2001); see also Robo Enters., Inc. v. Orvin Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000).
Here, Respondent use of the disputed domain names is likely to cause initial interest confusion of the type discussed in Brookfield Communications, Inc. v. West Coast Ent’t 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.”
Respondent’s concedes that “anybody driving down the Information Super-highway going to the JennerBlock.com or JennerAndBlock.com Internet addresses expects to find a websites [sic] sponsored by the Complainant”. Having regard to the long history of use by Complainant of its mark and its domestic and worldwide clientele, the Panel concludes that Complainant’s service mark is a “mark of renown”, which “describes the source of only one company’s products, and that Respondent’s adoption of the disputed domain name[s] inevitably trades on the favourable cachet associated with that company, its works, and its reputation.” See the example of initial interest confusion given by the United States Court of Appeals for the 9th Circuit in Interstellar Starship Servs., Ltd. and ors v. Epix, Inc. No. 01-35155, D.C. No. CV-97-00107-REJ (Sept. 20, 2002) at p.14591.
The Panel concludes that, by registering and using the disputed domain names, Respondent has falsely and misleadingly identified itself as Complainant and its sites as those of Complainant. Accordingly, Respondent is not making fair use of the Complainant's mark under ¶ 4(c)(iii) of the Policy.
The Panel finds that Respondent has no right or legitimate interest in respect of the disputed domain names. Complainant has established Policy ¶ 4(a)(ii) of its case.
Registration and Use in Bad Faith
In SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport, FA 94956 (Nat. Arb. Forum July 11, 2000), a finding of bad faith was made where the respondent “knew or should have known” of the registration and use of the trademark prior to registering the domain name. See Marriott Int’l, Inc. v. John Marriot, FA 94737 (Nat. Arb. Forum June 15, 2000); see also Canada Inc. v. Sandro Ursino, AF-0211 (eResolution July 3, 2000); see also Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com, FA 95037 (Nat. Arb. Forum July 20, 2000).
The Panel finds that Respondent registered the disputed domain names intending to intercept for his own purposes Internauts expecting to find at those Internet addresses a website sponsored by Complainant, in order misleadingly to generate traffic to his websites that would not otherwise come to them. This amounts to bad faith registration and Respondent’s use of them for this purpose amounts to bad faith use.
There is no evidence Respondent registered the disputed domain names for sale at a profit, within ¶ 4(b)(i) of the Policy.
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 Policy ¶ 4(b)(iii) does not imply or demand any restricted meaning such as a commercial or business competitor. See 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.
Given Respondent’s admission that he likes to mess with lawyers, the Panel finds that Respondent's primary purpose in registering the disputed domain names was to disrupt Complainant’s business of providing legal services and that, accordingly, for this reason also, the disputed domain names were registered and are being used in bad faith.
Respondent’s argument that there is an inherent conflict between the Internet and the Constitutional right to free speech at the address to a business sounds impressive but is no more correct than the argument that there is a Constitutional right to intercept telephone calls to a business in order to speak to the customers. Respondent’s conduct is not the equivalent of exercising the right of free speech outside Complainant’s business street address but of impermissibly blocking traffic to that street address.
Complainant has established Policy ¶ 4(a)(iii) of its case.
In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel directs that the domain names <jennerblock.com> and <jennerandblock.com> be transferred to Complainant.
Alan L. Limbury Esq., Panelist
Dated: September 27, 2002
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