Law Office of Graham C. Fisher, LLC v. Jack Toering / FindLocal, Inc
Claim Number: FA2212002023163
Complainant is Law Office of Graham C. Fisher, LLC (“Complainant”), represented by Nathaniel Housel of Snell & Wilmer, USA. Respondent is Jack Toering / FindLocal, Inc (“Respondent”), represented by Richard Ferry, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <grahamcfisher.com>, registered with eNom, LLC.
The undersigned certifies that he or she 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on December 7, 2022; Forum received payment on December 7, 2022.
On December 7, 2022, eNom, LLC confirmed by e-mail to Forum that the <grahamcfisher.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC 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 December 12, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2023 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@grahamcfisher.com. Also on December 12, 2022, 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.
Respondent sent an email to Forum on December 12, 2022, see below.
A timely Response was received and determined to be complete on December 30, 2022.
On January 4, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is a well-known legal services company that has been using the mark GRAHAM C FISHER in connection with its services since at least as early as 2007. Complainant has maintained a website that uses the GRAHAM C FISHER mark prominently at <grahamfisherlaw.com> since at least 2010. Complainant has common law trademark rights in the GRAHAM C FISHER mark as a result of substantial advertising recognition in the media and the legal profession.
Complainant alleges that the disputed domain name is identical or confusingly similar to its GRAHAM C FISHER mark as it fully incorporates the mark.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use its GRAHAM C FISHER mark. Respondent is a former client of Complainant and the resolving website is a criticism site about the handling of Respondent’s case. Respondent is not using the disputed domain name for a legitimate noncommercial or fair use because it attempts to impersonate Complainant and cause consumers to believe there is a connection between the domain name and Complainant.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith by appropriating Complainant’s mark in its entirety. Respondent intended to disrupt Complainant’s business by causing initial interest confusion. Respondent also had actual and/or constructive knowledge of Complainant’s rights in the GRAHAM C FISHER mark.
B. Respondent
Respondent’s representative states that he is a previous client of Complainant, specifically employee-attorney Graham C. Fisher.
Respondent alleges that Complainant does not have trademark or common law rights in the GRAHAM C FISHER mark since Complainant has neither registered the mark nor is a famous or unique individual. Complainant cannot claim proprietary rights or interest in the GRAHAM C FISHER mark or domain name as Complainant’s legal name is not GRAHAM C FISHER.
According to Respondent, Complainant is not using its <grahamfisherlaw.com> domain name in connection with a legitimate and active use because it redirects to <portland-criminaldefense.com>.
Further, says Respondent, he has not registered or used the disputed domain name in bad faith, because he has not offered the name for sale or engaged in a pattern of bad faith use and registration. Respondent is not a competitor of Complainant and so is not using the disputed domain name for commercial gain. The disputed domain name is actively used to host a criticism of Complainant. Such use is protected by the First Amendment of the US Constitution and by the Oregon Constitution.
Finally, says Respondent, Complainant’s claim against Respondent is barred by the doctrine of laches.
C. Additional Submissions
In its email to Forum, Respondent states, in pertinent part: “I clearly do not have an abundance of funds to litigate with. It isn’t a good time or the season. Can you kindly direct me to cheap or free representation pertaining to: [the instant case].”
Respondent appears to request legal aid. As there are no provisions for legal aid in the Policy, the Panel is not able to address this issue.
Respondent invokes the doctrine of laches. For the reasons given below, the Panel does not need to rule on this matter. However, the Panel notes, obiter dictum, that the doctrine of laches has rarely been applied in UDRP proceedings and that, in the instant case, there is no significant delay between the registration of the disputed domain name and the filing of the Complaint, so it seems highly unlikely that the doctrine of laches could successfully be applied to the instant case.
Respondent is a former client of Complainant. The resolving website contains clear and explicit criticism of the legal services that Complainant provided to Respondent.
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.
The Policy only applies if Complainant has trademark rights. Here, Complainant does not claim that it has a registered trademark. However, Complainant claims common law trademark rights in the GRAHAM C FISHER mark, the personal name the name of an attorney with Law Office of Graham C. Fisher, LLC. Common law rights in a mark requires a showing of secondary meaning, such as fame, evidence of a large Internet presence, or extensive spending on advertising and promotion. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). A complainant may also demonstrate common law rights in a personal name. See John G. Balestriere v. Simon Mills / Emancipation Media, FA 1618353 (Forum June 11, 2015) (finding Complainant’s JOHN G. BALESTRIERE mark is Complainant’s personal name, and Complainant showed secondary meaning by demonstrating that the mark has been used as a marketable commodity, or for direct commercial purposes in marketing goods and services by providing evidence of use in the legal services business and attorney advertising dating back to Jan. 1, 2005.). Complainant makes several arguments to support claimed common law rights and secondary meaning of the GRAHAM C FISHER mark.
Since the Complaint will be dismissed for the reasons given below, the Panel does not need to make a finding regarding whether or not Complainant has common law trademark rights. See Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary).
Complainant admits that Respondent uses the website at the disputed domain name as a criticism site, but cites UDRP precedents to the effect that this does not create rights or legitimate interests under the Policy. In particular, Complainant alleges that, as the disputed domain name is identical to Complainant’s mark (as opposed to being of the form “[mark]SUCKS”) and there is no suggestion that the disputed domain name is not affiliated with the Complainant, consumers will have initial interest confusion in the disputed domain name.
Complainant cites selectively from the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”). The relevant parts of 2.6 of the cited Overview state (emphases added):
As noted above, UDRP jurisprudence recognizes that the use of a domain name for fair use such as noncommercial free speech, would in principle support a respondent’s claim to a legitimate interest under the Policy.
2.6.1 To support fair use under UDRP paragraph 4(c)(iii), the respondent’s criticism must be genuine and noncommercial; in a number of UDRP decisions where a respondent argues that its domain name is being used for free speech purposes the panel has found this to be primarily a pretext for cybersquatting, commercial activity, or tarnishment.
2.6.2 Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e., <trademark.tld> (including typos)); even where such a domain name is used in relation to genuine noncommercial free speech, panels tend to find that this creates an impermissible risk of user confusion through impersonation. In certain cases involving parties exclusively from the United States, some panels applying US First Amendment principles have found that even a domain name identical to a trademark used for a bona fide noncommercial criticism site may support a legitimate interest.
The question of whether or not criticism sites violate the Policy is a controversial issue, with Panels taking opposite views on the matter. As stated in National Alliance for the Mentally Ill Contra Costa v. Mary Rae Fouts, FA0310000204074 (Forum, Nov. 28, 2003):
Decisions transferring the domain names of criticism sites include Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, <cogema.org> D2001-0376 (WIPO May 14, 2001) (Respondent’s showing that it “has a right to free speech and a legitimate interest in criticizing the activities of organizations like the Complainant ... is a very different thing from having a right or legitimate interest in respect of [a domain name that is identical to Complainant’s mark]”, especially given that the mark was famous); and Monty & Pat Roberts, Inc. v. Keith, <montyroberts.net> D2000-0299 (WIPO June 9, 2000) (“[T]he Panel does not dispute Respondent’s right to establish and maintain a website critical of (the Complainant) . . . . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant”, especially given that the mark was famous); and Compagnie de Saint Gobain v. Com-Union Corp., <saint-gobain.net> D2000-0020 (WIPO Mar. 14, 2000) (finding bad faith where Respondent knowingly chose a domain name, identical to Complainant’s mark, to voice its concerns, opinions, and criticism about Complainant).
Decisions denying the transfer of the domain names of criticism sites include Bridgestone Firestone, Inc. v. Myers, <bridgestone-firestone.net> D2000-0190 (WIPO July 6, 2000) (finding that Respondent has free speech rights in the domain name <bridgestone-firestone.net> where Respondent linked the domain name to a “complaint” website about Complainant’s products and stating that as a general proposition: “the same facts establishing fair use and the exercise of free speech negate a finding of bad faith intent” (citing Lucent Techs., Inc. v. Lucentsucks.com, 95 F. Supp. 2d 528, 535-536 (E.D. Va. 2000)); Legal & Gen. Group Plc v. Image Plus, D2002-1019 <legal-and-general.com> (WIPO Dec. 30, 2002) (finding that initial interest confusion is displaced by the criticism content at Respondent's website, that such a "low level of confusion is a price worth paying to preserve the free exchange of ideas via the Internet, and that “the goals of the Policy are limited and do not extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain”); and Britannia Building Society v. Britannia Fraud Prevention, <britanniabuildingsociety.org> D2001-0504 (WIPO July 6, 2001).
This Panel takes the view that the goals of the Policy are limited. Domain name registrations are basically first-come-first-served, and the purpose of the Policy is limited to rectifying cases of obvious cyber-squatting.
The closest equivalent to a legislative history for the Policy can be found in the 30 April 1999 Final Report of the WIPO Internet Domain Name Process, which formed the basis for the ICANN Policy (available online at: http://wipo2.wipo.int/process1/report/doc/report.doc ). This report states at paragraph 135:
In view of the weight of opinion against mandatory submission to an administrative procedure in respect of any intellectual property dispute arising out of a domain name registration, the final recommendations of the WIPO Process contain two major changes in respect of the suggested administrative dispute‑resolution procedure:
(i) First, the scope of the procedure is limited so that it is available only in respect of deliberate, bad faith, abusive, domain name registrations or “cybersquatting” and is not applicable to disputes between parties with competing rights acting in good faith.
(ii) Secondly, the notion of an abusive domain name registration is defined solely by reference to violations of trademark rights and not by reference to violations of other intellectual property rights, such as personality rights.
And the WIPO Report states at 153:
… The scope of the procedure would be limited to cases of abusive registrations (or cybersquatting), as defined below, and would not be available for disputes between parties with competing rights acting in good faith.
And at 166:
The first limitation would confine the availability of the procedure to cases of deliberate, bad faith abusive registrations.
And at 172:
… Domain name registrations that are justified by legitimate free speech rights or by legitimate non‑commercial considerations would likewise not be considered to be abusive.
The instant Panel reaffirms that it agrees with the case law cited by the panel in Bridgestone Firestone, Inc. v. Myers, D2000-0190 (WIPO July 6, 2000), the portions relevant for the instant case being (emphases added):
The Panel is aware of the line of trademark infringement cases holding that <trademarksucks.com> domain names may be protected as free speech because of their "communicative content" while <trademark.com> domain names serve merely as "source identifiers" and are thus unprotected. See, e.g., OBH, Inc. v. Spotlight Magazine, Inc., 86 F.Supp.2d 176 (W.D.N.Y. 2000), cited by Complainants. The Panel declines, however, to adopt that distinction for purposes of analysis of the Policy’s requirements and notes that the Second Circuit Court of Appeals has recently expressly rejected this distinction because "the nature of the domain names is not susceptible to such a uniform, monolithic characterization," in view of the "lightning speed development" and "extraordinary plasticity" of both the Internet and the domain name system. See Name.Space, Inc. v. Network Solutions Inc. 202 F.3d 573, 585 (2d Cir. 2000). With respect to free speech, the Second Circuit held in Name.Space that "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." Id. In Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999), a trademark dilution case, the Ninth Circuit Court of Appeals noted that the use of a <trademark.net> domain name rather than a <trademark.com> domain name raised genuine issues of material fact on virtually every element of the dilution claim, including whether such use constituted "commercial use". 189 F.3d at 879-880. The Court noted that "<.net> applies to networks and <.com> applies to commercial entities," and that "a fact-finder could infer that dilution does not occur with a <trademark.net> registration." Id. at 880-881. Such fact-intensive analyses on issues of trademark infringement and dilution are beyond the scope of this administrative proceeding and are better carried out by arbitrators or courts.
The instant Panel also reaffirms its agreement with Britannia Building Society v. Britannia Fraud Prevention, <britanniabuildingsociety.org> D2001-0504 (WIPO July 6, 2001) (emphases added):
Complainant has failed to prove that Respondent lacks a legitimate interest in the Domain Name. In particular, it has failed to prove that Respondent is not entitled to the protections of paragraph 4(c)(iii) of the Policy, which provides that a Respondent has a legitimate interest if it is
"making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
The Panel concludes that Respondent is making a legitimate noncommercial use of the domain name because Respondent maintains its website as a site critical of the policies of the management of Britannia Building Society. See Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, Case No. D2000-0190 (WIPO July 6, 2000); Compusa Management Co. v. Customized Computer Training, Case No. FA0006000095082 (Forum Aug. 17, 2000). Although Complainant does allege that Respondent has registered and used the Domain Name misleadingly to divert customers to its highly critical site, with the probable intent of tarnishing the mark at issue, such allegations fail to undermine the legitimacy of Respondent’s use.
The Respondent’s actions cannot be characterized as consistent with an "intent for commercial gain to misleadingly divert consumers." That phrase refers to the kind of confusion that arises in a trademark infringement context, when a competitor diverts consumers to its site and, potentially, diverts sales. See Universal City Studios, Inc. v. G.A.B. Enterprises, Case No. D2000-0416 (WIPO June 29, 2000); Houghton Mifflin Company v. The Weathermen, Inc., Case No. D2001-0211 (WIPO Apr. 17, 2001). Here, there is no diversion "for commercial gain" and thus no loss of legitimacy. That some internet users might initially be confused into thinking that, because of the use of the mark in the Domain Name, <britanniabuildingsociety.org> is Complainant’s official web site is of no moment. First, any such confusion would immediately be dispelled by Respondent’s prominent disclaimer and the link that is displayed to Complainant’s official site. Second, and in any event, such a low level of confusion is a price worth paying to preserve the free exchange of ideas via the internet. A user who misleadingly stumbles upon Respondent’s site while looking for Complainant’s official site need only click the "back" button to return to her search, or the link helpfully provided by Respondent.
The recent case Everytown for Gun Safety Action Fund, Inc. v. Contact Privacy Inc. Customer 1249561463 / Steve Coffman, D2022-0473 (WIPO, Apr. 4, 2022) states in pertinent part:
While the Panel supports an approach as expressed through an “impersonation test” as set forth in Dover Downs, the Panel nevertheless has reservations about adopting a blanket use of an “impersonation test.” Such an approach if applied too broadly or without looking at other case factors, could in the Panel’s view, create an undue burden on respondents in cases involving parties based only in the United States where a domain name identical to a trademark is being used for a bona fide noncommercial criticism site that would be protected under the First Amendment as applied by some United States federal court decisions. See, e.g., Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005).
…
With the foregoing in mind, the Panel has considered Respondent’s defense of free expression and found it wanting. Here, the web page to which the disputed domain name redirects does not contain any criticism or commentary regarding Complainant or its MOMS DEMAND ACTION advocacy. …
In the instant case—contrary to Everytown —the resolving website displays criticism of Complainant. While the disputed domain name is identical to what Complainant alleges is a common law trademark, Complainant has not presented any evidence to show that users were indeed misled or confused. Contrary to what Complainant alleges, there is no risk of actual confusion, because the content of the resolving website (copies of which were annexed to the Complaint) unmistakably consists of criticism of Complainant. No user would be confused into thinking that the resolving website is affiliated with Complainant. Nor has Complainant presented convincing evidence that Respondent acted with an intent to mislead or to confuse. Further, both parties are from the United States.
On the basis of the evidence before it, the Panel finds that Respondent is using the disputed domain name for criticism, and thus—for all the above reasons and in line with previous UDRP decisions—the Panel finds Respondent has rights and legitimate interests in the disputed domain name under the Policy.
This finding is of course without prejudice to what a national court might find on the basis of national law.
Since the Complaint will be dismissed for the reasons given above, the Panel does not need to analyze this element of the Policy. See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <grahamcfisher.com> domain name REMAIN WITH Respondent.
Richard Hill, Panelist
Dated: January 5, 2023
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