National Arbitration Forum
DECISION
Woodward/White, Inc. v. Coho
Web Design, LLC c/o Dwight Knechtel
Claim Number: FA0611000836318
PARTIES
Complainant is Woodward/White, Inc. (“Complainant”), represented by William
Y. Klett, of Nexsen Pruet, LLC,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <alaskasbestlawyers.com>, <alabamasbestlawyers.com>, <coloradosbestlawyers.com>, <connecticutsbestlawyers.com>, <dcsbestlawyers.com>, <georgiasbestlawyers.com>, <hawaiisbestlawyers.com>, <iowasbestlawyers.com>, <idahosbestlawyers.com>, <illinoisbestlawyers.com>, <indianasbestlawyers.com>, <kansasbestlawyers.com>, <kentuckysbestlawyers.com>, <louisianasbestlawyers.com>, <marylandsbestlawyers.com>, <mainesbestlawyers.com>, <missourisbestlawyers.com>, <mississippisbestlawyers.com>, <montanasbestlawyers.com>, <northcarolinasbestlawyers.com>, <northdakotasbestlawyers.com>, <nebraskasbestlawyers.com>, <newhampshiresbestlawyers.com>, <newjerseysbestlawyers.com>, <newmexicosbestlawyers.com>, <nevadasbestlawyers.com>, <ohiosbestlawyers.com>, <oklahomasbestlawyers.com>, <oregonsbestlawyers.com>, <pennsylvaniasbestlawyers.com>, <rhodeislandsbestlawyers.com>, <southcarolinasbestlawyers.com>, <southdakotasbestlawyers.com>, <tennesseesbestlawyers.com>, <utahsbestlawyers.com>, <virginiasbestlawyers.com>, <vermontsbestlawyers.com>, <washingtonsbestlawyers.com>, <wisconsinsbestlawyers.com>, <westvirginiasbestlawyers.com>, and <wyomingsbestlawyers.com>,
registered with Go Daddy Software, Inc..
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.
Honorable Karl V. Fink (Ret.), as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 7, 2006; the
National Arbitration Forum received a hard copy of the Complaint on November 7, 2006.
On November 7, 2006, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <alaskasbestlawyers.com>, <alabamasbestlawyers.com>, <coloradosbestlawyers.com>, <connecticutsbestlawyers.com>, <dcsbestlawyers.com>, <georgiasbestlawyers.com>, <hawaiisbestlawyers.com>, <iowasbestlawyers.com>, <idahosbestlawyers.com>, <illinoisbestlawyers.com>, <indianasbestlawyers.com>, <kansasbestlawyers.com>, <kentuckysbestlawyers.com>, <louisianasbestlawyers.com>, <marylandsbestlawyers.com>, <mainesbestlawyers.com>, <missourisbestlawyers.com>, <mississippisbestlawyers.com>, <montanasbestlawyers.com>, <northcarolinasbestlawyers.com>, <northdakotasbestlawyers.com>, <nebraskasbestlawyers.com>, <newhampshiresbestlawyers.com>, <newjerseysbestlawyers.com>, <newmexicosbestlawyers.com>, <nevadasbestlawyers.com>, <ohiosbestlawyers.com>, <oklahomasbestlawyers.com>, <oregonsbestlawyers.com>, <pennsylvaniasbestlawyers.com>, <rhodeislandsbestlawyers.com>, <southcarolinasbestlawyers.com>, <southdakotasbestlawyers.com>, <tennesseesbestlawyers.com>, <utahsbestlawyers.com>, <virginiasbestlawyers.com>, <vermontsbestlawyers.com>, <washingtonsbestlawyers.com>, <wisconsinsbestlawyers.com>, <westvirginiasbestlawyers.com>, and <wyomingsbestlawyers.com>
domain names are registered with Go Daddy
Software, Inc. and that the Respondent is the current registrant of the
name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 November 21, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 11, 2006 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@alaskasbestlawyers.com, postmaster@alabamasbestlawyers.com, postmaster@coloradosbestlawyers.com, postmaster@connecticutsbestlawyers.com, postmaster@dcsbestlawyers.com, postmaster@georgiasbestlawyers.com, postmaster@hawaiisbestlawyers.com, postmaster@iowasbestlawyers.com, postmaster@idahosbestlawyers.com, postmaster@illinoisbestlawyers.com, postmaster@indianasbestlawyers.com, postmaster@kansasbestlawyers.com, postmaster@kentuckysbestlawyers.com, postmaster@louisianasbestlawyers.com, postmaster@marylandsbestlawyers.com, postmaster@mainesbestlawyers.com, postmaster@missourisbestlawyers.com, postmaster@mississippisbestlawyers.com, postmaster@montanasbestlawyers.com, postmaster@northcarolinasbestlawyers.com, postmaster@northdakotasbestlawyers.com, postmaster@nebraskasbestlawyers.com, postmaster@newhampshiresbestlawyers.com, postmaster@newjerseysbestlawyers.com, postmaster@newmexicosbestlawyers.com, postmaster@nevadasbestlawyers.com, postmaster@ohiosbestlawyers.com, postmaster@oklahomasbestlawyers.com, postmaster@oregonsbestlawyers.com, postmaster@pennsylvaniasbestlawyers.com, postmaster@rhodeislandsbestlawyers.com, postmaster@southcarolinasbestlawyers.com, postmaster@southdakotasbestlawyers.com, postmaster@tennesseesbestlawyers.com, postmaster@utahsbestlawyers.com, postmaster@virginiasbestlawyers.com, postmaster@vermontsbestlawyers.com, postmaster@washingtonsbestlawyers.com, postmaster@wisconsinsbestlawyers.com, postmaster@westvirginiasbestlawyers.com, postmaster@wyomingsbestlawyers.com by e-mail.
A timely Response was received and determined to be complete on December 11, 2006.
On December 19, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Honorable Karl V. Fink (Ret.), as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Woodward/White is in the business of compiling and publishing a
peer-rated directory of attorneys with particular specialties. Woodward/White publishes its highly
respected, widely read, and well-known directory annually, both in a print
publication entitled The Best Lawyers in America, and online at BestLawyers.com. Woodward/White has been in this business
since 1983.
Woodward/White, Inc. is the owner of
Woodward/White has not licensed or otherwise permitted Coho Web Design,
LLC c/o Dwight Knechtel to use any of its service marks.
The domain names at issue are confusingly similar to Complainant’s
service marks. Respondent has registered
forty-one (41) state-specific permutations of Complainant’s domain name and
service marks.
Respondent has never done business as Best Lawyers, nor has it ever
used this mark in commerce. None of the
domain names in question are associated with an active website.
Respondent has no legitimate business purpose for retaining rights to
these domain names, is not making bona fide use of the domains in commerce, and
is presumably stockpiling names for sale to third parties.
While Respondent has not associated the subject domain names with
active websites, each domain has been “parked” with GoDaddy.com Such arrangement allows Respondent to collect
advertising revenues generated by GoDaddy.com through these domains. Such arrangement is bad faith registration
and usage under the Policy.
B. Respondent
The Respondent believes that the mark which is alleged by the
Complainant, albeit having a Federal Registration, is so generic that the term
simply cannot function as a mark or at best is so descriptive that the range of
protection of the mark is extremely narrow.
The highly descriptive mark offers at best very limited protection and
is not necessarily confusingly similar with the Respondent’s domain names.
Respondent has rights and legitimate interest in the domain names. Respondent had a specific business plan to
implement the names in dispute, as well as many others for the purpose of
providing e-mails to attorneys as well as other professions.
The Respondent has developed a business plan for what is referred to as
vanity e-mails. In other words, using the
top-level domain name as a portion of an e-mail address, individuals in various
fields can purchase an e-mail address with, for example, one of the domain
names in dispute.
Respondent made various business preparations for his plan to provide
better top-level domain names for attorneys in various geographic regions. This was prior to any indication of any
arbitration proceeding with the Complainant.
The domain names in question are not registered or held in bad
faith. The first indication that Respondent had that godaddy.com was
utilizing the parked domain names to incur traffic with other sites was when
Respondent received the complaint with the attachments. Respondent does not receive any revenues
whatsoever from godaddy.com’s actions.
The registrations occurred in good faith such that the Respondent was
not even aware that the Complainant had any alleged trademark rights or a
Federal Registration on the term “BEST LAWYERS,” and revenues have not been
obtained from any of the domain registrations in question.
FINDINGS
For the reasons set forth below the Panel
finds that Complainant has not met its burden of proving it is entitled to
relief.
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
Respondent contends and the Panel finds that Complainant’s BEST LAWYERS mark is merely descriptive, as it contains the laudatory term “best” and the generic term “lawyer,” and that Complainant has failed to submit evidence of secondary meaning. Complainant, therefore, cannot exclude others from using the BEST LAWYERS mark, as it is incapable of acquiring secondary meaning. See In re Boston Beer Co. Ltd. Partnership, 198 F.3d 1370 (C.A. Fed. 1999) (affirming the USPTO decision to deny a trademark registration for the phrase “The Best Beer in America” as it was too common and laudatory to function as a trademark). See Donald J. Trump and Trump Hotels & Casino Resorts, Inc. v olegevtushenko a/k/a Oleg Evtushenko, FA 101509 (Nat. Arb. Forum Dec. 11, 2001) (finding that even with Complainant’s service mark registrations in hand, Complainant does not have the exclusive right to use every form of the word “trump”); see also B2BWorks, Inc. v. Venture Direct Worldwide, Inc., FA 97119 (Nat. Arb. Forum June 5, 2001) (holding that the complainant did not have exclusive rights to use of the terms “B2B” and “Works” in association with other words, even with a registered trademark for B2BWORKS); see also Quadrant II, Inc. d/b/a Hammocks.com v. Domains Holdings Sw. Corp., FA 268026 (Nat. Arb. Forum June 21, 2004) (finding that the HAMMOCKS.COM mark is merely descriptive, preventing the complainant from excluding others from use). See also Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb 19, 2001) (finding that Respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”).
Complainant has failed to satisfy the requirements of Paragraph 4(a)(i) of the Policy.
It is, accordingly, not necessary for the Panel to find whether Respondent had rights or legitimate interests in respect to the domain names at issue (Paragraph 4(a)(ii) of the Policy) or whether their registration and use has been in bad faith (Paragraph 4(a)(iii) of the Policy).
DECISION
It is the decision of the Panel that the domain names listed below not
be transferred from Respondent to Complainant.
<alaskasbestlawyers.com>, <alabamasbestlawyers.com>, <coloradosbestlawyers.com>, <connecticutsbestlawyers.com>, <dcsbestlawyers.com>, <georgiasbestlawyers.com>, <hawaiisbestlawyers.com>, <iowasbestlawyers.com>, <idahosbestlawyers.com>, <illinoisbestlawyers.com>, <indianasbestlawyers.com>, <kansasbestlawyers.com>, <kentuckysbestlawyers.com>, <louisianasbestlawyers.com>, <marylandsbestlawyers.com>, <mainesbestlawyers.com>, <missourisbestlawyers.com>, <mississippisbestlawyers.com>, <montanasbestlawyers.com>, <northcarolinasbestlawyers.com>, <northdakotasbestlawyers.com>, <nebraskasbestlawyers.com>, <newhampshiresbestlawyers.com>, <newjerseysbestlawyers.com>, <newmexicosbestlawyers.com>, <nevadasbestlawyers.com>, <ohiosbestlawyers.com>, <oklahomasbestlawyers.com>, <oregonsbestlawyers.com>, <pennsylvaniasbestlawyers.com>, <rhodeislandsbestlawyers.com>, <southcarolinasbestlawyers.com>, <southdakotasbestlawyers.com>, <tennesseesbestlawyers.com>, <utahsbestlawyers.com>, <virginiasbestlawyers.com>, <vermontsbestlawyers.com>, <washingtonsbestlawyers.com>, <wisconsinsbestlawyers.com>, <westvirginiasbestlawyers.com>,
and <wyomingsbestlawyers.com>
Honorable Karl V. Fink (Ret.), Panelist
Dated: January 2, 2007
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