WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Akerman, Senterfitt & Eidson, P.A. v. American Distribution Systems, Inc. d/b/a DefaultData.com

Case No. D2002-0596

 

1. The Parties

Complainant in this proceeding is Akerman, Senterfitt & Eidson, P.A., a law firm with a principal place of business at 255 South Orange Avenue, Citrus Center, 17th Floor, Orlando, Florida 32802, USA. Complainant is represented in this proceeding by Steven M. Greenberg, Esq., Akerman, Senterfitt & Eidson, P.A., 222 Lakeview Avenue, Fourth Floor, West Palm Beach, Florida 33401, United States of America.

Respondent in this proceeding is American Distribution Systems, Inc. d/b/a DefaultData.com, whose address is P.O. Box 481002, Denver, Colorado 80248, United States of America.

 

2. The Domain Name and Registrar

The domain name in dispute is <akermansenterfitt.com>.

The registrar for the disputed domain name is Network Solutions, Inc., 505 Huntmar Park Drive, Suite 1, Herndon, Virginia 20170, United States of America.

 

3. Procedural History

This dispute will be resolved in accordance with the provisions and procedures of 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 June 25, 2002, by e-mail, and on June 27, 2002, in hard copy.

On June 28, 2002, the Center sent a Request for Registrar Verification to the registrar named in the Complaint, Register.com. However, in further correspondence, the Center learned the registrar was Network Solutions, Inc., which on July 9, 2002, confirmed that the registrant of the disputed domain name was the Respondent in this proceeding.

The Center on July 10, 2002, sent to Complainant a request for an Amended Complaint to include the correct registrar of the disputed domain name. On July 12, 2002, Complainant filed this Amended Complaint by e-mail, and on July 15, 2002, in hard copy.

On July 16, 2002, the Center forwarded a copy of the Complaint to the Respondent by registered mail and by e-mail and this proceeding officially began.

On August 5, 2002, the Center received the Response by e-mail and on August 15, 2002, in hard copy.

The Panel submitted a Declaration of Impartiality and Independence on August 22, 2002, and on that day the Center appointed the Panel. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.

The due date of this Decision is September 5, 2002.

 

4. Factual Background

Established in 1920, Complainant is a well-recognized United States law firm. It is common for law firms in the United States to become known by the first few names of their full company name, and Complainant -- Akerman, Senterfitt & Eidson, P.A. -- is commonly known as "Akerman Senterfitt." Complainant's long and successful practice of law under the mark "Akerman Senterfitt" has associated significant goodwill and repute with that mark.

Respondent is listed as the Registrant of the disputed domain name. The record of registration was created on November 19, 2001. Respondent has registered domain names corresponding to the names of dozens of other well-known law firms in the United States.

 

5. The Partiesí Contentions (Summarized)

Complainantís Contentions

- Founded in 1920, Complainant is the largest law firm in Florida, with over 360 attorneys. The firm represents many of the largest companies and wealthiest individuals in that state.

- As a consequence of its long and distinguished practice, Complainant's service mark "Akerman Senterfitt" is famous throughout Florida, the United States and other parts of the world. Significant good will is attached to Complainant through its inherently distinctive mark, which connotes high quality legal services.

- The disputed domain name is identical or confusingly similar to Complainant's service mark. The only difference is the absence of a space between the words and the addition of a gTLD.

- Respondent has no rights or legitimate interests in respect of the disputed domain name. The web site found at the name does not offer bona fide goods or services, but merely disparaging and defamatory remarks with respect to Complainant. Respondent is not commonly known by a name similar to the disputed domain name. Respondent has failed to make legitimate non-commercial or fair use of the disputed domain name. In a letter to Complainant, Respondent writes that the name is used only to further explain Respondent's first amendment argument about the Internet.

- Respondent has registered and used the disputed domain name in bad faith. Respondent has registered dozens of domain names corresponding to well-known law firms in the United States. Several courts and arbitration panels have ruled that Respondent has acted in bad faith with respect to several of these registrations and required Respondent to transfer domain names corresponding to law firm names. Respondent's above-referenced letter mentions that he has engaged in these registrations "to help the U.S Constitution and small business survive on the Internet."

Respondentís Contentions

- Respondent's actions are not consistent with a clear case of "cybersquatting" or "cyperpiracy."

- The disputed domain name is intentionally identical or confusingly similar to a trade or service mark in which Complainant has rights.

- Respondent does have rights and legitimate interests in the disputed domain name. The domain name is analogous to a street address. Just as anyone under the Constitution of the United States may exercise his/her free speech rights to protest or provide information at the street address of a business, so may Respondent exercise similar rights at the domain name of a business such as Complainant's. Respondent has registered domain names of numerous other law firms in the United States to exercise just this right of free speech.

- Since Respondent has a legitimate interest in the disputed domain name, there is no reason to consider whether Respondent registered and is using the disputed domain name in bad faith.

 

6. Discussion and Findings

Complainant may prevail and obtain transfer of the disputed domain name, <akermansenterfitt.com>, according to paragraphs 4(a)(i), (ii) and (iii) of the Policy, if Complainant can prove the following:

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

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

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

Identical or Confusingly Similar

There is no evidence in the record that Complainant owns a registered trade or service mark in the name "Akerman Senterfitt."

Several previous panels proceeding under the Policy have held, however, that rights in a trade or service mark may be protected at common law. See Meijer, Inc. v Porksandwich Web Services, NAF Case No. FA97186 (July 6, 2001) and Cedar Trade Associates, Inc. v. Gregg Ricks, NAF Case No. FA93633 (February 25, 2000). Complainant has provided legal services for decades under the name "Akerman Senterfitt," and as a result that name is identified with those services throughout Florida and, to a somewhat lesser extent, the rest of the United States. Respondent himself does not contest this point, since his rationale is to use that notoriety to spread his own message. Thus, the Panel finds that Complainant has service mark rights in the name "Akerman Senterfitt" at common law.

The disputed domain name, <akermansenterfitt.com>, is the same as Complainant's service mark, except for the deletion of the space between the words and the addition of the gTLD, ".com". These differences are de minimis and do not affect the Panelís determination that the disputed domain name is identical to Complainant's service mark, a determination with which Respondent agrees in his Response.

The Panel thus concludes that the disputed domain name, <akermansenterfitt.com>, is identical or confusingly similar to a trademark or service mark in which Complainant has rights.

No Rights or Legitimate Interests

Complainant contends, and Respondent does not deny, that Complainant did not give Respondent permission, authorization or a license to use Complainant's service mark. Furthermore, there is no evidence that Respondent has ever used the mark "Akerman Senterfitt" in commerce.

In view of the findings above, a prima facie case is made that Respondent has no rights or legitimate interests in the disputed domain name. To counter that case, Respondent claims that by his use of that name to provide criticism of the legal profession (and by implication, Complainant) he is making a legitimate noncommercial or fair use of the name in compliance with paragraph 4(c)(iii) of the Policy. However, the full reading of that paragraph is "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 (emphasis added)." Clearly, Respondent's use of the disputed domain name -- criticism of the legal profession and, by implication, Complaint's role in it -- is meant to reduce the goodwill and repute associated with Complainant's service mark so as to "tarnish" it.

It is equally clear that the Respondentís disputed domain name by itself conveys no message and hence is not a fair use; it is rather an infringing use of Complainantís naked mark (see any of the many "trademark plus Ďsucksí" cases under the Policy, including Lockheed Martin Corporation v. Dan Parisi, WIPO Case No. D2000-1015, (January 26, 2001); and see also DFO, Inc. v. Christian Williams, WIPO Case No. D2000-0181, (May 14, 2000) which involved the domain name <dennys.net>. The Panel is confident that current United States fair use doctrine does not support the Respondentís position in this proceeding.

Respondent has presented no evidence that his actions in connection with the disputed domain name fall under any other category listed in paragraph 4(c) or in any way establish his rights or legitimate interests in that name.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Bad Faith

Respondent asserts in his Response that his activity with respect to the disputed domain name is akin to his arriving at Complainant's place of business, in the exercise of his free speech rights, to criticize or protest against Complainant's practices. However, this analogy is not complete. Respondentís right of free speech under the United States Constitution would not allow Respondent to prevent Complainant from operating at the site of Complainant's business; that is, Respondent could not occupy Complainant's property to make his protest -- he would be confined to adjacent public land. In this case, Respondent's registration of the disputed domain name prevents Complainant from using that address -- corresponding to Complainant's service mark (i.e., Complainant's property) -- to conduct its business.

Since, by his own admission, Respondent has registered dozens of other domain names corresponding to the names of well-established law firms in the United States for uses similar to the one at hand, Respondent's actions place him under the purview of paragraph 4(b)(ii) of the Policy with respect to bad faith registration and use of a domain name, namely: "you [Respondent] 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." The Panel finds ample support for this conclusion in a prior Policy panel decision involving Respondent, Preston Gates & Ellis, LLP v. defaultdata.com and Brian Wick, WIPO Case No. D2001-1381 (February 13, 2002).

Therefore, the Panel finds that Complainant has sustained its burden of proof in showing that the disputed domain name was registered and is being used in bad faith.

 

7. Decision

The Panel finds that the disputed domain name, <akermansenterfitt.com>,is identical to Complainantís common law service mark, "Akerman Senterfitt." The Panel has also found that Respondent has no rights or legitimate interests in that disputed domain name. Finally, the Panel concludes Respondent registered and is using the disputed domain name in bad faith because Respondent registered the name to prevent Complainant from reflecting its mark in that domain name, a pattern of conduct in which Respondent has engaged with respect to numerous third parties.

In accordance with the foregoing and pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <akermansenterfitt.com>, be transferred from Respondent, American Distribution Systems, Inc. d/b/a DefaultData.com to Complainant, Akerman, Senterfitt & Eidson, P.A..

 


 

Dennis A. Foster
Sole Panelist

Dated: September 5, 2002