Brinks Gilson & Lione v. PRIVATE REGISTRANT / A HAPPY DREAMHOST CUSTOMER
Claim Number: FA1405001557116
Complainant is Brinks Gilson & Lione (“Complainant”), represented by David S. Fleming of Brinks Gilson & Lione, Illinois, USA. Respondent is PRIVATE REGISTRANT / A HAPPY DREAMHOST CUSTOMER (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <brinksgilsonlione.com> and <brinksgilsonlione.net>, registered with New Dream Network, LLC dba DreamHost Web Hosting.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2014; the National Arbitration Forum received payment on May 1, 2014.
On May 8, 2014, New Dream Network, LLC dba DreamHost Web Hosting confirmed by e-mail to the National Arbitration Forum that the <brinksgilsonlione.com> and <brinksgilsonlione.net> domain names are registered with New Dream Network, LLC dba DreamHost Web Hosting and that Respondent is the current registrant of the names. New Dream Network, LLC dba DreamHost Web Hosting has verified that Respondent is bound by the New Dream Network, LLC dba DreamHost Web Hosting registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 29, 2014 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 postmaster@brinksgilsonlione.com, postmaster@brinksgilsonlione.net. Also on May 9, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Complainant elected to submit an Additional Submission which was received and found to be complaint June 3, 2014.
Complainant timely filed an Additional Submission which was reviewed and considered by the Panel.
On June 4, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <brinksgilsonlione.com> and <brinksgilsonlione.net> domain names, the domain names at issue, are confusingly similar to Complainant’s BRINKS GILSON & LIONE mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
Complainant filed an Additional Submission evidencing the fact that Respondent offered to sell Complainant the domain names at issue for $20,000 and subsequently $1,000 following service of the Amended Complaint in this case. These acts are further evidence of Respondent’s bad faith, claims Complainant.
Complainant has provided legal services for nearly 100 years, specializing in the field of intellectual property law and has over 160 attorneys, making it one of the largest intellectual property firms in the United States. Henry L. Brinks, Jerome Gilson, and Richard G. Lione are the current named shareholders of Complainant, and each has been with the firm for at least fifty years. Each shareholder has also been consistently rated as one of the top attorneys in the United States. Complainant adopted its current name, BRINKS GILSON & LIONE on October 9, 2013. Prior to that, the firm was known as BRINKS HOFER GILSON & LIONE for nearly fifteen years. Complainant maintains its current domain name at <brinksgilson.com>, along with several other domain names that resolve to the firm’s website. Complainant has rights in the BRINKS HOFER GILSON & LIONE mark via a trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,162,189 registered June 2, 1998) and has also applied for trademarks for its current BRINKS GILSON & LIONE mark with the USPTO (App. Nos. 86/086,818 and 86/086,837), which were applications were published for opposition on March 25, 2014.
Respondent’s <brinksgilsonlione.com> and<brinksgilsonlione.net> domain names are confusingly similar to the BRINKS GILSON & LIONE mark. The disputed domain names both incorporate Complainant’s mark in its entirety while only removing the ampersand and adding the generic top-level domains (“gTLDs”) “.com.” and “.net.” Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its BRINKS GILSON & LIONE mark in any way. The WHOIS information for the disputed domain name lists “Private Registrant” as the domain name registrant.
The resolving website features three monkeys named “Brings ‘Big-Nose Avocat,” “Gilson ‘Droopy-Mouth’ Avocat,” and “Lione ‘Stinky-Face’ Avocat.” The content is disparaging and uses tarnishing language about Complainant and the named shareholders.
Respondent has made the <brinksgilsonlione.com> and<brinksgilsonlione.net> domain names available for sale by including text at the bottom explaining that the disputed domain names are available for auction via GoDaddy. Each domain name is listed on sale through GoDaddy for $20,000.
Respondent registered and is using the <brinksgilsonlione.com> and<brinksgilsonlione.net> domain names in bad faith. Offering to sell the disputed domain names is evidence of Respondent’s bad faith. The disputed domain names have been made available for sale through GoDaddy Auctions at the starting price of $20,000 each. Respondent had knowledge of Complainant’s BRINGS GILSON & LIONE mark prior to registering the <brinksgilsonlione.com> and<brinksgilsonlione.net> domain names, because a similar variation of the mark had been in use for over 10 years prior to Respondent’ registrations and the metadata for the disputed domain name refers to intellectual property, Ann Arbor, and Chicago, all of which are associated with Complainant.
After serving the original Complainant, a man named Brady Mills wrote to Complainant stating that “[t]he website domain is used to tell the story of three fictional characters,” and Mr. Mills offered to sell both domains to Complainant for $20,000. Complainant believes Mr. Mills is the respondent in this case. A day after the initial correspondence from Mr. Mills, Complainant received an email from a different email address, which offered to sell the disputed domain names for $1,000. Respondent appears to be an individual involved in prior litigation involving one of Complainant’s clients. It appears the domain name registrations may be some form of retaliation.
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 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.
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.”).
Complainant has rights in the BRINKS HOFER GILSON & LIONE mark via a trademark registration with the USPTO (Reg. No. 2,162,189 registered June 2, 1998). The Panel notes that Respondent operates within the United States. Therefore, the Panel finds that Complainant has rights in the BRINKS HOFER GILSON & LIONE mark pursuant to Policy ¶ 4(a)(i) because Complainant holds a valid registration for the mark. Complainant has also applied for trademarks for its current BRINKS GILSON & LIONE mark with the USPTO ( (App. Nos. 86/086,818 and 86/086,837), which were published for opposition on March 25, 2014. However, past panels have determined that trademark applications do not confer rights for that mark pursuant to Policy ¶ 4(a)(i). See Wave Indus., Inc. v. Angler Supply, FA 304784 (Nat. Arb. Forum Sept. 20, 2004) (finding that the complainant’s pending trademark applications did not establish rights because “an application for [a] mark is not per se sufficient to establish rights [in] a trademark for the purposes of the [Policy]”). Therefore, the Panel will look at whether Complainant has obtained common law rights in the BRINKS GILSON & LIONE mark that would satisfy Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Common law rights require that Complainant’s mark has established a secondary meaning. See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning). In regards to personal names, such as those used in the name of a law firm, panels may look to whether the long-term meaning which has attached to the personal names has obtained a secondary meaning sufficient to use the names as a marketable commodity to promote its own goods and services or the goods and services of another entity. See Asper v. Comm. X Inc., D2001-0540 (WIPO June 11, 2001) (surveying UDRP disputes concerning the use of personal names, the panel found that “where the complainant was successful he or she either used the personal name in question as a marketable commodity, allowing his or her name or image to be used for a fee, to promote someone else’s goods or services, or for direct commercial purposes in the marketing of his or her own goods and services); McCarthy on Trademarks and Unfair Competition, § 13:2 (4th ed. 2002) (“Secondary meaning grows out of long association of the name with the business, and thereby becomes the name of the business as such; is acquired when the name and the business become synonymous in the public mind; and submerges the primary meaning of the name as a word identifying a person, in favor of its meaning as a word identifying that business.”). Here, Complainant has provided legal services for nearly 100 years, specializing in the field of intellectual property law and has over 160 attorneys, making it one of the largest intellectual property firms in the United States. Complainant notes that Henry L. Brinks, Jerome Gilson, and Richard G. Lione are the current named shareholders of Complainant, and each has been with the firm for at least fifty years. Further, each shareholder has also been consistently rated as one of the top attorneys in the United States. Therefore, the evidence provided by Complainant is sufficient to show that the BRINKS GILSON & LIONE mark has acquired a secondary meaning, and the Panel finds that Complainant has common law rights in the mark pursuant to Police ¶ 4(a)(i).
Respondent’s <brinksgilsonlione.com> and<brinksgilsonlione.net> domain names are confusingly similar to the BRINKS GILSON & LIONE mark. The disputed domain names both incorporate Complainant’s mark in its entirety while only removing the ampersand and adding the generic top-level domains (“gTLDs”) “.com.” and “.net.” Removing an ampersand from a trademark used in a disputed domain name does not negate a finding of confusing similarity. See McKinsey Holdings, Inc. v. Indidom, D2000-1616 (WIPO Jan. 31, 2001) (finding that the removal of the ampersand from “McKinsey & Company” does not affect the user’s understanding of the domain name, and therefore the domain name <mckinseycompany.com> is identical and/or confusingly similar to the mark “McKinsey & Company”). Next, the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <brinksgilsonlione.com> and<brinksgilsonlione.net> domain names are confusingly similar to the BRINKS GILSON & LIONE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its BRINKS GILSON & LIONE mark in any way. The WHOIS information for the disputed domain name lists “Private Registrant” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the BRINKS GILSON & LIONE mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <brinksgilsonlione.com> and<brinksgilsonlione.net> domain names under Policy ¶ 4(c)(ii).
The resolving website connected to the <brinksgilsonlione.com> and<brinksgilsonlione.net> domain names features three monkeys named “Brings ‘Big-Nose Avocat,” “Gilson ‘Droopy-Mouth’ Avocat,” and “Lione ‘Stinky-Face’ Avocat.” The content is disparaging and uses tarnishing language about Complainant and the named shareholders. Past panels have found that, even after taking free speech into consideration, a respondent does not the right to use a confusingly similar domain name that essentially identifies the respondent as the complainant. See 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.”); see also Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“the domain name <eastman-chemical.com> is not protected by free speech although the content of the website supported by this domain name is protected. Free speech cannot be used as a defence against the use of a confusingly similar mark as a domain name.”). Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the <brinksgilsonlione.com> and<brinksgilsonlione.net> domain names under Policy ¶ 4(a)(ii) because Respondent is using confusingly similar domain names to operate a website critical of Complainant while also appearing to be affiliated with Complainant.
Respondent has made the <brinksgilsonlione.com> and<brinksgilsonlione.net> domain names available for sale by including text at the bottom explaining that the disputed domain names are available for auction via GoDaddy. Complainant notes that each domain name is listed on sale through GoDaddy for $20,000. In its Additional Submission, Complainant notes that Respondent appears to be an individual involved in past litigation with one of Complainant’s clients. Past panels have found that offers to sell a disputed domain name for an amount above the out-of-pocket costs incurred by respondent indicates a lack of rights and legitimate interests on the part of the respondent. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”). Therefore, the Panel finds that Respondent does not have any rights or legitimate interests in the <brinksgilsonlione.com> and<brinksgilsonlione.net> domain names pursuant to Policy ¶ 4(a)(ii) because Respondent has made both disputed domain names available at auction on GoDaddy for a starting price of $20,000 each.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Offering to sell the disputed domain names is evidence of Respondent’s bad faith. The disputed domain names have been made available for sale through GoDaddy Auctions at the starting price of $20,000 each. Past panels have found that making specific offers to sell a disputed domain name for a price above the out-of-pocket costs incurred by the respondent demonstrates bad faith pursuant to Policy ¶ 4(b)(i). See Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Therefore, the Panel finds that Respondent registered and is using the <brinksgilsonlione.com> and<brinksgilsonlione.net> domain names in bad faith under Policy ¶ 4(b)(i) because Respondent posted both of the disputed domain names on GoDaddy Auction at a starting bid of $20,000 each.
Respondent had knowledge of Complainant’s BRINGS GILSON & LIONE mark prior to registering the <brinksgilsonlione.com> and<brinksgilsonlione.net> domain names because a similar variation of the mark had been in use for over 10 years prior to Respondent’ registrations and the metadata for the disputed domain name refers to intellectual property, Ann Arbor, and Chicago, all of which are associated with Complainant. Respondent is evidently “Mr. Brady Mills,” a man who received a letter from Complainant concerning trademark infringement with respect to one of Complainant’s clients. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, this Panel finds that Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name and concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <brinksgilsonlione.com> and <brinksgilsonlione.net> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: June 7, 2014
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