Preston Gates & Ellis, LLP v. American Distribution Systems dba DefaultData.com

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

A. Complainant

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.

B. Respondent

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 [1];

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.

7. Decision

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

Sole Panelist

Dated: February 13, 2002

Footnote:

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).