MORRISON & FOERSTER, LLP

COMPLAINANT

vs.

BRIAN WICK

AND

AMERICAN DISTRIBUTION SYSTEMS, INC. ("ADSI")

individually and collectively d/b/a "NameIsForSale.com"

RESPONDENT

DECISION
Forum File No.: FA0003000094301

The above-entitled matter came on for an administrative hearing on April 17, 2000, before Paul A. Dorf, Arbitrator, on the Complaint of Morrison & Foerster, LLP, by Roxanne Jensen, Tarek Saad and Will Wade-Gery, their attorneys, hereafter "Complainant" against Brian Wick and American Distribution Systems, Inc. hereafter "Respondent." There was no representation on behalf of Respondent. Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Names: morrisonfoerster.com;morrisonforester.com; morrisonandfoester.com; and morrisonandforester.com

Domain Name Registrar: Register.com, Inc. c/o Transfers & Changes

Response Due Date: April 6, 2000

The Complainant filed its complaint with the National Arbitration Forum on March 9, 2000. In compliance with the rules, The Forum transferred the Complaint to the Respondent on March 14, 2000. The Respondent did not submit a response to The Forum within twenty (20) days, which would have been April 6, 2000.

The Respondent registered the domain name with Register.com c/o Transfers & Changes, the entity that is the Registrar of the domain name. By registering its domain name Register.com c/o Transfers & Change the Respondent agreed to resolve any dispute regarding its domain name through ICANN'S Uniform Domain Name Dispute Resolution Policy.

 

FINDINGS OF FACTS

The manner in which the domain name(s) are identical or confusing are set out herein below:

Morrison & Foerster has been offering and providing legal services exclusively under the trademark MORRISON & FOERSTER® since 1975. The firm has used the name "Morrison" in its firm name throughout its history, and has used the name "Foerster" since 1946. From 1946 through 1955 the firm did business as Morrison, Foerster, Holloway, Shuman & Clark, and from 1955 through 1975 it did business as Morrison, Foerster, Holloway, Clinton & Clark.

Morrison & Foerster owns United States Trademark Registration No. 1,665,352 for the service mark MORRISON & FOERSTER® for legal services. This registration issued on November 19, 1991, from an application filed on November 26, 1990. That application records a first use date for the service mark MORRISON & FOERSTER® of 1975. Morrison & Foerster's service mark is incontestable because it has been in continuous use for five consecutive years following federal registration on November 19, 1991, and it is still in commercial use.

Morrison & Foerster also owns United States Trademark Registration No. 2,020,689 for the mark MOFO®. The registration issued on December 3, 1996, from an application filed on November 21, 1995. Morrison & Foerster is widely known in the legal and commercial community both as "Morrison & Foerster" and as "Mofo.."

Morrison & Foerster has expended, and continues to expend, a substantial amount of money and time promoting and marketing its services.

Respondents, using the names NameIsForSale.com and Morri, Son & Foerster, registered the domain names morrisonfoerster.com, morrisonandfoerster.com, morrisonforester.com and morrisonandforester.com through the on-line registrar, Register.com. These domain names are identical or confusingly similar to Morrison & Foerster's service mark, MORRISON & FOERSTER®. The similarities of sight, sound and meaning between Respondents' domain names and Morrison & Foerster's service mark are overwhelming.

Respondents have no trademark or other intellectual property rights in the domain names morrisonfoerster.com, morrisonandfoerster.com, morrisonforester.com and morrisonandforester.com. Respondents have not used the domain names in connection with the bona fide offering of any goods or services or with a legitimate noncommercial or fair use. Respondents are using the domain names with the intent to misleadingly divert consumers to Respondents' websites for commercial gain and to tarnish Morrison & Foerster's service mark by defaming and disparaging Morrison & Foerster's goodwill and reputation.

None of the domain names consists of Respondents' legal names or a name that is otherwise commonly used to identify Respondents. Respondents registered the domain names in October, 1999.

On October 27, 1999, Morrison & Foerster registered the domain names morrisonfoerster.org, morrisonfoerster.net, morrisonandfoerster.net, and morrisonandfoerster.org. At that same time, Morrison & Foerster tried to register the domain names morrisonfoerster.com and morrisonandfoerster.com. Morrison & Foerster intended to use these domain names to protect the goodwill of its service mark, and, ultimately, to establish websites that would be linked to the firm's existing website at www.mofo.com. However, Morrison & Foerster was unable to register the domain names morrisonfoerster.com and morrisonandfoerster.com because these names were registered three days earlier by "NameIsForSale.com." According to Register.com records, the administrative contact for morrisonfoerster.com and morrisonandfoerster.com at that time was "Brian Wick, bgw@earthnet.net." Respondents also registered two more domain names using a common misspelling of Morrison & Foerster — morrisonforester.com and morrisonandforester.com. The administrative contact for these domain names also is "bgw@earthnet.net."

On January 3, 2000, ADSI amended its corporate filings with the Colorado Secretary of State to include "Morri, Son & Foerster business, Inc." as an assumed name, but that was several months after Respondents first acquired and used the domain names. Furthermore, Respondents' registration of "Morri, Son & Foerster business, Inc." cannot confer any intellectual property or other rights because it violates a Colorado state law requirement that no trade name submitted to the Secretary of State for filing shall be the same as or similar to the name of any entity previously on file.

Respondents' bad faith cyberpiracy is evident from the manner and use of these registrations and of other protected names. Respondents' purpose in acquiring the domain names and establishing the associated websites is four-fold:

(1) to sell, rent or otherwise transfer the domain name registrations to the owner of the service mark that protects the domain names, Morrison & Foerster, or to a competitor of Morrison & Foerster's, for valuable consideration in excess of Respondents' out-of-pocket costs related to the domain name;

(2) to prevent Morrison & Foerster from reflecting its service mark as a domain name;

(3) to disrupt Morrison & Foerster's business; and

(4) to intentionally attempt to attract, for commercial gain, Internet users to Respondents' websites by creating a likelihood of confusion with Morrison & Foerster's service mark as to the source, sponsorship, affiliation or endorsement of Respondents' websites, and of any products or services on Respondents' websites

Registration records indicate that shortly before registering the four domain names, Respondents registered "nameisforsale.com" as a domain name. According to Register.com's records, nameisforsale.com is registered by NameIsForSale.com, an entity that lists the same post office box address as Respondent Wick and as Respondent ADSI, a Colorado corporation of which Wick is President, Secretary, registered agent, sole Director and sole shareholder. NamelsForSale.com also lists the same phone number as Respondent ADSI. Records show that the administrative contact for (and hence the owner of) the nameisforsale.com domain name is "Brian Wick" at "bgw@earthnet.net." This is the same domain name administrative contact as that for the four domain names at issue. The website at www.nameisforsale.com states: "Name the property, product or service you want to ... buy or rent" and provides Respondent Wick's e-mail address as the contact for any responses. Respondents, using NamelsForSale.com, also have registered the names of other high-profile law firms, including mckennaandcuneo.com and hollandandhart.com.

As seen from Respondents' registration of domain names with a common misspelling of Morrison & Foerster and domain names with variations on the names of other well-known law firms, Respondents are aware of the likelihood that current and potential clients using the Internet to locate information about Morrison & Foerster may very well find Respondents' websites instead of Morrison & Foerster's.

.

Finally, Respondents intentionally have failed to maintain accurate contact information, or have provided material and misleading false contact information, for the domain name registration records for morrisonfoerster.com, morrisonandfoerster.com, morrisonforester.corn and morrisonandforester.com. For example, just three days after Respondents acquired the first two domain names, the registrant was listed as "NameIsForSale.com," and the administrative contact as "Brian Wick, bgw@eardmet.net." Now these two domain names are registered to ADSI, in care of the so-called entity "Morri, Son & Foerster."

The administrative contact on these registrations has been changed from "Brian Wick, bgw@earthnet.net" to simply "bgw@earthnet.net." Respondent Wick has deliberately withdrawn his own and the revealing NameIsForSale.com name from these two registrations, and replaced them with ADSI and an agent entity that does not exist.

CONCLUSIONS

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected and being impartial, the undersigned makes the following findings and conclusions:

The undersigned has reviewed all the evidence presented in this case by both parties and has concluded to believe the facts and circumstances as set forth by the Complainant. For that reason, the undersigned decides that:

1. The domain names as registered by the Respondent are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
2. the Respondent has no rights or legitimate interests in respect of the domain names; and
3. the Respondent domain names have been registered and are being used in bad faith.

It is therefore just, right and proper that the domain names "morrisonfoerster.com; morrisonforester.com; morrisonandfoester.com; and morrisonandforester.com" be transferred to the Complainant

 

DECISION

Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAMES "MORRISONFOERSTER.COM; MORRISONFORESTER.COM; MORRISONANDFOESTER.COM; AND MORRISONANDFORESTER.COM" REGISTERED BY RESPONDENT, BRIAN WICK AND AMERICAN DISTRIBUTION SYSTEMS, INC. ("ADSI") INDIVIDUALLY AND COLLECTIVELY D/B/A/ NAMEISFORSALE.COM, BE TRANSFERRED TO COMPLAINANT, MORRISON & FOERSTER, LLP.

Dated: April 17, 2000, by Judge Paul A. Dorf, (ret.), Arbitrator

 

THE HONORABLE PAUL A. DORF, (ret.) Arbitrator