national arbitration forum

 

DECISION

 

Solomon Ward Seidenwurm & Smith, LLP v. Shahrokh Saadat-Nejad

Claim Number: FA0703000944660

 

PARTIES

Complainant is Solomon Ward Seidenwurm & Smith, LLP (“Complainant”), represented by Edward J. McIntyre, of Solomon Ward Seidenwurm & Smith, LLP, 401 B Street, Suite 1200, San Diego, CA 92101.  Respondent is Shahrokh Saadat-Nejad (“Respondent”), 3713 mount ashmun place, San Diego, CA 92111.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <solomonwardlawfirm.com> and <solomonwardsandiego.com>, registered with Go Daddy Software, Inc.

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 22, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 23, 2007.

 

On March 23, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <solomonwardlawfirm.com> and <solomonwardsandiego.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names.  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 March 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 16, 2007 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@solomonwardlawfirm.com and postmaster@solomonwardsandiego.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On April 20, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <solomonwardlawfirm.com> and <solomonwardsandiego.com> domain names are confusingly similar to Complainant’s SOLOMON WARD mark.

 

2.      Respondent does not have any rights or legitimate interests in the <solomonwardlawfirm.com> and <solomonwardsandiego.com> domain names.

 

3.      Respondent registered and used the <solomonwardlawfirm.com> and <solomonwardsandiego.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Solomon Ward Seidenwurm & Smith, LLP, is a professional legal partnership registered with the State Bar of California.  Since it began operations in San Diego, California, thirty years ago, Complainant has used the SOLOMON WARD mark in connection with its legal business.  Complainant has registered the <solomonward.com> domain name, which redirects Internet users to its primary website located at the <swsslaw.com> domain name.

 

In March 2007, Complainant was hired by another San Diego law firm to assist in a dispute with Respondent, specifically to address Respondent’s infringement of the law firm’s trademark.  Complainant contacted Respondent on behalf of its client insisting that it cease its infringement.  Complainant then sought and obtained a court ordered injunction against Respondent’s infringing use.  After Complainant obtained the injunction for its client, Respondent registered the disputed domain names.

 

Respondent registered the <solomonwardlawfirm.com> domain name on March 10, 2007 and registered the <solomonwardsandiego.com> domain name on March 14, 2007.  Respondent is using the disputed domain names to operate websites filled with the same libelous material against Complainant’s client as Respondent had already been enjoined from posting, as well as outrageous claims against Complainant.  For example, Respondent claims that Complainant proudly represents child abusers and sex offenders.

 

DISCUSSION

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."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   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 is not required to hold a registered trademark or service mark in SOLOMON WARD to establish rights pursuant to Policy ¶ 4(a)(i).  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy).

 

Complainant has common law rights to the SOLOMON WARD mark established through thirty years of use sufficient to create secondary meaning in the mark.  Within the Southern California business and legal communities Complainant has a strong and widely recognized reputation.  The Panel finds that Complainant has established rights in the SOLOMON WARD mark pursuant to Policy ¶ 4(a)(i).  See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982).

 

Respondent’s <solomonwardlawfirm.com> and <solomonwardsandiego.com> domain names are confusingly similar to Complainant’s SOLOMON WARD mark.  Both domain names include Complainant’s mark in its entirety without alteration.  One disputed domain name adds the phrase “law firm” to Complainant’s mark, which is descriptive of Complainant’s business operations.  The other disputed domain name adds the phrase “san diego” to Complainant’s mark, which is descriptive of Complainants place of business.  The addition of terms that describe what Complainant’s business is and where it is located do not distinguish the disputed domain names from Complainant’s mark.  The Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights or legitimate interests in the <solomonwardlawfirm.com> and <solomonwardsandiego.com> domain names.  Complainant’s allegation establishes a prima facie case, shifting the burden to Respondent to prove that it does have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  Respondent has not submitted a Response in this proceeding, thus depriving the Panel of evidence or arguments in support of Respondent’s position.  The Panel interprets Respondent’s failure to respond as evidence that Respondent does not have rights or legitimate interests in the disputed domain names.  However, despite Respondent’s failure to respond, the Panel evaluates available evidence to determine whether or not Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.  Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). 

 

Respondent is using the <solomonwardlawfirm.com> and <solomonwardsandiego.com> domain names to operate active websites that contain potentially defamatory statements against Complainant.  While the Panel acknowledges Respondent’s free speech rights, those rights do not extend to using Complainant’s mark in its domain name, particularly where that mark is combined with terms describing Complainant’s business and business location.  Nothing about the disputed domain names makes it clear to Internet users that Respondent’s websites are complaint websites and are not affiliated with Complainant.  The Panel finds that Respondent’s use of Complainant’s mark in the disputed domain names to redirect Internet users to its websites is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that the respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant . . . is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”); see also Monty & Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000) (“[T]he Panel does not dispute Respondent’s right to establish and maintain a website critical of Complainant . . . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant.”).

 

Furthermore, no available evidence suggests that Respondent is commonly known by the <solomonwardlawfirm.com> and <solomonwardsandiego.com> domain names, either as an individual or as a business.  Respondent’s WHOIS information identifies it as “Shahrokh Saadat-Nejad,” which bears no relationship or resemblance to the <solomonwardlawfirm.com> and <solomonwardsandiego.com> domain names.  Respondent offered no proof and no evidence into the record suggesting that Respondent is known by the disputed domain names or that Respondent acquired rights to or interests in the disputed domain names.  The Panel finds that Respondent failed to establish rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

While Policy ¶¶ 4(b)(i)-(iv) contain specific circumstances that support findings of bad faith registration and use, the Panel is not limited to those circumstances.  The Panel looks to circumstances in their entirety and may find other evidence of bad faith registration and use.  See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith.”).

 

Respondent’s registration and use of domain names that fully incorporate Complainant’s mark in connection with websites that strongly criticize Complainant is evidence of bad faith registration and use.  As the Panel in Diners Club Int’l, Ltd.  v. Infotechnics Ltd., FA 169085 (Nat. Arb. Forum Aug. 20, 2003), explains, “Respondent may have the right to post criticism of Complainant on the Internet, however, Respondent does not have the right to completely appropriate Complainant’s registered trademark in a domain name in a way that will mislead Internet users as to the source or affiliation of the attached website.”  See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (finding that the respondent registered the domain names <kwasizabantu.com>, <kwasizabantu.org>, and <kwasizabantu.net> in bad faith where the respondent published negative comments regarding the complainant’s organization on the confusingly similar website); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <solomonwardlawfirm.com> and <solomonwardsandiego.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated:  April 27, 2007

 

 

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