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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Qwest Communications International, Inc. v. DefaultData.com a/k/a Brian Wick
Case No. D2003-0002
1. The Parties
The Complainant is Qwest Communications International, Inc., C/O Christine P. Searls, Esq., 1801 California Street, Suite 3800, Denver, CO 80202, United States of America, of United States of America, represented by Townsend and Townsend and Crew, LLP of United States of America.
The Respondent is DefaultData.com a/k/a Brian Wick of Denver, Colorado, United States of America.
2. The Domain Names and Registrars
The disputed domain name <qwestcommunication.com> is registered with Network Solutions, Inc.
The dispute domain name <qwestcommunications.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2003. On January 7, 2003, and again on January 10, 2003, and January 13, 2003, the Center transmitted by email to Network Solutions, Inc., a request for registrar verification in connection with the domain name <questcommunication.com>. On January 7, 2003, and again on January 10, 2003, and January 13, 2003, the Center transmitted by email to eNom, a request for registrar verification in connection with the domain name <questcommunications.com>. On Janaury 13, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On January 14, 2003, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 14, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2003. The Response was filed with the Center on February 3, 2003.
The Center appointed Henry H. Perritt, Jr. as the sole panelist in this matter on February 25, 2003. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant Qwest Communications International, Inc. (“Qwest Communications”) is one of the largest international telecommunication services companies in the world. Qwest Communications serves more than 30 million customers in the United States and abroad. The company completes over 240 million phone calls and carries 600 million emails daily in its local phone service area, which encompasses fourteen contiguous states in the Western United States, including Respondent’s home state of Colorado. Globally, Qwest also offers web hosting services, high-speed Internet access, and other technologies and applications that enable global communications. Qwest Communications has been operating under the QWEST name and mark in the United States since at least as early as 1981 and under the QWEST COMMUNICATIONS name and mark since at least as early as 1992.
Complainant Qwest Communications directly owns exclusive rights in the QWEST and QWEST COMMUNICATIONS marks, and derivatives thereof, in jurisdictions around the world. The following table lists some of these registrations in the United States, which are valid and subsisting. Under the QWEST COMMUNICATIONS mark, Qwest Communications offers a wide range of telecommunication services.
|Mark||Country||Reg. No.||First Use/|
|QWEST||United States||1,966,694||At least as early as 1985|
Issued April 9, 1996
|QWEST COMMUNICATIONS||United States||1,979,485||At least as early as 1992|
Issued June 11, 1996
|QWEST (stylized)||United States||2,210,992||At least as early as 1997|
Issued December 15, 1998
|QWEST||United States||2,513,382||At least as early as 2000|
Issued November 27, 2001
The URL “http://www.qwestcommunication.com”, when used by the panelist on March 1 and March 2, 2003, produced a “The page cannot be displayed” error.
The URL “http://www.qwestcommunications.com”, when used by the panelist on March 1, 2003, produced a Webpage and an accompanying musical audio stream. The Webpage began: “For the benefit of U.S.A. 1st Amendment Challenged Country Club Good ole’ Boy Federal Judge Lewis Babcock, this website is merely a ‘free speech flyer’ being passed out at a possible electronic address to an Established business ( no different than free speech at a physical address to a business) and a similar ‘free speech flyer’ is also being passed out at several other possible electronic addresses to Established business and this ‘free speech flyer’ attempts to communicate a speech message using satire and parody.” The website also contained obscure, but obviously negative references to Qwest Communications and its executives.
The panelist was unable to find any live link on this page to any site maintained by the Complainant.
5. Parties’ Contentions
Complainant owns exclusive rights to the marks incorporated in the domain names, as detailed in section 4 of this decision.
The domain names are identical to the service marks in which Complainant has rights. Complainant Qwest Communications is known as QWEST COMMUNICATIONS and owns broad rights in this mark. This mark is identical to the <qwestcommunications.com> domain name and virtually identical to the <qwestcommunication.com> domain name.
Respondent has no rights or legitimate interests in respect of the domain names. First, Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks nor has it licensed or otherwise permitted the Respondent to apply for or use any domain name incorporating any of those marks.
Respondent has apparently registered these domain names “to ensure that those visitors who seek any of the sites of those firms will be exposed to Respondent’s ‘Internet speech project’ through which it provides, what Respondent believes to be, a constitutionally protected free speech forum through which ‘established businesses’ are subjected to critical public speech.” Such motivation, even if bona fide, does not confer rights or legitimate interests in domain names that correspond exactly to the trademarks of Complainant. Respondent’s efforts to co-opt a legitimate business address to conduct a “free speech project” have been repeatedly found not to create rights or legitimate interests in a domain name. There are many legitimate avenues for public discourse on the Internet, and this is simply not one of them.
Respondent has made no effort to commence use of the domain names in connection with the bona fide offering of goods and services. Any parody on Respondent’s website directed to the Complainant is merely make weight and cannot be considered a bona fide parody. For example, the following phrases found on the website are the only ones that might be arguably targeted at the Complainant—though they fail to articulate any particularized criticism and are so general that any connection to Complainant is tenuous: “There is a lot of FAT in our BOTTOM line....”, “We’re constantly EXPANDING … In fact, we‘re over-EXPANDING”, “We are MISS-Communications ….. It’s all about Internet BROADband…”, and “Who‘s your favorite Baby Belle? …. Next month we will be wearing our PINK-SLIPS!!!” Nevertheless, Respondent’s “parody” argument has been resolutely rejected time and time again. See, Adams and Reese LLP v. American Distribution Systems, Inc. d/b/a/ Defaultdata.com, NAF Case No. FA00102860; Bandon Dunes L.P. v. DefaultData.com, WIPO Case No. D2000-0431; Winchester Properties, LLC v. DefaultData.com, NAF Case No. FA0097114; Foley & Lardner v. Brian G. Wick et al., NAF Case No. FA00114758.
Even if Respondent perceives its actions as parody, Respondent’s use of domain names that correspond exactly to Complainant’s trademarks cannot withstand challenge. Such initial interest confusion associated with Complainant’s trademarks—especially where the domain names do not indicate any parody and correspond precisely to those trademarks—can cause significant confusion among Complainant’s customers. Indeed, potential customers of Qwest Communications would rightly expect to find the company at either <qwestcommunciation.com> or <qwestcommunications.com>.
Respondent is not commonly known by the domain names (Policy Para. 4(c)(ii)). The domain names in issue are hardly in the nature of nicknames or proper names, and do not correspond in any way to any of the pseudonyms adopted by Respondent. As noted in Valero Energy Corporation v. American Distribution Systems, Inc., D/B/A Default Data.Com And Brian Wick (WIPO Case No. D2001-0581) this very Respondent is alternatively known as American Distribution Systems, Inc., DefaultData.com, and Brian Wick. There is absolutely no correspondence between these names and the disputed domain names <qwestcommunication.com> and <qwestcommunications.com>.
Respondent is not making legitimate commercial or fair use of the domains (Policy Para. 4(c)(ii)). Respondent merely registers domain names that correspond exactly to the trademarks of others, which give no indication about the content of the website. Such actions result in initial interest confusion and unfairly draw unknowing consumers to Registrant’s websites. Such misleading activity is not fair use and cannot justify rights or legitimate interests to a domain name.
Respondent Registered and is using the domain names in bad faith.
Respondent acted in order to prevent Complainant from reflecting its principal service marks in corresponding domain names (Policy 4(b)(ii)). Respondent’s registration of these domain names is part of a very well documented pattern of conduct directed at trademark owners. Respondent’s historic pattern of domain registration abuse as well as its registration of Complainant’s marks in the two domain names at issue establishes its bad faith under the Policy.
Respondent is a notorious cybersquatter. Under a variety of pseudonyms, Respondent has registered innumerable domain names corresponding to the well known trademarks and service marks of others.
The complaint cites ten reported cases related to domain names against Respondent, each of which included a finding of bad faith.
|Case Name ||Case No.|
|Adams and Reese LLP v. American Distribution Systems, Inc. d/b/a/ Defaultdata.com||NAF Case No. FA00102860|
|American Family Life Assurance Company of Columbus v. defaultdata.com a/k/a Brian Wick||NAF Case No. FA00123896|
|Bandon Dunes L.P. v. Defaultdata.com||WIPO Case No. D2000-0431|
|Foley & Lardner v. Brian G. Wick et al.||NAF Case No. FA00114758|
|Hunton & Williams v. American Distribution Systems, Inc. et al.||WIPO Case No. D2000-0501|
|Morrison & Foerster LLP v. Brian Wick and American Distribution Systems, Inc.||94 F.Supp.2d 1125 (D. Colo. 2000)|
|Morrison & Hecker L.L.P. v. American Distribution Systems, Inc.DefaultData.com and Brian G. Wick.||NAF Case No. FA0094386|
|Preston Gates & Ellis, LLP v. Defaultdata.com and Brian Wick||WIPO Case No. D2001-1381|
|Regions Financial Corporation v. Defaultdata.com aka Brian Wick||NAF Case No. FA00118271|
|Valero Energy Corporation v. American Distribution Systems, Inc., D/B/A Default Data.Com And Brian Wick||WIPO Case No. D2001-0581|
The evidence pertaining to this Respondent, as repeatedly found by past Panels, is that it routinely registers domain names that correspond to the trademarks and service marks of others—especially large corporations and law firms.
Respondent has repeatedly elected to register and use domain names that correspond exactly to the trademarks of others for the purported purpose of parody. This justification has been determinedly rejected by previous Panels and determined to be in bad faith because Respondent could have chosen a domain name adequately reflecting both the object and independent nature of its site, as evidenced today in thousands of domain names.
The well established modus operandi of Respondent herein can lead to no other conclusion but that it registers and uses these domain names in bad faith. The facts of the present case scarcely differ from other cases in the body of jurisprudence surrounding Respondent. Here, Respondent registered and used the domain names long after Complainant established rights and created substantial fame in and to the corresponding mark. As a resident of Colorado, which is one of the states where Complainant provides local telephone service, Respondent was well aware of Complainant and its marks. Complainant Qwest Communications joins many other well-known and established corporations and law firms that have fallen prey to Respondent’s bad faith registration and use of domain names that correspond exactly to each firm’s famous trademarks and service marks. Quite simply, as Panels have routinely found, Respondent’s actions cannot be justified or accepted.
The Response asserts a 25-year customer relationship with Complainant:
“The Complainant owns all the copper lines in a 14 state region, which are required for DSL, and as a result anybody wanting DSL must work, in some capacity, with the monopoly that owns all the copper lines – i.e. the Complainant.
In July 2000 I purchased DSL with static IP addresses from the Complainant and began hosting my websites on my web servers. In late 2000 the Complainant admitted it mistakenly dropped my static IP addresses as a result of their ‘accounting’ error and my websites were not operational (Exhibit-3).
The problem lies with the Complainant being insensitive to shutting down my business and after about 30 hours of phone calls and 10 days later, the Complainant finally got around to making my websites operational again.
With the exception of holidays, no business, especially a small business like mine, can shut their doors even for 1 day let alone for 10 days. To be diplomatic, this down time was detrimental to my image and my business.
There are other circumstances of poor behavior on the part of the Complainant but I feel enough has been said.
This problematic behavior is a reflection of a monopoly, and taking this matter to a civil court is cost and time prohibitive. So, I simply found satisfaction in operating websites at “www.qwestcommunication.com” and “www.qwestcommunications.com””.
The Response also recites that Respondent Wick’s father was terminated in his employment by the founder of Complainant because of his refusal to assist in misconduct orchestrated by the founder.
The Response asserts that The Men’s Warehouse v. DefaultData.com and Brian Wick, NAF Case No. FA00117861 (September 16, 2002) and Discount Trophy v. DefaultData.com and Brian Wick, NAF Case No. FA00124853 (November. 12, 2002) support Respondent’s position, and that Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859 (December 4, 2000), Bridgestone Firestone v. Jack Myers WIPO Case No. D2000-0190 (July 6, 2000), allowed authors of criticism or satire regarding the owner of trademarks similar or identical to their domain names to keep those domain names.
Respondent claims that his use of his target’s names is like a protestor using his target’s address. A customer or supplier of the target goes to the address seeking to do business with the target, and encounters instead the protestors who are engaging in activities at the same address.
Respondent claims that UDRP Element #3 is irrelevant because UDRP element #2 cannot be satisfied (Response, Para. 17).
6. Discussion and Findings
This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute. The registration agreements, pursuant to which the domain names that are the subject of this Complaint are registered, incorporate the Policy.
Paragraph 5 of Schedule A of the VeriSign Service Agreement incorporates by reference a domain name dispute policy, approved by ICANN. Paragraph 4(a) of that policy requires respondent to submit to this proceeding.
Domain name registrar eNom Inc. also incorporates into its Registration Agreement at paragraph 4, the Uniform Dispute Resolution Policy, paragraph 4(a) of which requires respondent to submit to this proceeding.
Under Paragraph 4(a), the Respondent is required to submit to a mandatory administrative proceeding because the complaint alleges that:
(1) The domain names are identical or confusingly similar to service marks in which the Complainants have rights; and
(2) The Respondent has no rights or legitimate interests in respect of the domain names; and
(3) The domain names were registered and are being used in bad faith.
B. Identical or Confusingly Similar
The Complainant has established that the disputed domain names are identical or confusingly similar to trademarks or service marks in which the complainant has rights.
C. Rights or Legitimate Interests
The only right or legitimate interest asserted by Respondent apparently is a right of, or legitimate interest in, parody. The Policy recognizes the possibility of non-commercial fair use in Paragraph 4(c)(iii): “making a legitimate non-commercial 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 Respondent’s argument is remarkably incoherent, intermingling general references to the U. S. Constitution, criticisms of corporate ethics across the board, specific complaints about Complainant and its founder, attacks on the ACPA and UDRP, and other fragmentary references to unrelated corporations and cases.
Only one of the four cases he cites supports his position. The Men’s Warehouse v. DefaultData.com and Brian Wick, NAF Case No. 00117861 (September 16, 2002), and Discount Trophy v. DefaultData.com and Brian Wick, NAF Case No. FA00124853 (November 12, 2002), found that the Complainant failed to establish the requisite exclusivity in the claimed marks, thus defeating the identical-or-confusingly similar element of Paragraph 4(a)(i) of the Policy. Neither case reached the second and third elements, which are at issue in this case.
Ahmanson Land Company v. Vince Curtis , WIPO Case No. D2000-0859, (December 4, 2000), is Respondent’s best case. That decision summarily finds “no evidence of bad faith,” and finds “legitimate non-commercial use or fair use by Respondent since the purpose of Respondent’s websites are to serve as non-commercial platforms to criticize the development activities of Complainant.” Id. at paragraph 6.3. It analogizes its facts to those in Bridgestone Firestone v. Jack Myers, WIPO Case No. D2000-0190, (July 6, 2000). Neither the facts of Ahmanson Land nor of this case satisfy the requirements of Bridgestone Firestone for fair use or parody.
The Respondent in this case does not qualify for the outcome in Ahmanson Land, even if the reasoning of that decision were persuasive, because his use of the disputed domain name is not credibly focused on criticism of Complainant. The content of “www.qwestcommunications.com” is difficult to make sense of. Photographs and caricatures are interspersed with apparently random phrases, some of which seem to refer to Qwest Communications and some not. One cannot infer any logical criticism of the Complainant from the site, and any parody is obscure in the extreme. While the Supreme Court appropriately observed in Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 582-583 (1994), that good taste or bad taste, good or bad quality should not matter in establishing the privilege of fair use for parody, nevertheless, “The threshold question when fair use is raised in defense of parody is whether a parodic character may reasonably be perceived.” I conclude that the content that appears at the disputed domain name <qwestcommunications.com> cannot reasonably be perceived as parody. I conclude that no content appears at the disputed domain name <qwestcommunication.com> and therefore that the use of neither domain name can qualify for an implied fair use for parody or criticism under paragraph 4(a)(ii) of the Policy.
Even if the content could be perceived as parody or criticism, the reasoning of the Bridgestone Firestone decision is persuasive. In that decision, Presiding Panelist Dana Haviland concluded that the use of the disputed domain name qualified as legitimate non-commercial use and fair use. But crucial to the decision were the facts that the Respondent had not appropriated the mark in question in the “.com” domain, but only in the “.net” domain, thus making it possible for the Complainant itself to register and use the “.com” version on its own commercial website; that the Respondent posted disclaimers on its home page, and included criticism and commentary on its site so that a reasonably prudent Internet user could tell that the site was not the trademark holder’s official site.
In this case, Respondent’s use of “.com” prevents Complainants from using the most obvious domain name for their well-known business, and nothing on Respondent’s website identifies it as parody, or disclaims any connection with Qwest.
This is not like cases in which words or phrases such as “sucks,” “frauds,” “scams,” “criminals,” or “complaints” are appended to a trade name, causing the domain name itself to signal parody or criticism. See The Bear Stearns Companies, Inc. v. Lavalle, No. Civ. A. 3:00CV1900D, 2002 WL 31757771 (N.D. Tex. December 3, 2002) (enjoining use of <mcmortgagecomplaints.com>, <bearstearnsshareholders.com>, and <bearstearnscomplaints.com>, while denying injunction against use of <emcmortgagefrauds.com>, <emcmortgagescams.com>, <emcmortgagecriminals.com>, <bearstearnsfrauds.com>, and <bearstearnscriminals.com>); Wal-Mart Stores, Inc. v. wallmartcanadasucks.com and Kenneth J. Harvey, WIPO Case No. D2000-1104 (November 23, 2000) (no likelihood of confusion between wallmartcanadasucks and Wal-Mart’s products and services).
As the United States Court of Appeals explained in People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001), “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’” (263 F.3d at 366).
“Looking at Doughney’s domain name alone, there is no suggestion of a parody. The domain name <peta.org> simply copies PETA’s Mark, conveying the message that it is related to PETA. The domain name does not convey the second, contradictory message needed to establish a parody--a message that the domain name is not related to PETA, but that it is a parody of PETA.” Id.
I would paraphrase for this case: Looking at Wick’s domain name alone, there is no suggestion of a parody. The domain names <qwestcommunication.com> and <qwestcommunications.com> simply copy Qwest’s Mark, conveying the message that it is related to Qwest. The domain name does not convey the second, contradictory message needed to establish a parody--a message that the domain name is not related to Qwest, but that it is a parody of Qwest.
Exactly the same reasoning persuaded the district court in Morrison & Foerster v. Wick, 94 F. Supp. 2d 1125 (D. Colo. 2000), not to recognize an earlier website of this Respondent as parody. “Mr. Wick’s use of the Morrison & Foerster mark in his domain names does not convey two simultaneous and contradictory messages. Instead, the names of his websites produce confusion. Only by reading through the content of the sites could the user discover that the domain names are an attempt at parody. Because his websites rely on confusion to convey their points, Mr. Wick’s argument that his use of the mark is a parody fails” (94 F. Supp. 2d at 1134-1135).
Respondent’s conduct is not similar, as he asserts, to a picket line or protest conducted at the site of the target of the protest. When that occurs, customers and suppliers of the target and the general public see both the protestors’ and the target’s facility; they cannot be confused about the separate identity of the target and the protestors. Respondent’s conduct is more akin to a protestor who erects fraudulent detour signs along the only route to the target’s facility, misdirecting customers, suppliers and the public to a place which is not the target’s but only a place where protest against the target occurs. After following the phony detour, those wishing to reach the real target facility must figure it out on their own.
D. Registered and Used in Bad Faith
If ever anyone has registered and used domain names in bad faith, it is Mr. Wick. District Judge Babcock put it well in Morrison & Foerster v. Wick:
“The most persuasive reason for concluding that Mr. Wick acted with bad faith intent does not fit neatly into the specific factors enumerated in the ACPA. I may nevertheless consider it under the statute. Mr. Wick’s own testimony demonstrates his bad faith. He testified that he began registering “parody” domain names to “get even” with a company he worked for that allegedly reneged on a contract with him. When he had success in this limited field, he moved on to corporate America and, at one point, registered domain names for 7% of the Fortune 500 companies. He then graduated to corporate recreation activities such as golf. Finally, he began to register names of major law firms because they, in Mr. Wick’s view, would represent corporate America in court. When questioned about his initial intent in setting up domain names, Mr. Wick responded:
Q. And what was your intention? What did you intend to do with those domain names?
A. I’m not one to sue somebody, and I--this was my way of messing with them.
Q. Were you going to put up websites with those domain names?
Q. And what were you going to put on those websites?
A. Parody’s, jokes.
. . . . .
A.... I got to thinking, Well, who else in corporate America can I have fun with. And I figured, well, hey, you know, I got the executives pissed off as a result of me because of the names I own regarding their corporation. I can fool with them where they recreate. Well, who are they going to get to represent them? So I started getting into targeting “www.martindale.com”, large law firms.
Q. Did you intend to set up parody sites for the law firms as well?
A. Couldn’t wait.
Mr. Wick described himself as going “on a rampage” in setting up these various websites targeting corporate America and the legal community. He also described the entertainment value of purchasing the domain names: "I mean to be candid with you I mean to see these people squirming around over 70 bucks, that’s enjoyable." Each of these concessions manifest the degree of bad faith with which Mr. Wick established these websites” (94 F. Supp. 2d at 1133).
Mr. Wick participated fully in that proceeding, and I conclude that I may apply the factual findings and relevant legal conclusions of Judge Babcock to find bad faith under the doctrine of non-mutual collateral estoppel (issue preclusion).
Also, an Administrative Panel can find bad faith under the Policy without finding facts that qualify for one of the examples offered in Paragraph 4(b) of the Policy “the following circumstances, in particular but without limitation, . . . shall be evidence of . . . bad faith.”
Like Judge Babcock, I find the pattern of conduct described by him, now extended as described by the Complainant in this case, to constitute bad faith in general under the Policy and to constitute bad faith because, among other things, it constitutes registration “of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, . . . [and that the Respondent has] engaged in a pattern of such conduct,” under Paragraph 4(b)(ii).
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panelist orders that the domain names, <qwestcommunication.com> and <qwestcommunications.com> be transferred to the Complainant.
Henry H. Perritt, Jr.
Dated: March 2, 2003