Pullman & Comley, LLC v. JONATHAN REICH
Claim Number: FA1611001703742
Complainant is Pullman & Comley, LLC (“Complainant”), represented by Timothy G. Ronan of Pullman & Comley, LLC, Connecticut, USA. Respondent is JONATHAN REICH (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pullmanandcomley.com>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 18, 2016; the Forum received payment on November 18, 2016.
On November 22, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <pullmanandcomley.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 November 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 19, 2016 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@pullmanandcomley.com. Also on November 28, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant uses the PULLMAN & COMLEY mark in connection with its legal services business, founded in 1919 by its two founding partners: John S. Pullman and Arthur M. Comley. Complainant has rights in the mark pursuant to its registration with the City of Bridgeport on February 6, 1995 (see Compl., at Attached Ex. B), and more specifically rights that arise under the common law. Respondent’s <pullmanandcomley.com> is identical to the PULLMAN & COMLEY mark.
Respondent has no rights or legitimate interests in <pullmanandcomley.com>. Respondent is not commonly known by <pullmanandcomley.com>. Further, Respondent uses <pullmanandcomley.com> to mislead prospective clients of Complainant to its site which contains defamatory materials regarding Complainant. See Compl., at Attached Ex. E (copy of <pullmanandcomley.com> on November 16, 2016). While this represents a noncommercial site for purported criticism, it cannot be labeled “fair use” because it misleads Internet users by incorporating Complainant’s mark verbatim and without adding terms denoting its purpose.
Respondent registered and used <pullmanandcomley.com> in bad faith. Respondent’s purpose is to disrupt the legitimate business of Complainant. Specifically, Respondent used Twitter handle @PullCom_LLC to suggest to several contacts of Complainant’s firm that they should visit “the new site”—in reference to <pullmanandcomley.com>. Compl., at Attached Ex. F. One such contact was demonstrably confused by this effort, and re-tweeted the link to the infringing website to its followers. Further, <pullmanandcomley.com> is also listed on the first page of Google search results for the search term “Pullman and Comley.” Compl., at Attached Ex. G. Respondent clearly attempted to lure Internet users to its site by impersonating Complainant, and thus did so with actual or constructive knowledge of Complainant and its mark.
B. Respondent
Respondent failed to submit a responsive Response in this proceeding. However, in email correspondence, what seems to be an agent of Respondent sent the following: “In light of Monday's hearing, Jonathan asked me to tell you that in his defense, he is not using the website for commercial purposes. Also, he has a disclaimer at the bottom of the website and he says that it is a free-speech issue.” Correspondence—Respondent (Dec. 16, 2016). As this is not a timely, responsive Response and alludes to an invalid argument before this Panel, the Panel will disregard this communication.
The disputed domain name, <pullmanandcomley.com>, was registered on August 31, 2015.
The Panel finds that the dispute domain name is confusingly similar with the Complainant’s valid and subsisting common law trademark; that the Respondent has no rights or legitimate interests in or to the disputed domain name; and that the Respondent has engaged in bad faith use and registration of the disputed domain name.
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(f), 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 (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.”).
The Panel finds that the disputed domain name is confusingly similar with the Complainant’s common law rights in and to the trademark PULLMAN & COMLEY. Complainant has adequately plead its interests in and to this trademark. Respondent arrives at the disputed domain name by merely eliminating spacing between words of the mark, the addition of the “.com” generic top-level domain (“gTLD”), and the incorporation of “and” in place of the ampersand. These are not alterations that distinguish the disputed domain name from the Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s common law trademark.
Further, the Panel finds that the Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no apparent permission to register the common law trademark as a domain name and is also not apparently commonly known by the disputed domain name. The Complainant has not explicitly argued that Respondent is not commonly known by <pullmanandcomley.com> under Policy ¶ 4(c)(ii). Therefore, the Panel must look to the WHOIS information to determine Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Here, the WHOIS lists “JONATHAN REICH.” Therefore, the Panel concludes that Respondent is not commonly known by <pullmanandcomley.com>.
Complainant argues that Respondent uses <pullmanandcomley.com> to mislead prospective clients of Complainant to its site which contains defamatory materials regarding Complainant. See Compl., at Attached Ex. E (copy of <pullmanandcomley.com> on November 16, 2016). Criticism websites have been considered to fail in establishing rights and legitimate interests. See generally Pepsico, Inc. v. Leeds, FA 117870 (Forum Sept. 27, 2002) (“Domain names . . . per se are neither automatically entitled to nor excluded from the protections of the First Amendment, and the appropriate inquiry is one that fully addresses particular circumstances presented with respect to each domain name.”). See Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark). Complainant argues that Respondent’s site represents a noncommercial site for purported criticism, and it cannot be labeled “fair use” because it misleads Internet users by incorporating Complainant’s mark verbatim and without adding terms denoting its purpose.
As such, the Panel finds that the Respondent has no rights or legitimate interests in or to the disputed domain name.
Complainant argues that Respondent registered and used <pullmanandcomley.com> in bad faith, but does not specifically address Policy ¶ 4(b) elements. Instead, Complainant asserts that Respondent’s purpose is to disrupt the legitimate business of Complainant. Specifically, Respondent used Twitter handle @PullCom_LLC to suggest to several contacts of Complainant’s firm that they should visit “the new site”—in reference to <pullmanandcomley.com>. Compl., at Attached Ex. F. One such contact was demonstrably confused by this effort, according to Complainant, and re-tweeted the link to the infringing website to its followers. Further, Complainant argues that <pullmanandcomley.com> is also listed on the first page of Google search results for the search term “Pullman and Comley.” Compl., at Attached Ex. G. According to Watson Pharm., Inc. v. WhoisGuard, FA 588321 (Forum Dec. 19, 2005), “Even if the goal of providing a free speech forum for criticizing Complainant is commendable, that goal cannot be reached by usurping Complainant’s marks and posing as Complainant.” The Panel, therefore, finds that Respondent has engaged in bad faith by using Complainant’s mark in a domain name which disparages the use of Complainant online in bad faith under Policy ¶ 4(a)(iii).
Complainant also argues that Respondent had prior knowledge of Complainant rights and interests in the common law trademark. For there to be cognizable bad faith, prior knowledge of the Complainant’s rights and interests in and to the trademark at issue must be demonstrated. Although constructive notice may not be appropriate, here, where there is clear evidence of prior actual knowledge of the Complainant’s rights in and to the common law mark, bad faith may be found. Specifically, here, the Respondent adopted the disputed domain name with is very nearly identical to the common law mark of the Complainant. The Respondent adopted <pullmanandcomley.com> while the Complainant had rights and interests in PULLMAN & COMLEY. The Respondent also used a similar twitter handle to pass itself off as Complainant online, and directed Internet users to the gripe site located at <pullmanandcomley.com>. As such, the Panel finds that a totality of the circumstances indicates that Respondent registered and used <pullmanandcomley.com> with actual knowledge of Complainant and therefore has engaged in bad faith pursuant to Policy ¶ 4(a)(iii).
As such, the Panel finds that the Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <pullmanandcomley.com> domain name be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: December 23, 2016
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