WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Gardere Wynne Sewell LLP v. DefaultData.com

Case No. D2001-1093

 

1. The Parties

The Complainant is: Gardere Wynne Sewell LLP, a limited liability partnership with principal place of business at 1601 Elm Street, Suite 3000, Dallas, Texas 75201, U.S.A.

The Respondent is DefaultData.com, the doing-business name of American Distribution Systems, Inc., P.O. Box 481002, Denver, Colorado 80248, U.S.A.

 

2. The Domain Names and Registrar

The domain names in dispute are: <garderewynne.com> and <gardereandwynne.com>.

The registrar for the disputed domain names is: Registrars.com located at Suite 1900, One Bentall Centre, 505 Burrar Street, Vancouver, BC, Box 44, Canada V7X 1M6.

 

3. Procedural History

This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).

The Complaint was filed on September 3, 2001, in hard copy. On September 10, 2001, the Center requested that the registrar Registrars.com check and report back on the registrant for the domain names <garderewynne.com> and <gardereandwynne.com>. On September 18, 2001, Registrars.com reported to the Center that the registrant was the Respondent, DefaultData.com.

On September 20, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. Respondentís e-mail Response was received by the Center on October 11, 2001.

The Administrative Panel submitted a Declaration of Impartiality and Independence on October 26, 2001, and the Center proceeded to appoint the Panel on October 29, 2001.

The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.

This Decision is due by November 12, 2001.

 

4. Factual Background

The Complainant is a Dallas, Texas, U.S.A. law firm that has been operating in the Dallas-Fort Worth area since 1979. The Complainant recently has been trying to establish a nation-wide identity in the U.S. (Complaint Exhibit 4).

The Respondent appears to be a computer services company that also engages in public interest debate on the internet. The Respondent registered the disputed domain names on February 19, 2000, and since that time has used them to post material critical of lawyers and law firms in the U.S.

The parties apparently had telephonic conversations in which the Complainant attempted to recover the disputed domain names from the Respondent. As no agreement was reached, the Complainant now seeks transfer of the disputed domain names in this proceeding.

 

5. The Parties Contentions:

Complainantís Contentions:

- The Complainant is the owner of a U.S. trademark registration for "Gardere & Wynne", and has been using the mark for legal services since 1979.

- As a result of extensive use and advertising, "Gardere & Wynne" is now recognized nationwide as representing services provided exclusively by the Complainant (Exhibit 4).

- Although the Respondentís disputed domain name web sites purport to be  "free speech sites", there is no actual content on the websites.

- Counsel for Complainant telephoned Respondent to discuss voluntary transfer of these domain names. Respondent told counsel that he would sell the domain names to Complainant for somewhere between $500 and $750 apiece.

- The Respondent does not use either of the domain names to sell any sort of product or service, and is solely in the business of registering other companiesí registered trademarks as domain names and then selling them back to the companies at a profit.

- The Respondentís use of the domain names would likely cause confusion and deception as to the source and origin of the Complainantís services and products.

- The Respondent chose the domain names for the purpose of selling the names back to Complainant at a profit.

- The Respondent registered the disputed domain names in order to prevent the Complainant from reflecting its mark in corresponding domain names.

- The Respondent is not commonly known by, and does not commonly do business as, the disputed domain names.

- The disputed domain name should be transferred to the Complainant.

Respondent's Contentions:

- Free speech at trademark source identification is lawful and the U.S. Constitution allows it.

- Lawful protesting on a road at the entrance of a business is no different than lawful protesting on the internet at an entrance to Gardere Wynne Sewell or any other established business.

- Respondent's 'source identification' free speech web site content is no different than an electronic version of the free speech flyers Respondent passed out at the entrances of a health center and a nuclear power plant or what Respondent was given at a UPS picket line.

- Respondent's source identification free speech can not block anybody from entering an established business.

- To avoid false representations, the Respondent will not put a hyperlink from its free speech websites to a business' web site without written authorization from that business or mark holder.

- Complainant refused to accept the Respondent's offer to put a hyperlink from the disputed domain name websites to the Complainant's business website.

- The Respondent never made an offer to sell the disputed domain names to the Complainant.

- Respondent's source identification web site context (free speech flyer) at the disputed domain name websites relates to the overall legal system and not anything specific to the Complainant. In fact, Respondent passes out the same free speech flyer at KirklandandEllis.com and other law firms to insure Respondent's message about the legal system gains maximum exposure and at the same time to insure Respondent does not single out any particular law firm.

- Respondent's free speech is necessary to prevent the establishment from controlling common working class citizens.

- In 1999, Respondent attempted to buy the domain name <CBS.net>; Respondent intended to use the site to show this television broadcasting network had sold out to tobacco giants.

- Source identification domain names can not be considered legitimate to a mark holder yet be considered contraband if reserved by a free speech author, especially when both parties would pay the same $70 to reserve the domain name.

- Source identification free speech, like Respondent's being able to deliver rather effervescent free speech flyers at the front door of the disputed domain names, is why the world always looks to America as the authority on freedom.

- Taking away source identification free speech further explains why some people, especially young people, can no longer have their voice heard and consequently do crazy things against our government and establishment.

- If free speech on the internet were limited to communicative speech but did not include source identification, most free speech would be lost to the public.

- The Complaint should be dismissed.

 

6. Discussion and Findings

In order for Complainant to prevail and have the disputed domain names transferred to itself, the Complainant must prove the following (the Policy, para 4(a)(i-iii):

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name was registered and is being used in bad faith.

Identical or Confusingly Similar

As the Complainant has demonstrated in Complaint Exhibit 3, it is the owner of U.S. service mark registration no. 1,910,606 dated August 8, 1995, for Gardere & Wynne in international class 42 for legal services. It is conceded the Complainant has been in this business for some time.

Of the two disputed domain names, <gardereandwynne.com> differs from Complainant's mark only in writing out "and" versus the symbolic "&". The other disputed domain name, <garderewynne.com>, differs only in that the "&" from the Complainant's service mark has been omitted. The Panel finds the Respondent's changes to the Complainant's marks are de minimis and that the Respondent has registered two domain names confusingly similar to the Complainant's mark. The Response makes no attempt to deny this.

Legitimate Rights and Interests

The Response principally is devoted to showing the Respondent is making fair use of the Complainant's mark per the Policy 4c(iii):

"you are making a legitimate noncommercial 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."

As the Panel has already found, the Respondent basically uses the Complainant's service mark to draw internet users to the disputed domain name websites. The internet users expect to reach the Complainant law firm and its services: they instead find the Respondent and its criticisim of the U.S. legal establishment. The Respondent contends this is a form of fair use which the Respondent calls 'source identification free speech'. The Panel does not agree.

The Respondent does not produce any supporting authority for its position. The cite to a favorable U.S. court ruling regarding "Lucentsucks.com" is inapposite because internet visitors to that site surely know they are not about to enter a site sponsored by the company Lucent.

The Panel finds the Respondent's two disputed domain name websites used to post material critical of the U.S. legal establishment are not a "fair use" within the meaning of the Policy (see McLane Company, Inc. v. Fred Craig, WIPO Case No. D2000-1455, January 11, 2001). The Panel would also note that it seems not a fair use as well as unfair that the Respondent deliberately chooses a few law firm names, including the Complainant's, in order to criticize the legal profession as a whole.

The Panel is well aware that ICANN panels are divided on the issue of whether parties such as Respondent may use the naked trademark.com as a domain name for a website devoted to criticism of the trademark holder and its products or practices. This Panel does not see why the internet public, seeking the mark holder and its products and services, should be surprised and detained by websites that criticize and protest but give not hint at what they are about until they are opened. The Panel believes the current way the internet operates requires that fair use protest sites under the Policy identify themselves with something in addition to the Complainant's trademark so the public can distinguish whether they want to visit the protest site or the Complainant's products and services site.

Registered and Used in Bad Faith

The Panel believes it is clear the Respondent knew its use of the Complainant's marks was not fair use but forged ahead with this use nonetheless. The Panel believes the Respondent's main aim in doing so is to disrupt the legal business of Complainant law firm. In this way, the Respondent is in violation of the Policy at 4b (iii):

"you have registered the domain primarily for the purpose of disrupting the business of a competitor."

The Panel is aware the Respondent is a competitor of the Complainant only in a broad sense of the term "competitor", i.e. the Respondent presumes to convince Complainant's clientele to seek alternatives to Complainant's services. The Panel finds the term competitor encompasses the Respondent's activities in this Case.

The Complainant also alleges the Response violated the Policy's bad faith provisions at 4 b(i) in that the Respondent attempted to sell the disputed domain names back to the Complainant for more than the Respondent paid for them. The Respondent denies this contention and the Panel finds there is insufficient evidence to decide against the Respondent on this particular ground for bad faith. In any case, the Respondent's bad faith already has been established under the Policy at 4b(iii) above.

 

7. Decision

The Panel has rejected the Respondent's main contention that using Complainant's marks with de minimis changes as domain name websites to post material critical of the legal profession is a fair use under the Policy at 4c(iii).

Therefore, pursuant to ICANN Policy para 4i and Rule 15, the Panel orders that the two disputed domain names <garderewynne.com> and <gardereandwynne.com> be transferred from the Respondent, DefaultData.com, to the Complainant, Gardere Wynne Sewell LLP.

 


 

Dennis A. Foster
Sole Panelist

Dated : November 16, 2001