v.
American Distribution Systems, Inc. et al.
[Indexed as: Hunton & Williams v. American Distribution Systems]
[Indexed as: HUNTONANDWILLIAMS.COM et al.]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. WIPO D2000-0501
Commenced: 9 June, 2000
Judgment: 1 August, 2000
Presiding Panelist: Richard W. Page
Domain name - Domain name dispute resolution policy - Service mark - Identical - Confusingly similar - Secondary meaning - No legitimate interest - Disparagement not parody - Bad faith registration - Bad faith use - Valuable Consideration in Excess of Out of Pocket Costs - Common law mark - Famous marks - Disruption of business.
Complainant has used the service mark HUNTON & WILLIAMS since 1976 throughout the world to identify the firms legal services and to distinguish them from those of its competitors. Complainant owns the domain name www.hunton.com. Respondent registered the domain names huntonandwilliams.com and huntonwilliams.com, and placed disparaging remarks regarding Complainant on web sites connected thereto. Similar to previous cases involving other law firms, when contacted Respondent refused transfer of domain name unless sum in excess of registration fees was paid.
Held, Name Transferred to Complainant.
Complainant presented sufficient evidence that the name HUNTON & WILLIAMS has acquired secondary meaning within the legal and business community to constitute a valid common law service mark. The domain names are the functional equivalents of this service mark, and thus suffice as being identical or confusingly similar. Respondent has no apparent purpose other than to tarnish the reputation of the Firm, and therefore has no rights or legitimate interest in the domain names for reasons of parody or otherwise.
Respondents registration of more than 65 domain names incorporating the names and marks of famous law firms, its trade name NameIsForSale.com, and its refusal to transfer the domain names without payment in excess of the out-of-pocket costs demonstrate that Respondent in this instance have registered the domain names in bad faith. Further, the Respondents primary purpose being to harass and defame the firm shows it to have used the domain names in bad faith; the content posted by Respondent on its websites does not constitute parody or other fair use.
Policies referred to
ICANN Rules for Uniform Domain Name Dispute Resolution Policy
Supplemental Rules for Uniform Domain Name Dispute Resolution Policy
Cases referred to
Morrison & Foerster, L.L.P. v. Wick, et al., 2000 WL 432774 (D.Colo. Apr. 19, 2000).
Panel Decisions referred to
Julia Fiona Roberts v. Russell Boyd, ICANN Case No. D2000-0210 (WIPO).
Telstra Corporation Limited v. Nuclear Marshmellows, ICANN Case No.
D2000-0003 (WIPO).
Page, Panelist: -
1. The Parties
Complainant is Hunton & Williams (the "Firm"), an international
law firm operating as a general partnership under the laws of the Commonwealth
of Virginia, USA. The Firm maintains its principal place of business at
Riverfront Plaza, East Tower, 951 East Byrd Street, Richmond, Virginia
23219, USA.
Respondent is American Distribution Systems, Inc. dba NamesForSale.com,
ADSI and DefaultData.com with a mailing address of P.O. Box 481002, Denver,
Colorado 80248, USA. The president and principal of Respondent is Brian
Wick located in Denver, Colorado 80210, USA.
2. The Domain Name(s) and Registrar(s)
The domain names at issue are "huntonandwilliams.com" and "huntonwilliams.com"
(the "Domain Names"). The registrar is Register.com., whose address is
575 Eighth Avenue, 11th Floor, New York, NY 10018, USA.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the
Complaint of Complainant on May 29, 2000. The Complainant paid the required
fee.
On May 29, 2000, the Center sent to the Registrar a request for verification
of registration data.
On May 30, 2000, the Center sent an Acknowledgment of Receipt of Complaint
to Complainant.
On May 30, 2000, 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").
On June 7, 2000, the Registrar confirmed, inter alia, that it is the
registrar of the Domain Names and that the Domain Names are registered
in the Respondent's name.
On June 9, 2000, the Center sent a Notification of Complaint and Commencement
of Administrative Proceeding to the Respondent together with copies of
the Complaint, with a copy to the Complainant. This notification was sent
by the methods required under paragraph 2(a) of the Rules.
On July 3, 2000, the Center received the Response and sent Acknowledgments
of Receipt of the Response.
After the Center received a completed and signed Statement of Acceptance
and Declaration of Impartiality and Independence from Richard W. Page,
Esq. (the "Sole Panelist"), the Center notified the parties of the appointment
of a single-arbitrator panel consisting of the Presiding Panelist.
4. Factual Background
The Firm was founded in 1901 by four lawyers, including Eppa Hunton,
Jr. and Edmund Randolph Williams and was first known as Munford, Hunton,
Williams & Anderson. In 1927, the Firms name was changed to Hunton,
Williams, Anderson & Gibson. Since 1927, the Firm has used the names
Hunton and Williams as the two leading names in its name. In 1976, the
Firms name was shortened to Hunton & Williams. The Firm has been providing
legal services under the name Hunton & Williams since 1976.
The Firm provides high quality legal services to a wide range of clients.
It has become one of the nation's top 20 law firms, with more than 680
attorneys in offices worldwide. The Firm has offices in Atlanta, Bangkok,
Brussels, Charlotte, Hong Kong, Knoxville, London, McLean, Miami, New York,
Norfolk, Raleigh, Richmond, Washington D.C., and Warsaw. The Firm, among
other things, provides legal services to international corporations, financial
institutions, closely held companies, tax exempt organizations, and technology-related
companies. Its attorneys have expertise in 50 distinct practice areas.
Since it was founded, the Firm has been a leader in community service
and pro bono work. The Firm was a charter member of the American Bar Association's
Law Firm Pro Bono Challenge. In a 1996 survey by American Lawyer magazine
of the nation's top one hundred law firms, the Firm was one of only ten
awarded an "A" rating for pro bono work. The Firm was also ranked highest
in the nation in the number of its attorneys (76.44%) who worked more than
twenty pro bono hours annually. The Firm maintains a website at www.hunton.com.
The Firm asserts that it has a service mark HUNTON & WILLIAMS which
is known throughout the United States and in many locations worldwide for
the provision of high quality legal services and pro bono community services
in a wide range of legal fields. The Firm further asserts that its service
mark is inherently distinctive and has acquired distinctiveness.
Since 1976, the HUNTON & WILLIAMS service mark has been continuously
used throughout the United States and the world to identify the Firms
services and to distinguish them from those of its competitors.
On January 21, 2000, the Firm filed an application to register its
service mark HUNTON & WILLIAMS with the United States Patent and Trademark
Office. The application is pending, and has been assigned Serial No. 75/901,176.
On or about October 24, 1999, the domain names "huntonandwilliams.com"
and "huntonwilliams.com" were registered by a company called NameIsForSale.com,
one of the dbas of Respondent.
The Domain Names resolve to websites upon which Respondent placed the
following content:
PARASITES - no soul . . . no conscience . . . no spine . .. . NO PROBLEM!!!
This text appears twice, once against a background of human skulls.
Respondent also included the following content on the websites:
Biological Definition: A parasite is an organism that grows, feeds,
and is sheltered on or in a different organism while contributing nothing
to the survival of its host.
Websters Definitions: One who habitually takes advantage of the generosity
of others without making any useful return. One who lives off and flatters
the rich; a sycophant.
Additionally, Respondents websites have advertised products, in the
form of T-shirts, and contain the following advertisement for these products:
We sell clothing, namely T-shirts for the sole purpose of covering
expenses required to keep this site active.
We bend over for you . . because you bend over for us!
As long as someone is bending over . . . then someone is getting paid!
Make sure you are bending over the right way!
We tell you what you want to hear . . . because you pay us! Greed is
Good!
Respondent has registered the trademarks of numerous other famous professional
service firms as Internet domain names. Respondent has claimed that it
owns the following domain names:
adamsanddreese.com altheimergray.com andrewsandkurth.com arnsteinlehr.com arterandhadden.com bakerandhostetler.com bakeranddaniels.com balchbingham.com bellboydlloyd.com broadcassel.com burrandforman.com carlsmithball.com chapmancutler.com clausenmiller.com danconapflaum.com davispolkwardwell.com daviswrighttremaine.com dechertpricerhoads.com drinkerbiddlereath.com dykemagossett.com epsteinbeckergreen.com fenwickandwest.com foleyandlardner.com fulbrightandjaworski.com garderewynne.com gibsondunnandcrutcher.com gibsondunncrutcher.com grahamjames.com hallandevans.com hollandandhart.com holmerobertsowen.com hopkinssutter.com hugheshubbardreed.com huntonandwilliams.com huntonwilliams.com icemillerdonadioryan.com jacksonandkelly.com jonesdayreavispogue.com johnsonbell.com kattenmuchinzavis.com kelleydryewarren.com kenyonkenyon.com kirklandandellis.com lathropandgage.com loebloeb.com lordbissellbrook.com mayerbrownandplatt.com mcdermottwillemery.com mcglincheystafford.com mckennaandcuneo.com milesandstockbridge.com morganlewisbockius.com morrisonandfoerster.com morrisonhecker.com nealgerberandeisenberg.co nealgerbereisenberg.com pillsburymedisonsutro.com piperandmarbury.com proskauerrose.com quarlesbrady.com querreyharrow.com rivkinradlerkremer.com rogerswells.com ropesandgray.com rosenmancolin.com rossandhardies.com schiffhardinwaite.com schulterothzabel.com shermanhoward.com shookhardyandbacon.com shuttsbowen.com steelhectordavis.com steptoeandjohnson.com strasburgerprice.com thompsonhineflory.com vinsonandelkins.com wilgotshalmanges.com whiteandcase.com williamsconnolly.com
At least two federal district courts and the National Arbitration Forum
have concluded that Respondent acted in bad faith by registering some of
the domain names listed above, and have ordered that the domain names be
transferred to the trademark owners.
On March 9, 2000, the United States District Court for the Northern
District of Ohio ordered Brian Wick and NameIsForSale.com to surrender
the domain name "jonesdayreavispogue.com" and "jonesdayreavisandpogue.com"
to the law firm Jones, Day, Reavis & Pogue.
On March 14, 2000, the law firm Morrison & Foerster initiated an
ICANN action against Respondent. On April 17, 2000, the National Arbitration
Forum ordered that the domain names "MorrisonFoerster.com" and "MorrisonandForester.com"
be transferred to the law firm Morrison & Foerster. The National Arbitration
Forum found that:
Respondents bad faith cyberpiracy is evident from the manner and use
of these registrations and of other protected names. Respondents purpose
in acquiring the domain names and establishing the associated websites
is four-fold:
(1) to sell, rent or otherwise transfer the domain name registrations
to the owner of the service mark that protects the domain names, Morrison
& Foerster, or to a competitor of Morrison & Foersters, for valuable
consideration in excess of Respondents out-of-pocket costs related to
the domain name;
(2) to prevent Morrison & Foerster from reflecting its service
mark as a domain name;
(3) to disrupt Morrison & Foersters business;
(4) and to intentionally attempt to attract, for commercial gain, Internet
users to Respondents websites by creating a likelihood of confusion with
Morrison & Foersters service mark as to the source, sponsorship, affiliation
or endorsement of Respondents websites, and of any products or services
on Respondents websites."
The United States District Court for the District of Colorado also
ordered Brian Wick and American Distribution Systems, Inc. to transfer
four domain names which were identical or confusingly similar to Morrison
& Foersters famous and distinctive service mark. The Court's finding
of bad faith was based primarily on Wick's testimony in which he admitted
that he was on a "rampage" against corporate America and the legal community
and took pleasure in seeing others "squirming around over 70 bucks." The
Court further found evidence that (1) Wick had no intellectual property
rights in the domain names; (2) the domain names do not consist of his
name; (3) Wick did not use the domain names to offer any bona fide goods
or services; (4) his use was confusing and disparaging; (5) he intended
to divert the firm's clients; (6) Wick's intent to sell the domain names
can be inferred from his use of NameIsForSale.com and the content in Wick's
site; (7) Wick provided incomplete and inaccurate contact information to
the registrar and changed his contact information while the proceeding
was pending, and (8) Wick registered the names of over 90 law firms. Morrison
& Foerster, L.L.P. v. Wick, et al., 2000 WL 432774 (D.Colo. Apr. 19,
2000).
On January 18, 2000, the Firm sent a letter informing Brian Wick and
NameIsForSale.com that it objected to the Respondents registration and
use of the Domain Names. The letter demanded that Wick and NameIsForSale.com
immediately cancel the registrations of the Domain Names or transfer the
registrations to the Firm.
Respondent did not respond to the Firms January 18, 2000 letter. On
or about February 18, 2000, Respondent changed its contact information
to:
ADSI
PO Box 481002
Denver, Colorado 80248
The Firm inquired about the existence of ADSI with the Colorado Secretary
of State, and was informed that the Secretary did not have a listing for
ADSI. However, ADSIs purported phone number listed in the WHOIS Database
corresponded with a corporation named American Distribution Systems, Inc.
The registered agent for American Distribution Systems, Inc. is Brian Wick,
an individual residing in Denver, CO 80210.
On March 22, 2000, the Firms counsel contacted Brian Wick to obtain
a response to the January 18, 2000, letter. Respondent would not agree
to cancel the Domain Name registrations or transfer them to the Firm unless
the Firm would agree to pay a sum in excess of the fees actually paid to
the registrar. Although Brian Wick indicated that Respondent did not have
counsel for the purpose of this dispute, he indicated that his counsel
would contact the Firms counsel to discuss a possible resolution.
On April 6, 2000, the Firms counsel left a voice mail message attempting
to contact Respondent to determine whether it still intended to have its
counsel contact the Firms counsel to resolve this matter. Neither Respondent
nor its counsel returned this telephone call.
On or about March 21, 2000, Respondent again changed its contact information
regarding the Domain Names indicating that Respondents new contact information
was:
DefaultData.com
PO Box 481002
Denver, Colorado 80248.
The Firm asked the Colorado Secretary of State whether DefaultData.com
existed as a Colorado business entity and was informed that no such entity
was registered with the State of Colorado. DefaultData.com is listed in
the LEXIS corporate database as a trade name for American Distribution
Systems, Inc.
5. Parties Contentions
A. The Firm contends that it has a service mark in HUNTON & WILLIAMS
and that the Domain Names are identical with and confusingly similar to
the HUNTON & WILLIAMS service mark pursuant to the Policy paragraph
4(a)(i).
The Firm contends that Respondent has no rights or legitimate interest
in the Domain Names pursuant to the Policy paragraph 4(a)(ii).
The Firm contends that Respondent registered and is using the Domain
Names in bad faith in violation of the Policy paragraph 4(a)(iii).
B. Respondent contends that the Firm cannot have a service mark in
the two last names "hunton" and "williams" and that the Firm has failed
to present any evidence of confusing similarity of the Domain Names to
the purported service mark.
Respondent contends that it does have rights or legitimate interest
in the Domain Names because it registered the Domain Names in dispute,
together with other domain names, to create public forum comedy clubs and
parodies.
Respondent contends that its registration and use of the Domain Names
is protected as free speech by the First Amendment to the United States
Constitution, is otherwise lawful as non-commercial and fair use and cannot
be deemed to be in bad faith.
6. Discussion and Findings
1) Identity or Confusing Similarity
The Firm asserts that it has a service mark in the name "Hunton &
Williams" and has applied to the United States Patent and Trademark Office
for registration. Respondent asserts that trademark protection is not available
for last names and that the "&" separating two last names is inconsequential.
The Sole Panelist finds that the name "Hunton & Williams" is capable
of acquiring secondary meaning. See Julia Fiona Roberts v. Russell Boyd,
WIPO Case No. D2000-0210.
The Panel further decided that registration of her name as a registered
trademark or service mark was not necessary and that the name "Julia Roberts"
has sufficient secondary association with Complainant that common law trademark
rights do exist under United States trademark law.
The Firm has presented sufficient evidence that the name "Hunton &
Williams" has acquired secondary meaning within the legal and business
community to constitute a valid common law service mark. In addition, the
Firm has sought registration of the service mark, although such registration
is not essential. The purported surveys by Respondent of people who failed
to associate the service mark HUNTON & WILLIAMS with the Firm make
no showing of statistical relevance and are therefore not persuasive.
The "&" sign commonly used in the names of law firms in the United
States is not used in the creation of domain names. The functional equivalent
of the "&" sign is the word "and" or the deletion of the sign. Therefore,
the domain names "huntonandwilliams.com" and "huntonwilliams.com" are the
functional equivalents of the service mark HUNTON & WILLIAMS.
Therefore, the Sole Panelist finds the Firm has rights in the service
mark HUNTON & WILLIAMS and that the Domain Names are identical with
or confusingly similar to the HUNTON & WILLIAMS service mark pursuant
to the Policy paragraph 4(a)(i).
2) Rights or Legitimate Interest
Policy paragraph 4(c) allows three methods for Respondent to demonstrate
that it has rights or a legitimate interest in the Domain Names:
(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.
The Firm asserts that Respondent has no authorization or license to
use the HUNTON & WILLIAMS service mark and can show none of the circumstances
contemplated by the Policy paragraph 4(c).
Respondent contends that it does have rights or legitimate interest
in the Domain Names because it registered the Domain Names in dispute,
together with other domain names, to create public forum comedy clubs and
parodies. Such a purpose constitutes a legitimate noncommercial or fair
use pursuant to the Policy paragraph 4(c)(iii).
Websters Seventh New Collegiate Dictionary defines "parody" as "a
literary or musical work in which the style of an author or work is closely
imitated for comic effect or in ridicule."
The content posted by Respondent does not constitute the imitation
of any distinctive style of the Firm. The content is merely disparagement
of the Firm as greedy, parasitical and unethical. The Policy paragraph
4(c)(iii) does not allow content which is intended merely "to tarnish the
trademark or service mark at issue." Respondent has no apparent purpose
other than to tarnish the reputation of the Firm.
Therefore, the Sole Panelist finds that Respondent has no rights or
legitimate interest in the Domain Names pursuant to the Policy paragraph
4(a)(ii).
3) Bad Faith
The Policy paragraph 4(b) sets forth four criteria for bad faith registration
and use of domain names:
(i) circumstances indicating that you have registered or you have acquired
the domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the complainant who is the
owner of the trademark or service mark or to a competitor of that complainant,
for valuable consideration in excess of your documented out-of-pocket costs
directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct;
or
(iii) you have registered the domain name primarily for the purpose
of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to
attract, for commercial gain, Internet users to your web site or other
on-line location, by creating a likelihood of confusion with the complainant's
mark as to the source, sponsorship, affiliation, or endorsement of your
web site or location or of a product or service on your web site or location.
The Sole Panelist finds that Respondent has engaged in activities meeting
each of the criteria under the Policy paragraphs 4(b)(i) and (ii) for bad
faith:
(i) Respondents registration of more than 65 domain names incorporating
the names and marks of famous law firms, its trade name NameIsForSale.com,
and its refusal to transfer the domain names without payment in excess
of the out-of-pocket costs demonstrate that Respondent acquired the domain
names exclusively for the purpose of selling the names to the Firm for
valuable consideration in excess of Respondents out-of-pocket costs in
registering the domain names.
(ii) Respondent has engaged in a pattern of registrations including
the names of many prominent law firms which prevents the owners of the
trademarks or service marks from reflecting the mark in a corresponding
domain name.
The criteria listed in the Policy paragraph 4(b) are not the exclusive
means of proving bad faith. Telstra Corporation Limited v. Nuclear Marshmellows,
WIPO Case No. D2000-0003.
Respondents bad faith is further evidenced by Respondents attempts
to hide its true identity behind several different trade names, by using
a post office box address instead of its actual address, and by using false
names for contact persons such as "Billing Contact" instead of the name
of an actual person. Telstra Corporation Limited v. Nuclear Marshmallows,
Case No. D2000-0003 (WIPO February 18, 2000) (bad faith use based on use
of a post office box and changing contact information during the time that
complainant was trying to contact respondent).
Respondents bad faith is further evidenced by its primary purpose
of harassing the Firm, diverting the Firms clients to websites that disparage
and defame the Firm, and interfering with the Firms business. Although
Respondent is not a competitor of the Firm invoking the Policy paragraph
4(b)(iii), such activity forms an independent act of bad faith.
Respondent contends that its registration and use of the Domain Names
is protected as free speech by the First Amendment to the United States
Constitution, is otherwise lawful as non-commercial and fair use, and cannot
be deemed to be in bad faith. The Sole Panelist has found above that the
content posted by Respondent on its websites does not constitute parody
or other fair use. Therefore, it is not protected either under the First
Amendment of the United States Constitution or the Anticybersquatting Consumer
Protection Act.
Therefore, the Presiding Panelist finds that Respondent has registered
and used the Domain Names in bad faith pursuant to the Policy paragraph
4(a)(iii).
7. Decision
The Sole Panelist concludes (a) that the domain names "huntonandwilliams.com"
and "huntonwilliams.com" are confusingly similar to the service mark HUNTON
& WILLIAMS, (b) that Respondent has no rights or legitimate interest
in the domain name and (c) that Respondent registered and used the domain
name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy
and 15 of the Rules, the Panel orders that the Domain Names be transferred
to the law firm Hunton & Williams.
Domain Name Transferred