[Indexed as: E. & J. Gallo v. Hanna]
[Indexed as: BARTLESANDJAYMES.COM et al.]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0615
Commenced: 29 June, 2000
Judgment: 3 August, 2000
Presiding Panelist: David W. Plant
Domain name - Domain name dispute resolution policy - U.S. Service mark - U.S. Trademark - Identical - Confusingly similar - Bad faith registration - Bad faith use Cybersquatter Complaint Constitutionally protected Free speech Consumer advocacy Legitimate interest.
Complainant, E. & J. Gallo Winery, owns trademark BARTLES & JAYMES which is the subject of more than five U.S. federal registrations and 250 registrations worldwide. Respondent, Hanna Law Firm, registered the domain names bartlesandjaymes.com, and bartlesandjaymes.net.
Respondent claims that it registered the domain names for the purpose of creating a Constitutionally protected Consumer Advocacy Free Speech complaint site.
Held, Name Transferred to Complainant.
Respondent does not contest the similarity between the mark and the domain names. Nor does Respondent contest the Policy, Paragraph 4.b. (iv) example of bad faith to the extent that it includes intentionally attempting to attract Internet users by creating a likelihood of confusion. This characterization clearly applies to Respondents conduct.
With respect to a legitimate interest in the two domain names, under United States law, Respondent has the right to establish complaint websites for the purpose of allowing consumers to voice complaints about the Complainant. Respondent further has the right to mention Complainants mark in the text at such a website.
Notwithstanding Respondents free speech rights, it is fair to find
that Respondents selection of the mark for use as addresses for its websites
is not legitimate, or fair use and is designed to mislead and divert complainants
customers to Respondents website.
Respondents abiding motive is to affect adversely the business
of Complainant. Respondents desire to establish complaint websites
may well have been in good faith and legally justified, however, its registration
and use of two domain names virtually identical to the BARTLES & JAYMES
mark as addresses for the websites has been in bad faith and not legally
justified. Free speech does not permit this use of a famous mark. Respondent's
express disclaimers at the sites themselves come too late. A domain
name is not only an address, it is also a personal identifier.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Cases referred to
New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302
(9 Cir.1992)
Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp.2d 1161 (C.D.
Cal. 1998)
Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279
DFO, Inc. v. Christian Williams, WIPO Case No. D2000-0181
Panel Decision referred to
--
Plant, Panelist: -
1. The Parties
Complainant is E. & J. Gallo Winery, 600 Yosemite Boulevard, P.O. Box 1130, Modesto, California 95353, U.S.A. (Gallo). Respondent is Hanna Law Firm, 223 East Market Street, Warrensburg, Missouri 64903, U.S.A. (Hanna Law Firm).
2. Domain Name and Registrar
The domain names in issue are:
bartlesandjaymes.com, and bartlesandjaymes.net.
The registrar is Network Solutions, Inc. (NSI).
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received Gallos
complaint on June 16, 2000, by email, and on June 19, 2000, via hard copy.
The Center verified that the complaint satisfies the formal requirements
of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy),
the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules),
and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
(the Supplemental Rules). Gallo made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is
June 29, 2000.
On June 20, 2000, the Center transmitted via email to NSI a request
for registrar verification in connection with this case. On June 25, 2000,
NSI transmitted via email to the Center NSIs Verification Response, confirming
that the registrant is Hanna Law Firm, and the domain name registrations
in issue are in "Active" status.
On June 23, 2000, the Center received "Supplement to Section V of Complaint".
On June 29, 2000, the Center transmitted Notification of Complaint
and Commencement of the Administrative Proceeding, together with a copy
of the Complaint, via email and post/courier to Hanna Law Firm. The Center
advised that the response was due by July 18, 2000.
On July 11, 2000, the Center received via email Hanna Law Firms response
to the complaint. The response in hard copy was received July 13, 2000.
On July 17, 2000, the Center advised the parties via email that David
W. Plant (USA) had been appointed as the panelist in this proceeding, and
absent exceptional circumstances, the Administrative Panels decision is
due July 30, 2000.
On July 26, 2000, the Center advised the parties that the due date
for this decision had been extended to August 6, 2000.
4. Factual Background; Parties Contentions
a. The Trademarks
The complaint is based on Gallos trademark BARTLES & JAYMES, which
is the subject of more than five U.S. federal registrations and 250 registrations
worldwide (paragraph 12.a.). Printouts regarding such registrations appear
at Annex C to the complaint.
Gallo avers (paragraph 12.d.) the BARTLES & JAYMES mark is famous
worldwide, has been in use since 1984, is "perhaps the most recognized
brand name of coolers [wine coolers and flavored malt coolers] in the world,"
and is "the leading brand in the cooler category in the United States."
In 1999, nearly 5.8 million cases of BARTLES & JAYMES coolers were
shipped to approximately 48 countries and territories.
b. The Complaint
Gallo avers inter alia as follows --
At paragraph 11, (1) the domain names are confusingly similar to the
BARTLES & JAYMES trademark, (2) Hanna Law Firm 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.
At paragraph 12.b., the domain names are not only "confusingly similar",
but also are "essentially identical", to the BARTLES & JAYMES mark.
At paragraph 12.c., Hanna Law Firm lacks rights and legitimate interests
and acted in bad faith.
At paragraph 12.f., on June 5, 2000, Gallo "sent" a cease and desist
letter to Hanna Law Firm. A copy of the "Express Mail" letter is at Annex
D. Hanna Law Firm did not respond to the letter.
At paragraph 12.g., Hanna Law Firm is a "cybersquatter" who has acquired
domain names for other famous marks. A copy of NSIs WHOIS search for the
Hanna Law Firm name appears at Annex E 1.
At paragraph 12.h., Gallos counsel has learned from counsel for Sears
Roebuck and Estee Lauder that, upon receiving a cease and desist letter,
Hanna Law Firms practice is to begin operating "a complaint website."
Gallo "fully expects" to see such a website in retaliation for the June
5 letter. In its Supplement to Section V of Complaint, Gallo states that
on about July 16, 2000, Hanna Law Firm started "two retaliatory complaint
web sites." Copies of pages from the websites are at Annex A1 to the Supplement.
At paragraph 12.i., "Notwithstanding Respondents failure to directly
seek compensation," Hanna Law Firms conduct "unequivocally constitutes
bad faith conduct," especially in light of Hanna Law Firms "pattern of
operating retaliatory web sites after receiving a cease and desist letter
... ."
At paragraph 13, Gallo requests that the domain names in issue be transferred
to Gallo.
c. The Response
Hanna Law Firm does not contest the "similarity" between Gallos marks
and the domain names in issue. Hanna Law Firm does not deny it has registered
"a small number" of domain names that "match other trademarks." (Paragraph
A.1.)
At paragraph A.2., Hanna Law Firm "vigorously denies" that (a) the
domain names were "registered in bad faith," and (b) Hanna Law Firm has
"no legitimate interests in these domain names."
In addition, Hanna Law Firm avers inter alia:
At paragraph A.3. --
(a) Hanna Law Firm registered the domain names "for the purpose of
creating Constitutionally protected Consumer Advocacy Free Speech complaint
sites,"
(b) it is "a strong believer in the public exposition of complaints
against certain corporations and has registered certain domain names and
established complaint sites at those domain names to further this belief,"
(c) it has never used the domain names for any purpose "other than
as a consumer complaint site,"
(d) it believes that allowing consumers to voice complaints about Gallos
company and products "is a fair use and legitimate interest of a trademark
and the domain names,"
(e) it maintains other sites using well-known trademarks "for the purpose
of allowing consumers to voice objections" about the owners of the trademarks,
and
(f) two U.S. federal court opinions are relevant 2.
At paragraph A.4., --
Gallos charge that Hanna Law Firm waits till it receives a cease and
desist letter and then establishes a complaint site is "incorrect and unfounded,"
because inter alia:
(a) Hanna Law Firm began preparations for its SEARSROEBUCK.COM complaint
site "several weeks" before receiving a cease and desist letter,
(b) the sites in issue were operational before receiving Gallos cease
and desist letter,
(c) a printout at Exhibit A shows "not only were parts of the Web site
designed, but also uploaded, as early as June 7, 2000," prior to receipt
of the June 5 letter 3,
(d) "the whole Web site was uploaded and operational on June 7, 2000,"
though "slight changes" were made over the following two days,
(e) Gallo is aware that Hanna Law Firm moved the domain names from
where they were parked to Hostsave, but Gallo claims it never looked "to
see if a Web site also became available at that time" (Hanna Law Firm refers
to Annex A to the complaint),
(f) preparations for "the sites" were begun in February of 2000, referring
to the affidavit of Nancy Hoogstraat at Exhibit B 4, and
(g) the ESTELAUDER.COM site "is currently operational and being used
for its intended purpose as a complaint site" even though Hanna Law Firm
has "never had any contact" with Estee Lauder.
At paragraph A.5. --
Gallo intentionally misrepresents the timing issue (referring to paragraph
12(h) of the complaint and to the supplement to the complaint). Hanna Law
Firm avers inter alia:
(a) the sites in issue were operational on June 7, 2000, before the
June 15, 2000, filing of the complaint here, and
(b) Hanna Law Firms Web server logs show visits in June to "the sites"
by users at the "ejgallo.com" domain name, at the IP address corresponding
to Gallos counsels domain, and at the domain name of another counsel
to Gallo.
At paragraph A.6. --
Gallos assertions that Hanna Law Firm has attempted to circumvent
a claim of bad faith are "unfounded and incorrect." Hanna Law Firm avers
inter alia:
(a) if Hanna Law Firm had such motive, Gallo does not explain why Hanna
Law Firm "would not have taken more immediate steps to establish the alleged
ruse," and
(b) Hanna Law Firm merely established the complaint sites "when it
fit" its schedule --"all within the course of a few weeks, and without
regard to the timing of any cease and desist letters ... ."
At paragraph A.7. --
(a) Hanna Law Firm has refused "a substantial cash offer" from Sears,
and
(b) "disliking the product or actions of multiple trademark holders
(or having family and staff with such tastes) is still not evidence of
bad faith."
At paragraph A.8., Hanna Law Firm avers that none of the fours examples
of bad faith set out in Paragraph 4.b. of the Policy has been established
here, e.g. --
(a) Neither of the domain names in issue has been offered for sale
(Paragraph 4.b.(i)).
(b) Hanna Law Firm did not register the two domain names to prevent
Gallo from reflecting the BARTLES & JAYMES mark in a corresponding
domain name. Gallo has been registering domain names since as early as
1996. Gallo has registered at least 90 domain names. Gallo did not register
the two domain names in issue. BARTLESANDJAYMES.ORG and BARTLES-AND-JAYMES.COM
are still available. Gallo may be able to register its mark as a domain
name in more than 200 top level domains. Gallos true motivation is to
squelch dissent. Gallo does not intend to put a domain name in issue in
active use "reflecting the mark in a corresponding domain name." Gallo
or its attorney has registered GALLOSUCKS.COM, GALLOSUCKS.NET, GALLOSUCKS.ORG,
BARTLESANDJAYMESSUCKS.COM, BARTLESANDJAYMESSUCKS.NET and BARTLESANDJAYMESSUCKS.ORG
5. As of July 7, 2000, only six of Gallos 90 domain names were in use
for "an obvious Web site," and only one did not contain the Gallo name.
(Paragraph 4.b.(ii))
(c) Gallo and Hanna Law Firm are not competitors (Paragraph 4.b.(iii)).
(d) The sites at the domain names in issue are non-commercial sites.
No money is collected. No advertising or sponsorship opportunities are
available. Hanna Law Firm is not referred to at the sites. The domain names
are not for sale. The sites are "solely set up as complaint sites for disgruntled
customers" of Gallo to express their opinions. Both sites contain disclaimers
that they are not affiliated with Bartles and Jaymes 6. (Paragraph 4.b.(iv)).
At Paragraph A.9., Hanna Law Firms urges that Gallo should be held
to have filed the complaint in bad faith and to have abused the administrative
process. Hanna Law Firm avers that Gallo had reason to be aware "the complaint
site" was operational before filing the complaint and supplement "gauged
to make it look like the establishment of the site was a retaliatory act
... ."
5. Discussion and Findings
Paragraph 4.a. of the Policy directs that Gallo must prove, with respect
to each domain name in issue, each of the following:
(i) The domain name in issue is identical or confusingly similar to
the BARTLES & JAYMES mark in issue here, and
(ii) Respondent has no rights or legitimate interests in respect of
the domain name, and
(iii) The domain name has been registered and is being used in bad
faith.
Paragraph 4.b. of the Policy sets out four illustrative circumstances,
which for purposes of Paragraph 4(a)(iii) above shall be evidence of the
registration and use of a domain name in bad faith.
Paragraph 4.c. of the Policy sets out three illustrative circumstances
any one of which, if proved by respondent, shall demonstrate respondents
rights or legitimate interests to the domain name for purposes of Paragraph
4(a)(ii) above.
The illustrative circumstances in Paragraphs 4.b. and 4.c. are not
the only circumstances that may be relevant in a proceeding under the Policy.
a. Identity or Confusing Similarity
Gallo has the burden of proving this element and each of the other
two elements of Paragraph 4.a. of the Policy.
Not only are the BARTLES & JAYMES mark and the domain names in
issue virtually identical on their faces, Hanna Law Firm does not contest
"the similarity between" the BARTLES & JAYMES mark and the domain names.
Nor does Hanna Law Firm attempt to contest the Policy, Paragraph 4.b.(iv)
example of bad faith to the extent the example includes intentionally attempting
to attract Internet users "by creating a likelihood of confusion." This
characterization clearly applies to Hanna Law Firms conduct with respect
to establishing the two complaint websites.
Thus, on this record, both identity and confusing similarity have been
established.
b. Rights or Legitimate Interests
On this record, no challenge has been leveled with respect to (1) the
validity of the BARTLES & JAYMES mark or any registration of the mark,
(2) Gallos rights in the BARTLES & JAYMES mark with respect to Bartles
& Jaymess goods, (3) the global fame and goodwill associated with
the mark, or (4) any fact averred by Gallo as to promotion of the mark,
use of the mark, and shipments of goods under the mark.
Hanna Law Firm does dispute Gallos assertion that Hanna Law Firm has
no rights or legitimate interest in the two domain names in issue. As a
general proposition under United States law, Hanna Law Firm appears to
have the right to establish "complaint websites" for the purpose of "allowing
consumers to voice complaints" about Gallo and Bartles & Jaymes. It
appears also under United States law that Hanna Law Firm has the right
to mention Bartles & Jaymes and its mark in the text at such a website.
However, it is not so clear that Hanna Law Firm is entitled to use the
Bartles & Jaymes name or mark as part of Hanna Law Firms address for
such a complaint website -- notwithstanding Hanna Law Firms right to establish
complaint websites under appropriate circumstances.
On this record it is reasonable to infer that Hanna Law Firms primary
purpose in creating the two websites was to establish two forums in which
to register complaints with respect to Bartles & Jaymes. Gallo recognizes
that the websites in issue are "complaint" websites. Even if Hanna Law
Firm proceeded to establish a complaint website after being provoked by
a cease and desist letter (which Hanna Law Firm denies) or for a misguided
and baseless dislike of Gallo or Bartles & Jaymes, it may well have
had a right to do so. However, the issue remains as to whether or not Hanna
Law Firm had the right to use the Bartles & Jaymes name and mark as
Hanna Law Firms address for the websites in issue here.
Many addresses are available which would not impinge in anyway on the
BARTELS & JAYMES mark. Hanna Law Firm consciously chose two addresses,
each using the BARTLES & JAYMES mark, or a confusingly similar variant,
to lead Internet users to the sites. The uncontested global fame of the
BARTLES & JAYMES mark is likely to lead Internet users to the complaint
sites as readily as to any other site relating to Bartles & Jaymess
products. This undoubtedly is Hanna Law Firms hope. Indeed, Internet users
would have every reason to believe that, until they actually arrived at
one of the Hanna Law Firm complaint sites, they were on their way to visiting
a Bartles & Jaymes sponsored or authorized website. Hanna Law Firm
is consciously counting on initial confusion to divert Internet users from
sites meant to promote Bartles & Jaymess products to the Hanna Law
Firm complaint websites. As noted in Section 5.a. above, Hanna Law Firm
has not disavowed it has "intentionally attempted to attract ... Internet
users ... by creating a likelihood of confusion" (Policy, Paragraph 4.b.(iv)).
Hanna Law Firms express disclaimers at the sites themselves come too
late 7. A domain name is not only an address, it is also a personal identifier.
Hanna Law Firm is here using this identifier (a) to induce a visitor to
a site in order to criticize the very entity whose name is used as the
address for the site, and (b) to divert the visitor from a legitimate site
authorized by the entity.
The Panel does not find as a fact, and does not suggest, that Hanna
Law Firms complaint websites are being utilized to sell goods or services.
The invitation at each website to "Contact us" and to "fill out the provided
form" may fuel speculation that the Hanna Law Firm has developed a creative
way to find clients for its personal injury practice. However, this is
only speculation and is not grounded in any evidence in the record. The
Panel finds, on this record, that Hanna Law Firms use of the two complaint
websites is "noncommercial" (Policy, Paragraph 4.c.(iii)) and is not for
"commercial gain" (Policy, Paragraph 4.b.(iv)).
However, Hanna Law Firm was not justified by any legitimate considerations
to use the BARTLES & JAYMES mark in Hanna Law Firms two website addresses.
Bally Total Fitness does not avail Hanna Law Firm, because the Bally court
made it plain that, in contrast to the situation here, defendant "does
not use Bally in his domain name." Also, the 1992 New Kids on the Block
opinion is not in connection with a domain name dispute and does not address
the Policy considerations which govern here. It is not difficult to conclude
that Hanna Law Firms choice of the two domain names was to enable Hanna
Law Firm to tarnish the BARTLES & JAYMES mark and to disrupt Bartles
& Jaymess business. That is the inherent, inevitable result of Hanna
Law Firms use of the mark to entice Internet users to the complaint websites.
The availability of numerous other addresses for the complaint websites,
plus the virtual identity between the BARTLES & JAYMES mark and the
addresses for the two websites, buttress this conclusion. Notwithstanding
Hanna Law Firms free speech rights, it is fair to find that Hanna Law
Firms selection of the BARTLES & JAYMES mark for use as the addresses
of two complaint websites is not legitimate, is not fair use, and is designed
to mislead and divert Bartles & Jaymess customers and potential customers
to the complaint websites in order to tarnish the BARTLES & JAYMES
mark, in violation of the Policy, Paragraphs 4.a.(ii) and 4.c.(iii).
c. Registration and Use in Bad Faith
Registration and use of the domain names in issue in bad faith are
matters of the appropriate inferences to draw from circumstantial evidence.
Both registration in bad faith and use in bad faith must be proved by Gallo.
The record here shows that Hanna Law Firm has run afoul of the Policy,
Paragraph 4.b.(iii) 8
Hanna Law Firms abiding motive is plainly to affect adversely the
business of Bartles & Jaymes and to tarnish the BARTLES & JAYMES
mark. Hanna Law Firm does not contend otherwise 9. Indeed, that is undoubtedly
an ultimate purpose of the two complaint sites. It is unlikely that Hanna
Law Firm has established its two complaint websites to encourage endorsements
and enhance good will for Bartles & Jaymes and its products. Such a
positive purpose was not intended and was to be avoided. This inference
is reinforced by Hanna Law Firms argument that "disliking the products
or actions of multiple trademark holders" is not evidence of bad faith.
Hanna Law Firm and Bartles & Jaymes are not "competitors" (cf.
Paragraph 4.b.(iii)) in a strict product v. product sense. But this does
not end a Paragraph 4.b.(iii) inquiry 10. Paragraph 4.b. simply provides
illustrative examples of evidence that establishes bad faith. Here, Hanna
Law Firms enthusiastically declared purpose of the two websites makes
it plain that the two domain names are likely to divert potential Bartles
& Jaymes customers from authorized Gallo sites to one or both of the
complaint sites. This likelihood is aggravated by Hanna Law Firms selection
of two versions of the BARTLES & JAYMES mark, i.e. the ".com" and the
".net" versions, and the establishment of two separate complaint websites.
This is hardly necessary and hardly consistent with a good faith use of
the mark as a domain name. Taking unnecessary steps to enhance the prospects
of disrupting Bartles & Jaymess business and tarnishing its mark are
not consistent with a bona fide endeavor. On the other hand, they are consistent
with an attempt to dilute the famous BARTLES & JAYMES mark.
Hanna Law Firms contention that BARTLESANDJAYMES.ORG and BARTLES-AND-JAYMES.COM
are still available to Gallo is disingenuous. If Gallo were to establish
a website at either or both of these domain names, it would only exacerbate
the confusion caused by Hanna Law Firms registration and use of the two
complaint websites. The ordinary Internet user would likely believe --
erroneously -- that all four domain names were addresses of authorized
sites. If the Internet user first visited a Hanna Law Firm site, the Internet
user would not only have been confused with regard to that site, but it
is also likely that the user would assume that some or all of the other
websites were complaint sites. This would further Hanna Law Firms objective
of tarnishing the BARTLES & JAYMES mark and disrupting Bartles &
Jamess business.
On this record, it is fair to infer that, while Hanna Law Firms desire
to establish a complaint websites may well have been in good faith and
legally justified, its registration and use of two domain names virtually
identical to the BARTLES & JAYMES mark as addresses for the website
have been in bad faith and not legally justified. Free speech does not
permit this use of a famous mark. As stated in the decision in WIPO Case
No. D2000-0300 --
"... the right to express ones views is not the same as the right
to use anothers name to identify oneself as the source of those views."
11
d. Paragraph 4.c. Factors
With respect to the domain name in issue, Hanna Law Firm has attempted
to show that the first and the third circumstances set out in Paragraph
4.c. of the Policy must be resolved in Hanna Law Firms favor, viz.:
(i) before any notice to Hanna Law Firm of the dispute, its use of
or demonstrable preparations to use the domain name were in connection
with a bona fide offering of goods or services, and
(iii) Hanna Law Firm is making 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."
Hanna Law Firm does not aver that it or a related entity has been commonly
known by the domain name (cf. Paragraph 4.c.(ii) of the Policy).
As to timing, the record is in conflict. Gallos unsupported speculations,
Hanna Law Firms averments (including the conclusory Hoogestraat affidavit),
and the closeness of the date of the June 5 letter and the June 7 start
up of the websites 12, leave much to be desired as a matter of credible
evidence 13. The Panel can not conclude with any comfort that, before any
notice to Hanna Law Firm of "the dispute" Hanna Law Firm had used or prepared
to use the domain names. Nor can the Panel conclude that Hanna Law Firms
conduct was not retaliatory 14. However, affording Hanna Law Firm the benefit
of any doubt on these scores, the use by Hanna Law Firm of the BARTLES
& JAYMES mark for two domain names still was not bona fide, as we have
shown above.
As to "legitimate noncommercial or fair use of the domain name[s],
without intent for commercial gain," Hanna Law Firm has twice used the
BARTLES & JAYMES mark as addresses for concurrently existing complaint
websites. Hanna Law Firms inherent, if not conceded, purpose in so doing
is to tarnish the mark and to disrupt Bartles & Jaymess business.
These findings buttress the conclusion in Section 5.c. above that Hanna
Law Firms registration and use of the two domain names have been in bad
faith 15.
6. Decision
In light of the findings by the Panel, the Panel concludes that Gallo
has met its burden of proving (a) the two domain names in issue are identical
to the BARTLES & JAYMES mark, (b) Hanna Law Firm has no rights and
no legitimate interest in respect of the domain names in issue, and (c)
the domain names in issue have been registered and are being used by Hanna
Law Firm in bad faith.
Accordingly, the Panel requires that the registration of the "bartlesandjaymes.com"
and "bartlesandjaymes.net" domain names be transferred to Gallo.
Footnotes:
1. Copies of NSI WHOIS printouts for the two domain names
in issue appear at Annex A. They show the record for the ".com" domain
name was created June 21, 1999; and the record for the ".net" domain name,
June 24, 1999.
2. New Kids on the Block v. News America Publishing,
Inc., 971 F.2d 302 (9 Cir.1992); Bally Total Fitness Holding Corp. v. Faber,
29 F. Supp.2d 1161 (C.D. Cal. 1998).
3. Hanna Law Firm avers a "return receipt" was attached
to the letter. Such a receipt is not part of this record.
4. The June 22, 2000, Hoogstraat affidavit states in
terse, conclusory terms -- "preparations for the construction" of the two
websites "began in February of 2000," and the websites "were operational
on June 7, 2000."
5. We note that the NSI WHOIS information as to these
six domain names (Exhibit C) shows that they were registered June 16, 2000,
by Weinberg Legal Group, Gallos counsel in this proceeding.
6. These statements are: "We are not affiliated with
Bartles and Jaymes in any way," and "This site is in no way affiliated
with Bartles and Jaymes."
7. The first words a visitor to either complaint site
sees are:
"Got a complaint about Bartles and Jaymes? This is a
place you can voice it.
"HAVE A COMPLAINT ABOUT BARTLES AND JAYMES?"
The disclaimers appear later in the text at the websites.
8. In support of its contention that the two domain names
are not for sale (Paragraph 4.b.(i)), Hanna Law Firm avers that it has
turned down "a substantial cash offer" from Sears. Without knowing the
circumstances surrounding the "offer" (e.g., Was it solicited or unsolicited?
Was it insufficient even though "substantial"?), the Panel can rely (and
does rely) only on Hanna Law Firms unchallenged averments that the two
domain names are not for sale. Indeed, Gallo refers to Hanna Law Firms
"failure directly to seek compensation."
9. Hanna Law Firm challenges the applicability of Paragraph
4.b.(iii) only on the ground that Hanna Law Firm and Gallo are not "competitors".
10. See decision in WIPO Case No. D2000-0279 for a discussion
of the term "competitor".
11. See also the decision in WIPO Case No. D2000-0181.
12. Gallo avers the June 5 "Express Mail" letter was
"sent" on June 5. It does not aver the letter was deposited at a U.S. Postal
Service Express Mail desk on June 5. If the June 5 letter had been so deposited,
it should have arrived June 6. If it were not deposited until June 6 or
later, Hanna Law Firms averments as to its June 7 website activities are
entirely plausible. The Panel is left with the impression that there is
more to this aspect of the dispute than has been revealed by either party.
13. Gallos Annex A suggests that the two domain names
in issue were registered with NSI in June 1999. Hanna Law Firms averments
at Paragraph A.5. as to (1) operation before the filing of the complaint
here and (2) visits to the sites are of no help. Nor are Hanna Law Firms
gratuitous and conclusory remarks at Paragraph A.6.
14. Gallos averments as to Hanna Law Firms conduct
vis-a-vis Sears Roebuck and Estee Lauder are hearsay and not reliable.
Hanna Law Firms averment that it simply put the two complaint websites
into operation to fit its schedule rings hollow in light of its averment
that it began preparing for the websites in February 2000 -- when it was
not until June 7, closely proximate in time to the date of the June 5 letter,
that they were up and running.
15. Hanna Law Firms attempt to paint Gallo as the party
acting in bad faith in initiating this proceeding (paragraph A.9.) is not
persuasive.
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