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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Moss and Coleman Solicitors v. Rick Kordowski

Case No. D2006-1066

 

1. The Parties

The Complainant is Moss and Coleman Solicitors, Essex, of United Kingdom of Great Britain and Northern Ireland, represented by Andrew Scott, of United Kingdom of Great Britain and Northern Ireland.

The Respondent is Rick Kordowski, Essex, of United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Names and Registrar

The disputed domain names <mossandcoleman.com> and <mossandcoleman.net> are registered with CSL Computer Service Langenbach GmbH dba Joker.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2006. On August 22, 2006, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain names at issue. On August 24, 2006, CSL Computer Service Langenbach GmbH dba Joker.com 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 for the disputed domain names. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 30, 2006. The Center verified that the amended 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 September 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2006. The Response was filed with the Center on September 22, 2006.

The Center appointed James A. Barker as the Sole Panelist in this matter on October 5, 2006. The Panel finds that it was properly constituted. The Panel 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

Moss and Coleman are a law firm, based in Essex, United Kingdom.

The Respondent is also resident in Essex, United Kingdom. The Respondent’s business is not apparent from the case file. The Respondent has, however, previously been a client of the Complainant’s. This previous relationship resulted in a complaint to The Law Society, made by the Respondent against the Complainant.

The disputed domain names revert to a website devoted to criticism of the Complainant, and critical of the services previously provided by the Complainant to the Respondent.

 

5. Parties’ Contentions

A. Complainant

The following contentions are summarised from the Complaint.

Identical or confusingly similar

The Complainant, Moss and Coleman, is a general partnership, in which all of the attorneys in the firm equally share ownership and liability. Unlike US law firms which may own a registered mark or service mark, UK law firms depend on their good name and long-standing reputation.

The name, Moss and Coleman, is, in effect, the Complainant’s common law or unregistered mark and has accrued comparable goodwill and reputation as a law firm dating back to 1959 and is registered with The Law Society, the governing and regulatory body for England and Wales.

(The Complainant attaches material in support of its claim to a common-law mark. That material includes evidence of details held by The Law Society relating to the Complainant; a letter from a resident in the area of the Complainant; a letter from one of the Complainant’s original partners; and evidence of the Complainant’s letterhead.)

Rights or legitimate interests

The Respondent is neither called nor has any relationship to Mr. Moss or Mr. Coleman and is not a registered solicitor or has ever practiced as such.

Bad Faith

To support its contention of bad faith, the Complainant attaches a copy of the website to which the disputed domain names refer. The Complainant claims that the website is evidence of the Respondent’s bad faith, and of the Respondent’s primary purpose of harassing the Complainant, diverting the Complainant’s clients to the website that disparages and defames the Complainants business, and interfering with the Complainant’s business.

B. Respondent

In response, the Respondent refers to the following:

- decisions of The Law Society, in particular a first instance decision of its Client Relations Office, which was confirmed after an application for further review. (The first instance decision was that the services provided by the Complainant to the Respondent in an unrelated matter were inadequate, for a number of reasons.) The Respondent attaches a copy of those decisions.

- article 10 of the European Convention on Human Rights, concerning freedom of expression. The Respondent claims that the material on its website is a relevantly protected form of expression. Related to this, the Respondent claims that its website is a “customer grievance site”. The Respondent notes that the registrar’s rules allow that a fair use of a domain name may include sites “operated solely in tribute to or criticism of a person or business”.

- that the Complainant had the opportunity to register the disputed domain names, but did not.

 

6. Discussion and Findings

For the Complainant to succeed and have the disputed domain names transferred to it, paragraph 4(a) of the Policy provides that Complainant must prove that:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain name have been registered and are being used in bad faith.

The Complainant must prove all of these elements. These elements are discussed in turn as follows.

A. Identical or Confusingly Similar

Does the Complainant have rights in a mark?

The first issue is whether the Complainant “has rights” in a mark. The Complainant claims that it has a common law mark in its business name: “Moss and Coleman”.

The Complainant provides evidence of trading under that name, as a firm of solicitors. There is no dispute that the Complainant has traded under that name. The Respondent’s grievance against the Complainant is entirely based on that fact.

The Complaint is less strong in demonstrating that its business name has acquired distinctiveness as a common law mark. On one hand, the proposed mark is one based on the personal names of the Complainant’s original partners. It is naturally more difficult to establish the distinctiveness of a mark based on a personal name. On the other hand, the mark is based on a combination of two personal names. A combination of names as such, may more easily be distinctive as a mark. Also, the Respondent has not contested the Complainant’s claim of rights in “Moss and Coleman” as a common law mark.

On balance, the Panel finds that the Complainant has sufficiently established rights in a common law mark. The Complainant provides evidence of trading under the name “Moss and Coleman” for more than 50 years. This fact, together with the nature of the mark as a combination mark, gives credence to a finding that “Moss and Coleman” is a common law mark in which the Complainant has rights.

Are the disputed domain names identical or confusingly similar?

The disputed domain names are identical to the Complainant’s mark. It is well-established under the Policy, that the extensions “.com” or “.net” are to be disregarded in determining identicality or confusing similarity. Disregarding those extensions, the disputed domain names are clearly identical to the Complainant’s mark.

The Panel finds that paragraph 4(a)(i) of the Policy is established.

B. Rights or Legitimate Interests

The Complainant makes a brief statement in this respect. That is - the Respondent has no relationship with the Complainant’s founding partners, and has never practised as a solicitor.

Neither of these statements directly address the question of the Respondent’s rights or legitimate interests. But, having made these claims, the burden then shifts to the Respondent to establish that he does have rights or legitimate interests. (See e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Respondent essentially makes three claims apparently in support of his legitimate interests in the disputed domain names:

Finding by The Law Society

Firstly, the Respondent refers to a finding made against the Complainant by The Law Society. The finding was that the Complainant’s service to the Respondent, in an unrelated matter, was inadequate. This finding might give the Respondent a sharper axe to grind against the Complainant in a general sense. But it is not a finding directly relevant to these proceedings. The finding does not confer a right on the Respondent to appropriate the Complainant’s mark to express his views. As previously noted in a decision under the Policy, in somewhat similar circumstances to this one, “the right to express one’s views is not the same as the right to identify itself by another’s name when expressing those views”. (See, Kirkland & Ellis LLP v. DefaultData.com, American Distribution Systems, Inc., WIPO Case No. D2004-0136).

Free speech

Secondly, the Respondent refers to article 10 of the European Convention on Human Rights. That article relates to freedom of expression. The Respondent’s claim appears to be that he has the freedom to criticise the Complainant. No doubt he does. But, again, that freedom does not confer a right to appropriate the Complainant’s mark in the disputed domain names. There is a balance that must be struck between the rights of mark holders and rights of free speech. Although the European Convention on Human Rights is not binding on decisions under the Policy, the Panel notes that it does not establish an absolute right of free speech. Article 10 itself recognizes the balance that must be struck between rights of free speech and the rights of others. As such, article 10 specifies that the right may be subject to conditions or restrictions “as are prescribed by law and are necessary in a democratic society…for the protection of the reputation or the rights of others.”

In certain circumstances, ‘free expression’ (in this case, using a mark in relation to a ‘grievance’ website) can provide a respondent with a legitimate interest. Relevantly, paragraph 4(c)(iii) of the Policy provides that a Respondent may demonstrate a right or legitimate interest where the Respondent 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.

In this case, the Respondent is evidently not using the disputed domain names for commercial gain. The only issue therefore is, whether the use is unfair and made without intent to tarnish the mark. The point at which use of a mark is not a fair use under paragraph 4(c)(iii) has attracted some differing panel decisions under the Policy. (For cases giving an overview of these different approaches, see e.g., Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; Justice for Children v. R neetso / Robert W. O’Steen, WIPO Case No. D2004-0175; CBS Broadcasting Inc., f/k/a CBS Inc v. Nabil Z. aghloul, WIPO Case No. D2004-0988.)

Panels have generally taken one of two approaches in this respect, as set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, at item 2.4:

View 1: The right to criticize does not extend to registering a domain name that is identical or confusingly similar to the owner’s registered trademark or conveys an association with the mark.

View 2: Irrespective of whether the domain name as such connotes criticism, the respondent has a legitimate interest in using the trademark as part of the domain name of a criticism site if the use is fair and non-commercial.

As noted in the WIPO overview, few non-US panelists have applied ‘View 2’. Because ‘View 1’ has been applied by the majority of panels in circumstances like in this case, this Panel takes the same approach.

In this case, the disputed domain names are identical to the Complainant’s mark and used in relation to a ‘grievance’ website. The weight of panel views is that, in these circumstances, there is no fair use under paragraph 4(c)(iii). Because the disputed domain names are virtually identical to the Complainant’s mark, this case is more clearly an example of a use that is not “fair” under paragraph 4(a)(iii). The clear conclusion of relevant panel decisions is that a respondent which adopts a complainant’s mark exactly for the purpose of a criticism site is, by that fact, wrongly identifying itself as the complainant or, at the very least, wrongly conveying an association with a complainant. (See e.g., Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763; Kirkland & Ellis LLP v. DefaultData.com, American Distribution Systems, Inc., WIPO Case No. D2004-0136). That association is created at the initial stage where an Internet user, searching for a complainant, might type in a complainant’s mark as a domain name but then be diverted to a respondent’s website.

Domain names previously unregistered

Thirdly, the Respondent states that the Complainant had the chance to register the disputed domain names, but did not. This is essentially a ‘first come, first serve’ argument. But it is misplaced. The entire purpose of the Policy is to prevent the operation of a ‘first come, first serve’ domain name registration system, where the circumstances set out in paragraph 4(a) of the Policy are met.

The Panel finds that paragraph 4(a)(ii) of the Policy is established.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, a finding of bad faith can be made where the Respondent “knew or should have known” of the Complainant’s trademark rights, but nevertheless registered a domain name incorporating that mark. (Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763.) It is obvious in this case that the Respondent knew of the Complainant and its business. The Respondent was a former client of the Complainant, and his grievance arises from that prior relationship.

The Panel finds that paragraph 4(a)(iii) of the Policy is established.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <mossandcoleman.com> and <mossandcoleman.net> be transferred to the Complainant.

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James A. Barker
Sole Panelist

Dated: October 23, 2006