WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Hunton & Williams v. American Distribution Systems, Inc. et al.

Case No. D2000-0501

 

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 Firmís 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 Firmís 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 Firmís 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 dbaís of Respondent.

The Domain Names resolve to websites upon which Respondent placed the following content:

PARASITES Ė 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, Respondentís 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:

Respondentsí bad faith cyberpiracy is evident from the manner and use of these registrations and of other protected names. Respondentsí 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 & Foersterís, for valuable consideration in excess of Respondentsí 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 & Foersterís business;

(4) and to intentionally attempt to attract, for commercial gain, Internet users to Respondentsí websites by creating a likelihood of confusion with Morrison & Foersterís service mark as to the source, sponsorship, affiliation or endorsement of Respondentsí websites, and of any products or services on Respondentsí 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 & Foersterís 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 Respondentís 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 Firmís 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, ADSIís 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 Firmís 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 Firmís counsel to discuss a possible resolution.

On April 6, 2000, the Firmís counsel left a voice mail message attempting to contact Respondent to determine whether it still intended to have its counsel contact the Firmís 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 Respondentís 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. Partiesí 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).

Websterís 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) Respondentís 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 Respondentís 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.

Respondentís bad faith is further evidenced by Respondentís 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).

Respondentís bad faith is further evidenced by its primary purpose of harassing the Firm, diverting the Firmís clients to websites that disparage and defame the Firm, and interfering with the Firmís 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.

 


 

Richard W. Page
Presiding Panelist

August 1, 2000