Lord, Bissell
& Brook v. DefaultData.com
Claim Number:
FA0105000097334
PARTIES
Complainant is Lord, Bissell & Brook, Chicago, IL, USA (“Complainant”)
represented by Robert A. Badgley. Respondent is DefaultData.com, Denver, CO, USA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <lordbissellbrook.com> registered with Register.com.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
PROCEDURAL
HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (“the Forum”) electronically on May 30, 2001; the
Forum received a hard copy of the Complaint on May 31, 2001.
On June 6, 2001, Register.com confirmed by
e-mail to the Forum that the domain name <lordbissellbrook.com>
is registered with Register.com and that Respondent is the current registrant
of the name. Register.com has verified
that Respondent is bound by the Register.com 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 June 6, 2001, a Notification of Complaint and
Commencement of Administrative Proceeding (the “Commencement Notification”),
setting a deadline of June 26, 2001 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@lordbissellbrook.com by
e-mail.
A timely response was received and determined to
be complete on June 26, 2001.
On July 3, 2001, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed Honorable Paul A. Dorf (Ret.) as Panelist.
RELIEF
SOUGHT
Complainant requests that the domain name be
transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
The Complainant contends that the domain name at
issue is identical or confusingly similar to each of the dominant features of
Complainant’s mark; that the Respondent has no rights or legitimate interests
in the domain name at issue, and is in fact using it to tarnish Complainant’s
reputation; and that the Respondent registered and is using the domain name at
issue in bad faith.
B. Respondent
The Respondent contends that he is making a bona fide use of the domain name at
issue by what he terms as free speech parody; and that he did not register and
is not using the domain name at issue in bad faith.
FINDINGS
The Complainant law firm was founded in 1914 by
Illinois attorney John Solon Lord, and had various names between its inception
and 1954. During that year, the
firm adopted the name Lord, Bissell
& Brook and has used this common law trademark in interstate commerce for
the past 47 years. Complainant’s mark
is used to identify the source of the legal services provided to its clients on
both a national and international level.
The Complainant offers a variety of legal
services in many fields of commercial activity, and represents businesses known
throughout the world. The firm has offices
in Chicago, New York, Los Angeles, Atlanta, Rockford and London, and currently
employs approximately 325 attorneys. At
least five of these attorneys have been admitted to the bar in Colorado, and
the firm represents several Colorado- based clients.
The Respondent states he is engaged in the
business of Internet programming and related activities and now operates this
business under the name American Distribution Systems, Inc. (ASDI), a Colorado
corporation. The Respondent has also
used the name DefaultData.com, the actual named Respondent in this action.
I would like to note that the Respondent
submitted a preamble to his Response entitled Panelist Request, in which he stated he was submitting a Response
for documentation purposes for his HolocaustMuseum.com and
HolocaustMemorial.com web sites and then indicated that should the Complainant
submit additional information, he would be unable to file any further
submissions due to lack of funds to pay the fees.
The Respondent goes into matters which are
outside the scope of this proceeding, i.e., free speech. The Respondent also criticizes the UDRP
process.
The Respondent’s Response is peppered with
references to his interpretation of the Anticybersquatting Consumer Protection
Act.
The Respondent has a pattern of registering
trademarks as domain names. He explains
that he uses his web sites to provide free information on a number of subjects
in the form of parody.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.
Identical and/or Confusingly Similar
The domain name at issue is identical to the
Complainant’s mark. The inappreciable
differences between the mark and the domain name, such as lack of capital
letters, lack of spacing between words, or the omission of other symbols that
cannot be used in domain names. 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”).
By his own admission, the Respondent states that
the domain name at issue corresponds to the Complainant’s mark. The Respondent admits to registering other
identical trademark domains names in the same fashion as the registration of
the Complainant’s trademark, including FLeeBailey.com, DoleFoods.com, and
BurlingtonNorthern.com. Finally, on
this point, the Respondent states that "Lawyers are pretty ‘thrifty’
people and nobody sells lawyers or law firms anything for any money......"
and admits to registering over 100 trademark domains that correspond to the
names of high profile law firms for the purpose of communicating free
information about the legal system in the form of parody.
Rights or Legitimate Interests
The Respondent has not produced any evidence to
convince this Panel that he is using the domain name in connection with a bona fide offering of goods or services
or that the Respondent has acquired any common law trademark rights in the
domain names at issue or any similar marks.
See Clerical Med. Inv. Group Ltd.
v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by the Complainant that the Respondent
has no right or legitimate interest is sufficient to shift the burden of proof
to the Respondent to demonstrate that such a right or legitimate interest does
exist).
The Respondent argues that he has the right to
use the domain name at issue under his First Amendments rights. The Respondent also goes on to explain that
the web site is used as a parody on the legal system. See Robo Enterprises, Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum
Dec. 24, 2000) (holding that in order to qualify as a protected ‘parody’ which
would confer rights or a legitimate interest, the domain name itself must
signify critical purposes, as opposed to imitation of the service mark). The law is clear that a parody “must convey
two simultaneous – and contradictory – messages: that it is the original, but
also that it is not the original and is instead a parody.” Morrison
Foerster LLP v. Wick, 94 F.Supp.2d 1125, 1134 (D. Colo. 2000). When an Internet user looking for the
Complainant on the Internet using a search engine, and comes upon the domain
name "lordbissellbrook.com" which is the same as Complainant’s trade
name and trademark, said user could reasonably assume that the web site would
contain information on the Complainant’s law firm.
Registration and Use in Bad Faith
The Respondent has a history of registering the
actual name or something very close to the actual name, of well known law
firms. The Respondent admits to these
registrations in his Response. As one
of the Respondent’s other web sites is named "nameisforsale.com", one
may reasonably assume that the Respondent has registered the domain names
primarily for the purpose of selling, renting or otherwise transferring the
domain names to the Complainant or to a competitor of the Complainant, for
valuable consideration in excess of Respondents’ out of pocket cost. See
Corinthians Licenciamentos LTDA v. Sallen, D2000-0461 (WIPO July 17, 2000)
(finding bad faith where Respondent’s claimed use for the mark was “most likely
an excuse for camouflaging the purpose of trafficking with the domain name”).
Also, registration of the domain name will
prevent the Complainant from reflecting its trademark in a corresponding domain
name. See Morrison & Hecker L.L.P., v. Defaultdata.com, FA 94386
(Nat. Arb. Forum May 11, 2000) (finding “the fact that Respondent has
registered <morrisonhecker.com> and <morrisonandhecker.com> along
with approximately 75 other law firms and put them to use in a disparaging
manner” shows bad faith).
Even though the Respondent purportedly placed a
disclaimer on the web site, it does not correct the confusion generated by the
domain name at issue. See Ciccone v. Parisi and “Madonna.com”,
D2000-0847 (WIPO Oct. 12, 2000) (finding that “[r]espondent’s use of a
disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or
misunderstood by Internet users.
Second, a disclaimer does nothing to dispel initial interest confusion
that is inevitable from Respondent’s actions.
Such confusion is a basis for finding a violation of Complainant’s
rights”).
DECISION
As all three elements required by the ICANN
Policy Rule 4(a) have been satisfied, it is the decision of this Panelist that
the requested relief be granted. Accordingly, for all of the foregoing
reasons, it is ordered that the domain name "lordbissellbrook.com" be transferred from the Respondent
to the Complainant.
Honorable Paul A. Dorf, (Ret.), Panelist
Dated:
July 17, 2001
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