[Indexed as:
Morrison & Foerster v. Wick and ADS]
[Indexed as:
morrisonfoerster.com et al.]
National Arbitration
Forum
Arbitrators
Decision
Decision: Forum
File No.: FA0003000094301
Judgement:
April 17, 2000
Arbitrator: Judge Paul A. Dorf, (ret.)
Failure to respond - Failure to use domain name as evidence of bad faith - Common misspelling of trademark as domain name - Failure to maintain accurate contact information - Cyberpiracy.
Complainant has been offering and providing legal services exclusively under the trademark MORRISON & FOERSTER since 1975. Complainant owns trademark registrations for the service mark MORRISON & FOERSTER for legal services. Respondents, using the names NameIsForSale.com and Morri, Son & Foerster, registered the domain names morrisonfoerster.com, morrisonandfoerster.com, morrisonforester.com and morrisonandforester.com. Complainant filed its complaint with the National Arbitration Forum in compliance with the rules. Respondent did not submit a response to The Forum.
Held, Domain name Transferred.
Respondents'
bad faith cyberpiracy is evident from the manner and use of these registrations.
Respondents
have not used the domain names in connection with the bona fide offering
of any goods or services or with a legitimate noncommercial or fair use.
Respondents are using the domain names with the intent to misleadingly
divert consumers to Respondents' websites for commercial gain and to tarnish
Morrison & Foerster's service mark by defaming and disparaging
Morrison
& Foerster's goodwill and reputation. Respondents' registration
of domain names with a common misspelling of Morrison & Foerster and
domain names with variations on the names of other well-known law firms
shows that Respondents are aware of the likelihood that current and potential
clients using the Internet to locate information about Morrison & Foerster
may very well find Respondents' websites instead of Morrison & Foerster's.
Respondents intentionally have failed to maintain accurate contact information, or have provided material and misleading false contact information, for the domain name registration records for morrisonfoerster.com, morrisonandfoerster.com, morrisonforester.corn and morrisonandforester.com.
PROCEDURAL FINDINGS
Domain Names:
morrisonfoerster.com;morrisonforester.com;
morrisonandfoester.com;
and morrisonandforester.com
Domain Name Registrar: Register.com, Inc. c/o Transfers & Changes
Response Due Date: April 6, 2000
The Complainant filed its complaint with the National Arbitration Forum on March 9, 2000. In compliance with the rules, The Forum transferred the Complaint to the Respondent on March 14, 2000. The Respondent did not submit a response to The Forum within twenty (20) days, which would have been April 6, 2000.
The Respondent
registered the domain name with Register.com c/o Transfers & Changes,
the entity that is the Registrar of the domain name. By registering its
domain name Register.com c/o Transfers & Change the Respondent agreed
to resolve any dispute regarding its domain name through ICANN'S Uniform
Domain Name Dispute Resolution Policy.
FINDINGS OF FACTS
The manner in which the domain name(s) are identical or confusing are set out herein below:
Morrison & Foerster has been offering and providing legal services exclusively under the trademark MORRISON & FOERSTER® since 1975. The firm has used the name "Morrison" in its firm name throughout its history, and has used the name "Foerster" since 1946. From 1946 through 1955 the firm did business as Morrison, Foerster, Holloway, Shuman & Clark, and from 1955 through 1975 it did business as Morrison, Foerster, Holloway, Clinton & Clark.
Morrison &
Foerster owns United States Trademark Registration No. 1,665,352 for the
service mark MORRISON & FOERSTER® for legal services. This registration
issued on November 19, 1991, from an application filed on November 26,
1990. That application records a first use date for the service mark MORRISON
& FOERSTER® of 1975. Morrison & Foerster's service mark is
incontestable because it has been in continuous use for five consecutive
years
following
federal registration on November 19, 1991, and it is still in commercial
use.
Morrison & Foerster also owns United States Trademark Registration No. 2,020,689 for the mark MOFO®. The registration issued on December 3, 1996, from an application filed on November 21, 1995. Morrison & Foerster is widely known in the legal and commercial community both as "Morrison & Foerster" and as "Mofo.."
Morrison & Foerster has expended, and continues to expend, a substantial amount of money and time promoting and marketing its services.
Respondents, using the names NameIsForSale.com and Morri, Son & Foerster, registered the domain names morrisonfoerster.com, morrisonandfoerster.com, morrisonforester.com and morrisonandforester.com through the on-line registrar, Register.com. These domain names are identical or confusingly similar to Morrison & Foerster's service mark, MORRISON & FOERSTER®. The similarities of sight, sound and meaning between Respondents' domain names and Morrison & Foerster's service mark are overwhelming.
Respondents
have no trademark or other intellectual property rights in the domain names
morrisonfoerster.com, morrisonandfoerster.com, morrisonforester.com and
morrisonandforester.com. Respondents have not used the domain names in
connection
with the bona fide offering of any goods or services or with a legitimate
noncommercial or fair use. Respondents are using the domain names with
the intent
to misleadingly
divert consumers to Respondents' websites for commercial gain and to tarnish
Morrison & Foerster's service mark by defaming and disparaging Morrison
& Foerster's goodwill and reputation.
None of the domain names consists of Respondents' legal names or a name that is otherwise commonly used to identify Respondents. Respondents registered the domain names in October, 1999.
On October
27, 1999, Morrison & Foerster registered the domain names morrisonfoerster.org,
morrisonfoerster.net, morrisonandfoerster.net, and morrisonandfoerster.org.
At that same time, Morrison & Foerster tried to register the domain
names morrisonfoerster.com and morrisonandfoerster.com. Morrison &
Foerster intended to use these domain names to protect the goodwill of
its service mark, and, ultimately, to establish websites that would be
linked to the
firm's existing
website at www.mofo.com. However, Morrison & Foerster was unable to
register the domain names morrisonfoerster.com and morrisonandfoerster.com
because these names were registered three days earlier by "NameIsForSale.com."
According to Register.com records, the administrative contact for morrisonfoerster.com
and morrisonandfoerster.com at that time was
"Brian Wick,
[email protected]." Respondents also registered two more domain names using
a common misspelling of Morrison & Foerster morrisonforester.com
and morrisonandforester.com. The administrative contact for these domain
names also is "[email protected]."
On January
3, 2000, ADSI amended its corporate filings with the Colorado Secretary
of State to include "Morri, Son & Foerster business, Inc." as an assumed
name, but that was several months after Respondents first acquired and
used the domain names. Furthermore, Respondents' registration of "Morri,
Son & Foerster business, Inc." cannot confer any intellectual property
or other rights because it violates a Colorado state law requirement that
no trade name submitted to the Secretary of State for filing shall be the
same as or similar to the name of any entity
previously
on file.
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 & Foerster's, 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 & Foerster's business; and
(4) to intentionally attempt to attract, for commercial gain, Internet users to Respondents' websites by creating a likelihood of confusion with Morrison & Foerster's service mark as to the source, sponsorship, affiliation or endorsement of Respondents' websites, and of any products or services on Respondents' websites
Registration
records indicate that shortly before registering the four domain names,
Respondents registered "nameisforsale.com" as a domain name. According
to Register.com's records, nameisforsale.com is registered by NameIsForSale.com,
an entity that lists the same post office box address as Respondent Wick
and as Respondent ADSI, a Colorado corporation of which Wick is President,
Secretary, registered agent, sole Director and sole shareholder. NamelsForSale.com
also lists the same phone number as Respondent ADSI. Records show that
the administrative contact for (and hence the owner of) the nameisforsale.com
domain
name is "Brian
Wick" at "[email protected]." This is the same domain name administrative
contact as that for the four domain names at issue. The website at www.nameisforsale.com
states: "Name the property, product or service you want to ... buy or rent"
and provides Respondent Wick's e-mail address as the contact for any responses.
Respondents, using NamelsForSale.com, also have registered the names of
other high-profile law firms, including mckennaandcuneo.com and hollandandhart.com.
As seen from Respondents' registration of domain names with a common misspelling of Morrison & Foerster and domain names with variations on the names of other well-known law firms, Respondents are aware of the likelihood that current and potential clients using the Internet to locate information about Morrison & Foerster may very well find Respondents' websites instead of Morrison & Foerster's.
Finally, Respondents
intentionally have failed to maintain accurate contact information, or
have provided material and misleading false contact information, for the
domain name registration records for morrisonfoerster.com, morrisonandfoerster.com,
morrisonforester.corn and morrisonandforester.com. For example, just three
days after Respondents acquired the first two domain names, the registrant
was listed as "NameIsForSale.com," and the administrative contact as "Brian
Wick, [email protected]." Now these two domain names are registered to
ADSI, in care
of the so-called entity "Morri, Son & Foerster."
The administrative
contact on these registrations has been changed from "Brian Wick, [email protected]"
to simply "[email protected]." Respondent Wick has deliberately withdrawn
his own and the revealing NameIsForSale.com name from these two registrations,
and replaced them with ADSI and an agent entity that does not exist.
CONCLUSIONS
The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected and being impartial, the undersigned makes the following findings and conclusions:
The undersigned has reviewed all the evidence presented in this case by both parties and has concluded to believe the facts and circumstances as set forth by the Complainant. For that reason, the undersigned decides that:
a.The domain names as registered by the Respondent are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
b.the Respondent has no rights or legitimate interests in respect of the domain names; and
c.the Respondent domain names have been registered and are being used in bad faith.
It is therefore
just, right and proper that the domain names "morrisonfoerster.com; morrisonforester.com;
morrisonandfoester.com; and morrisonandforester.com" be transferred to
the Complainant
DECISION
Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:
THE UNDERSIGNED
DIRECTS THAT THE DOMAIN NAMES "MORRISONFOERSTER.COM; MORRISONFORESTER.COM;
MORRISONANDFOESTER.COM; AND MORRISONANDFORESTER.COM" REGISTERED BY RESPONDENT,
BRIAN WICK AND AMERICAN DISTRIBUTION SYSTEMS, INC.
("ADSI") INDIVIDUALLY
AND COLLECTIVELY D/B/A/ NAMEISFORSALE.COM, BE TRANSFERRED TO COMPLAINANT,
MORRISON & FOERSTER, LLP.
Dated: April 17, 2000, by Judge Paul A. Dorf, (ret.), Arbitrator
THE HONORABLE PAUL A. DORF, (ret.) Arbitrator
Domain Name Transferred