Gary Kompothecras v. ProLawUSA
Claim Number: FA1006001328818
Complainant is Gary Kompothecras (“Complainant”), represented by Nicole
Deese Newlon, of Shutts & Bowen LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <askgarysucks.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2010. Complainant amended Complaint on June 8, 2010 to reflect the updated status of ICANN’S rules and so as to list the Respondent’s name and contact information as currently found in the Registrar’s WHOIS database.
On June 9, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <askgarysucks.com> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 June 16, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on June 16, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Respondent requested and Complainant consented to an allowance of additional time to respond to the Complaint. The National Arbitration Forum, based upon a finding of extenuating circumstances, granted an additional 20 days within which to answer the Complaint. Thereafter, a timely Response was received and determined to be complete on July 26, 2010.
On August 1, 2010, a timely Additional Submission was received, which was in compliance with Supplemental Rule 7.
On August 2, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq., as Panelist.
Complainant requests that the domain name <askgarysucks.com> be transferred from Respondent to Complainant.
Complainant alleged as follows:
Complainant’s Complaint is based upon the Complainant’s trademarks ASK GARY and 1-800-ASK-GARY (the “marks”) filed with the United States Patent and Trademark Office (“USPTO”).
Complainant’s USPTO registrations confirm its rights to the ASK GARY trademarks.
Complainant has used and has continued to use the marks in jurisdictions throughout the United States, since at least as early as 2003, for numerous services related to counseling and the provision of advice regarding auto accidents and personal injuries resulting from auto accidents. Complainant does not provide legal services, but is a lawyer referral service registered with the Florida Bar.
Complainant’s use of the marks in national advertisements and promotion of its services under the ASK GARY marks in several Internet forums has developed and garnered goodwill.
Respondent’s <askgarysucks.com> domain name is confusingly similar to Complainant’s ASK GARY marks, as it contains the Complainant’s mark in its entirety, along with the addition of the term “sucks” after it. This slight alteration to Complainant’s marks does not render the disputed domain name distinct from Complainant’s marks.
Complainant states that Respondent has apparently been doing business on the disputed website in a field at least comparable to Complainant’s lawyer referral service for persons injured as a result of automobile accidents, in that Respondent advertises legal services for those who have suffered personal injuries as a result of automobile accidents.
Complainant alleges that Respondent has no rights nor legitimate interests in the ASK GARY marks, in that:
Complainant has not authorized Respondent to use the marks; and
Respondent has neither made use of, nor demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services; and
Respondent has not been commonly known by the domain name; and
Respondent uses <askgarysucks.com> to provide legal services in a transparent attempt to interfere with and disparage Complainant’s lawyer referral service and its ASK GARY marks.
Complainant further states that Respondent registered the domain name in an attempt to capitalize unfairly on the goodwill of Complainant’s well known ASK GARY marks.
Complainant lastly states that Respondent is using the mark in bad faith, in that Respondent used the domain name to operate a website through which it sells legal services to those injured as a result of automobile accidents, which is similar to the lawyer referral services offered by Complainant and for which its ASK GARY marks are registered.
Respondent alleged as follows:
Complainant, Gary Kompothecras, is not an attorney, but rather a
chiropractic physician licensed in
Upon information and belief, Complainant’s business practices consist
of the transmission of 1-800-ASK
Per Respondent’s Annex 3, Respondent’s representative is an attorney,
licensed to practice law in
Over the years, Mr. Neville has represented numerous persons who had negative experiences with attorneys referred to them by Complainant’s 1-800-ASK GARY referral service as well as persons who had negative experiences treating at Complainant’s medical clinics. These negative experiences prompted Mr. Neville to register the domain name <askgarysucks.com> in the first place. His attention was and always has been to create a discussion forum where persons could openly share their experiences with Complainant’s referral services and clinics. Mr. Neville has declined offers to participate in Complainant’s business ventures.
Respondent alleges that his disputed domain name is distinguishable from Complainant’s marks. In support of this contention, Respondent states that there is a long line of decisions which specifically hold that the inclusion of the word “sucks” in the domain name distinguishes the domain name from the trademark to the point where it cannot be considered confusingly similar to the trademark.
Finally, Complainant has not presented any evidence of actual confusion related to the Respondent’s <askgarysucks.com> domain name and his trademarks.
C. Additional Submission
Complainant alleged as follows:
Respondent’s Response ignores the requisite legal arguments, and in
lieu thereof, attempts to disparage and insult the 1-800-ASK-
Respondent seeks to be excused from his misconduct by what he argues were his good faith intentions for use of the domain name, even though he never used the domain name for his stated purpose.
Respondent disclaims all knowledge and responsibility for having linked the domain name to the web page for his law firm.
Factors which impact an analysis of whether Respondent’s domain name is confusingly similar are as follows:
Respondent used the disputed domain name for his law firm which
specializes in representing those injured in automobile, motorcycle and
pedestrian accidents, and Complainant is a lawyer and doctor referral service.
Both Respondent’s law firm and the 1-800-ASK
Complainant alleges that cases cited by Respondent are irrelevant as most of them involved the use of a protest or complaint website. That is not the case in this situation, as the disputed domain name is being used by Respondent for his law firm, which offers competing services to those provided by Complainant. In contrast to the cases cited by Respondent, there have been many ICANN decisions that have found domain names that combine a trademark with the word “sucks” to be confusingly similar to the trademark.
Complainant contends that Respondent does not gain any rights or legitimate interests in the name, either by passively holding the name or by his unmanifested intentions to create a protest site or site to log consumer complaints.
Regarding whether Respondent registered the disputed domain name in bad faith, Complainant alleges that it is highly plausible that Complainant’s inquiry into the ownership of the name activated a parked name and somehow linked this domain name to the Respondent’s law firm website. Complainant surmises that the purpose of the registration was to advertise Respondent’s competing services and to disparage the Complainant.
Complainant alleges that Respondent, without rights to the mark ASK
Complainant lastly alleges, in its Additional Submission, that the attacks levied against the Complainant and 1-800-ASK GARY, as evidenced both by the four corners of the Response and the attachments, including Annexes 4, 5, 6, 9, 10, 11 and 12, are unnecessary, unwarranted and inappropriate. The Complainant is a chiropractor who operates a large medical practice, and is, as well, a businessman and a philanthropist. Complainant states that it has met its burden of proof and, therefore, the disputed domain name should be transferred to Complainant.
Respondent’s domain name <askgarysucks.com> is not identical or confusingly similar to a trademark or servicemark in which the Complainant has rights. As a unanimous finding of all three elements is required, the Panel has declined to analyze ¶ 4(a)(ii) and ¶ 4(a)(iii) of the Policy. Therefore, Respondent is not ordered to transfer the mark to Complainant.
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.
Complainant registered the mark 1-800-ASK
GARY in the United States Patent and Trademark Office ( “USPTO”)
at U.S Trademark Reg. No. 3,063,452 and registered the mark ASK GARY in the
USPTO at U.S. Trademark Reg. No. 3,195,747.While it is clear that Complainant
has some rights in these registered marks, the Panel must ascertain the extent
of those rights; that is, whether those rights have been abridged or infringed
upon by the use of an identical or confusingly similar name. Here, Respondent, ProLawUSA, is persuasive in
its argument that the addition of the word “sucks” to Complainant’s trademark
negates a finding that consumers would be confused as to the sponsorship of the
mark. This lack of confusion would be particularly marked in light of
Complainant’s widespread and longstanding television and outdoor advertising campaigns, as
well as the June 2010 re-naming rights of
The ASK GARY marks were further thrust into the public eye by the Florida Bar’s 2007 crack-down on scores of personal injury attorneys who allegedly benefitted from the 1-800-ASK-GARY referral service, in accordance with Respondent’s Annexes 4-6.
Furthermore, the ASK GARY marks were highlighted as being in the center of an April 2010 verified class action complaint against attorneys who benefitted from the 1-800–ASK-GARY referral system.
In light of this firestorm of both self-promotion and being thrust into the public eye as newsworthy events, the 1-800-ASK-GARY marks became the object of some public scorn, deserved or not, such as to create fertile ground for the generation of a protest site to develop.
With regard to the narrow issue of confusing
similarity, the Panel is persuaded that a consumer would not be confused as to
the affiliation of the well known mark ASK GARY, if the mark was appended by
the protest cry of “sucks.” Further, Complainant did not include any instances
of actual consumer confusion, either in its original Complaint, or in its
Additional Submission. Therefore, the Panel concludes that Respondent’s <askgarysucks.com> domain name is
not confusingly similar to Complainant’s ASK
Likewise, in Lockheed Martin Corporation v. Parisi, D2000-1015 (WIPO Jan. 26, 2001), the panel held that “common sense and a reading of the plain language of the Policy support the view that a domain name combining a trademark with the word “sucks” or other language clearly indicates that the domain name is not affiliated with the trademark owner.” Thus, the Parisi panel found the respondent’s <lockheedmartinsucks.com> and <lockheedsucks.com> domain names could not be considered confusingly similar to the complainant’s LOCKHEED MARTIN mark.
As the Panel has concluded that Complainant has not satisfied Policy ¶4(a)(i) because it has failed to establish that the disputed domain name is confusingly similar to Complainant’s marks, the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the Complainant must prove all three elements under the policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element (sic) unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶4(a)(i)).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <askgarysucks.com> domain name NOT BE TRANSFERRED from Respondent to Complainant.
Carol M. Stoner, Esq., Panelist
Dated: August 15, 2010
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