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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Preston Gates & Ellis, LLP v. defaultdata.com and Brian Wick
Case No. D2001-1381
1. The Parties
The Complainant is Preston Gates & Ellis, LLP, a limited liability partnership with place of business in Seattle, Washington, United States of America (USA).
The Respondent is defaultdata.com and Brian Wick, with address in Denver, Colorado, USA.
2. The Domain Names and Registrar
The disputed domain names are <prestongatesellis.com> and <prestongatesandellis.com>.
The registrar of the disputed domain names is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
(a) The Complainant initiated the proceeding by the filing of a complaint via courier mail received by the WIPO Arbitration and Mediation Center ("WIPO") on November 20, 2001, and by e-mail received by WIPO on November 28, 2001. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On November 29, 2001, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc., with the Registrar’s Response received by WIPO on November 30, 2001.
(b) On December 3, 2001, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail.
(c) On December 24, 2001, Respondent’s response was received via e-mail by WIPO, and on January 27, 2002, Respondent’s response was received in hardcopy by WIPO. Respondent also transmitted its response to Complainant.
(d) On January 15, 2002, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On January 16, 2002, the undersigned transmitted via telefax the executed Statement and Declaration to WIPO.
(e) On January 24, 2002, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by February 7, 2001. The Panel received a hard copy of the file in this matter by courier from WIPO.
(f) Following notification from the Panel of circumstances requiring an extension of the date for decision in this matter, WIPO notified the parties that the projected date for a decision would be extended until February 14, 2002.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
Complainant is a law firm of substantial size that was founded in 1883 and has been doing business in Seattle, Washington and elsewhere under the service mark "Preston Gates & Ellis" since 1990 (Complaint, paragraph 12). The "Preston Gates & Ellis" service mark is known among consumers of legal services in the United States, as evidenced by published reports of the firm’s client base (id., paragraph 12 & Annex F). Complainant has spent considerable financial resources in advertising its service mark. Complainant registered the domain name <prestongates.com> in 1995, and maintains an active commercial website at the Internet address identified by that domain name (Id., paragraph 12 & Annex G).
According to the registrar’s (Network Solutions’) verification response to WIPO, dated November 30, 2001, "defaultdata.com" is the listed registrant of the domain names <prestongatesellis.com> and <prestongatesandellis.com>. According to that verification, "defaultdata.com" is also the Administrative Contact for those names. According to a Registrars.com WHOIS database printout submitted by Complainant, the records of registration for the disputed domain names were created on February 26, 2000 (Complaint, Annex B). That printout shows "Wick, Brian" as the Administrative Contact, at the same address indicated for defaultdata.com. Brian Wick has not contested his beneficial ownership of the disputed domain names (Response).
Respondent has registered numerous domain names identical to the trademarks and service marks of commercial enterprises, including the service marks of numerous law firms doing business in the United States and elsewhere (Response, paragraph 11). These include by way of illustration, <budweiswerbrewery.com>, <compaqcomputer.com>, <dolefoods.com>, and <johnnycochran.com>.
On April 19, 2000, the U.S. District Court for Colorado (Judge Babcock) held that Respondent Brian Wick had violated the U.S. Anticybersquatting Consumer Protection Act (ACPA) by his registration and bad faith use of the "Morrison & Foerster" law firm service mark, ordered the forfeiture by Respondent of four domain names incorporating the "Morrison & Foerster" mark, ordered Respondent to transfer two of those domains names to the Morrison & Foester firm and cancelled two others. (Morrison & Foerster v. Brian Wick, No. CIV.A.00-B-465, April 19, 2000) (Complaint, Annex N)
The disputed domain names resolve to identical web pages that includes in large type face "Preston Gates Ellis.com", "‘…. have a swim with us ….", portray deep-sea divers and sharks, the terms "TownDrunk Parody Website Network", and the following text:
"For the benefit of U.S.A. 1st Amendment Challenged Country Club Good ‘ole Boy Federal Judge Lewis Babcock, this web site, as our Trademark Policy & Corporate Guide state, attempts a U.S.A. Constitutionally granted free speech parody of the Supreme Court Judges, US Legal System, U.S. Attorney General, US Jury & US Courtroom, including this standard disclaimer parody itself, and this website has no relation to Bridgestone-Firestone.net, BruceSpringsteen.com, Saturday Night Live, any alien residing in Roswell Area 51, BurlingtonNorthern.net, HolocaustMuseum.org., HolocaustMuseum.net, Mad Magazine, National Lampoon, National Enquirer, JohnnyCochran.net, TownDrunk.org, FleeBailey.org or the 1812 Overture and this website has no relation to any person, organization, lawyer or law firm claiming rights to Preston Gates Ellis." (Complaint, Annex I)
Respondent has posted virtually identical web pages in connection with domain names incorporating the service marks of other large law firms, changing only the reference to the specific firm named in the text and design indicated above.
Respondent maintains active websites, including for example at URL <www.defaultdata.com>, styled "CorporateGuide.com" that criticize the ACPA, ICANN and the domain name dispute settlement system adopted by it. The criticism is primarily directed at alleged suppression of free speech rights protected by the U.S. Constitution.
The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions’ dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant asserts common law rights in the service mark "Preston Gates & Ellis" based on extensive use in commerce and its well-known character among consumers of legal services.
Complainant alleges that the disputed domain names are identical or confusingly similar to its service mark.
Complainant states that Respondent has no rights or legitimate interests in the disputed domain names because: (a) Respondent has not offered goods services under the names, (b) Respondent has not been commonly known by the names, (c) Respondent intends to profit from use of the names by advertising his own company on the related websites (d) Respondent intends to tarnish Complainant’s mark. Anticipating Respondent’s defense based upon other proceedings in which he has been involved, Complainant alleges that Respondent’s websites are not within the legal definition of parody since they do not use the distinctive style of Complainant as the basis for comic effect or ridicule. Complainant also indicates that Respondent does not in fact maintain an established parody network.
Complainant asserts that Respondent has registered and is using the disputed domain names in bad faith because: (a) he intends to offer the names for sale to Complainant for a price in excess of his out of pocket expenses in connection with the names; (b) he is preventing Complainant from reflecting its service mark in the disputed domain names; (c) he is disrupting Complainant’s business with his "‘rampage" against the legal system, and (d) he intends to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark.
Complainant observes that Respondent has been the subject of at least two federal court determinations ordering him to transfer names incorporating service marks of law firms, and several WIPO and National Arbitration Forum determinations ordering transfers under similar circumstances, and rejecting similar claims by Respondent of a parody defense.
Complainant alleges that Respondent has threatened to further tarnish its service mark in the event a law suit involving the disputed domain names is initiated by posting correspondence related thereto on his <holocaustmuseum.com> website.
Complaint requests the panel to order the registrar to transfer the disputed domain names to it.
Respondent expressly "does not dispute" that Complainant "has rights to PrestonGatesEllis.com and PrestonGatesAndEllis.com" under "the guidelines of the UDRP".
Respondent asserts that he has rights or legitimate interests in the disputed domain names because (a) the Internet is the electronic equivalent of a public access road on which individuals are free to distribute their views (as with physically published flyers); (b) that he is using the disputed domain names to direct Internet users to free speech websites where he criticizes the intrusion of the ACPA, ICANN, the Policy, etc., on protected free speech rights protected by the U.S. Constitution, and (c) there is no commercial aspect to his use of the disputed domain names. Respondent asserts that his many websites contain a similar message "so that the Complainant and any potential visitors who might key in one of the disputed Internet addresses realize the Complainant is not being singled out and is part of my overall message about the Establishment that millions and millions of peaceful, law-abiding Americans agree with, believe in and want to be reassure [sic] of." (Response, paragraph 39) Respondent notes that he may hyperlink from his free speech websites to sites of trademark holders with written permission from the mark holder, and that "Recently, some mark holders have accepted my offer to include a hyperlink to a website representing their business." (Response, paragraph 28).
Respondent asserts that since he is making a legitimate free speech use of the disputed domain names, there is no need to respond to Complainant’s allegations of bad faith (Response, paragraph 35).
Respondent requests that Complainant’s claims be rejected, and requests further relief outside the province of the Policy.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings. Respondent has filed a detailed response to the complaint indicating that he received notice and was afforded an adequate opportunity to respond.
As a preliminary matter, the panel notes that Respondent Brian Wick has not challenged his beneficial ownership and control over the disputed domain names, having filed a response in his own name and otherwise acknowledging ownership. The panel determines that Respondents defaultdata.com and Brian Wick shall be treated as a single Respondent.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant has asserted common law service mark rights in "Preston Gates & Ellis", and Respondent has conceded Complainant’s rights in the mark under the terms of the UDRP. Respondent bases his defense in this proceeding on his intentional use of Complainant’s mark in the disputed domain names for what he alleges to be legitimate fair use purposes. That use presupposes that Internet users would find the disputed domains identical or confusingly similar to Complainant’s mark. Respondent has effectively conceded the confusing similarity of the mark and the disputed domain names, a conclusion that the Panel would in any case reach based on Complainant’s pleadings. For reasons of administrative economy, the Panel need not further elaborate grounds for findings in this regard. The Panel finds that Respondent has registered domain names that are identical or confusingly similar to a service mark in which Complainant has rights. Complainant has satisfied the first element for a finding of abusive domain name registration and use under the Policy.
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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." (Policy, paragraph 4(c))".
It is common ground between the parties that Respondent has not satisfied the criteria of paragraph 4(c)(i) or (ii).
Respondent asserts that he is making legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain or to tarnish Complainant’s service mark. The essence of Respondent’s argument is that he is entitled to use the distinctive name of Complainant’s law firm to attract Internet users to a website where he engages in free expression. Respondent argues that his free expression critique is not directed at Complainant’s firm in particular, but rather is a general critique of the legal system adopted to regulate registration and use of domain names. In his view, this system deprives him and others of their constitutionally protected right of free speech. By Respondent’s account, this explains why the particular sites to which the disputed domain names are directed do not say anything specific about Complainant, other than to highlight Complainant’s name and mark as part (presumably) of the larger constitutional problem.
In this regard the Panel observes that Respondent appears to have moved away from the principal argument that he advanced at least in some prior similar proceedings to the effect that his sites constitute protected parody, perhaps because his parody defense was rejected on a number of previous occasions. The argument made by Respondent in this proceeding appears to more closely follow a nominative fair use line of reasoning ; that is, Respondent argues that he is entitled to use Complainant’s mark because it is reasonably necessary to identify the subject matter of his criticism. Alternatively, Respondent might be understood to be asserting a more or less absolute right of free speech on the Internet with respect to marks as a matter of policy and principle.
The Panel cannot on the facts presented here accept Respondent’s arguments. First, there is a well-recognized and evident tension between the protection of business identifiers such as service marks and domain names and freedom of speech. When the U.S. Congress provides that a mark holder has an exclusive right to use a distinctive term in certain contexts, it is establishing a limit on the exercise of free speech. This accounts for the various statutory rules and judicial doctrines that constrain an absolute view of mark holder rights; that is, use of marks is not absolutely exclusive. The entitlement to and exercise of rights depends on the specific context.
To the extent that Respondent may be understood to assert an absolute constitutionally protected free speech right to use Complainant’s mark, the Panel does not accept that view. Neither the U.S. Congress in the ACPA, nor ICANN in the Policy, has signaled an intention to establish a rule that marks are absolutely free for all potentially expressive uses on the Internet.
Respondent’s narrower argument is that reference to Complainant’s mark is legitimate in the sense of being reasonably necessary to make his constitutionally protected point that free speech rights are being unduly restricted by the ACPA, ICANN, lawyers, arbitrators, and the system in general. Respondent’s logic is that he is entitled to use any number of marks without the consent of their holders – literally hundreds by his own account – because he is expressing a global point. The Panel does not accept that legitimate non-commercial or fair use doctrine establishes a right that extensive.
The doctrine of nominative fair use of marks allows the use of a mark when it is reasonably necessary to facilitate free expression and the dissemination of information. A newspaper may refer to "New Kids on the Block" without the consent of the singing group because it would create a substantial impediment to expression if news reports or surveys, for example, were required to refer to "the group of teenage singers characterized by, etc., etc.". While instead of the "Chicago Bulls", sports reporters might refer to "the professional basketball team based in Chicago and formerly staffed by Michael Jordan," the law applicable to service marks does not impose that substantial burden on reporters. However, a logical extension of Respondent’s claim to legitimate noncommercial or fair use would be, to illustrate, that he is entitled to register the marks of all software companies in the United States as domain names to connect to a single website stating "Computer software is evil" because that is a point he would like to make.
Respondent does not reasonably need to register and use the service marks of many of the major law firms in the United States because he wants to make the point that lawyers are evil. While this might facilitate his task, it interferes in a substantially too great way with the legitimate rights of the service mark holders to control the use of their names to conduct business. By registering a multitude of service marks as domain names, Respondent goes beyond the reasonable or fair use of a mark to make a statement and into unreasonably or unfairly interfering with the legally recognized interests of others.
The Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain names within the meaning of paragraph 4(c)(iii) of the Policy.
The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are that a respondent has registered the domain name "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct" (id., paragraph 4(b)(ii)).
Respondent registered the disputed domain names incorporating Complainant’s service mark so that when Internet users entered the logical URLs identifying Complainant, they would not find Complainant, but instead Respondent. He must have understood and assumed that by registering the logical identifiers for Complainant’s business, he would thereby prevent Complainant from registering its service mark in those names. It is not important that Complainant may have used a shorter version of its name in an alternative domain name. It was well within Complainant’s rights to register more than one logical URL identifier for its service mark.
By his own admission, Respondent has engaged in a pattern of similar conduct with respect to the marks of third parties.
The Panel finds that Respondent registered and has used the disputed domain names in bad faith within the meaning of paragraph 4(b)(ii) of the Policy.
Complainant has thus satisfied all three elements necessary for a finding that Respondent has engaged in abusive registration and use of the disputed domain names within the meaning of paragraph 4(a) of the Policy.
The Panel will direct the registrar to transfer the disputed domain names to Complainant.
Based on its finding that the Respondent, defaultdata.com and Brian Wick, has engaged in abusive registration and use of the domain names <prestongatesellis.com> and <prestongatesandellis.com> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain names <prestongatesellis.com> and <prestongatesandellis.com> be transferred to the Complainant, Preston Gates & Ellis LLP.
Frederick M. Abbott
Dated: February 13, 2002
1. See, e.g., New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992), and discussion of doctrine and elements in J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:11 (4th ed. 1996 and updated).