Jenner & Block LLC v. Defaultdata.com
Claim Number: FA0207000117310
PARTIES
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.
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. 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.
PROCEDURAL HISTORY
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 postmaster@jennerblock.com and postmaster@jennerandblock.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.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
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
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.
B.
Respondent
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.
Element
1
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.
FINDINGS
Complainant has established all the
elements of its case entitling it to relief.
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.”
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.
DECISION
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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