Solomon Ward Seidenwurm & Smith, LLP v. Shahrokh Saadat-Nejad
Claim Number: FA0703000944660
Complainant is Solomon Ward Seidenwurm & Smith, LLP (“Complainant”), represented by Edward
J. McIntyre, of Solomon Ward Seidenwurm & Smith, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <solomonwardlawfirm.com> and <solomonwardsandiego.com>, registered with Go Daddy Software, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
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
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
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.
Complainant, Solomon Ward Seidenwurm & Smith, LLP, is a
professional legal partnership registered with the State Bar of
California. Since it began operations in
In March 2007, Complainant was hired by another
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.
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.
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
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
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 “
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
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.
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.
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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