WIPO

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Jacoby & Meyers LLC v. Jacob Y. Meyers aka Jacob Yale Meyers, Jacob Yosef Meyers and Eminent Domain

Case No. D2002-1046

 

1. The Parties

The Complainant is Jacoby & Meyers LLC, of Carson City, NV 89701, United States of America, represented by Dana B. Taschner of United States of America.

The Respondent is Jacob Y. Meyers aka Jacob Yale Meyers, Jacob Yosef Meyers and Eminent Domain, of Singapore, 458096, Singapore.

 

2. The Domain Names and Registrar

The disputed domain names <jacobymeyers.biz> and <jacobymeyers.com> are registered with iHoldings.com Inc. d/b/a DotRegistrar.com ("iHoldings.com").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 13, 2002. On November 14, 2002, the Center transmitted by email to iHoldings.com a request for registrar verification in connection with the domain names at issue. On November 14, 2002, iHoldings.com Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of both domain names and providing the Respondentís contact details.

On November 26, 2002, the Center sent a notification to the Complainant that the Complaint was administratively deficient; the Complainant duly remedied these technical deficiencies.

On December 18, 2002, the Complainant filed further, supplementary submissions.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 18, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2003. The Response was filed with the Center on January 7, 2003.

The Center appointed Andrew Brown QC as the sole panelist in this matter on January 16, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant is a well-known law firm, which was established in 1972. It has offices in the United States of America, Canada and Mexico.

The Complainant is the registered proprietor in the United States of the trademark JACOBY & MEYERS LAW OFFICES. It also owns the domain names <jacobylawyers.com>, <jacoby-meyers.com> and <jacoby-and-meyers.com>.

The Respondent registered <jacobymeyers.com> on August 23, 2001, and <jacobymeyers.biz> on April 11, 2002.

On April 18, 2002, the Complainantís attorneys sent a letter of demand to the Respondent in respect of both these domain names, and also a further domain name, <jacobymeyers.org>, which does not form part of this administrative proceeding. The letter required the Respondent to transfer the domain names to the Complainant.

On April 24, 2002, the Respondent replied by email. In part, his email provided:

"Hereís what I think I understood [of the letter dated April 18, 2000]:

Jacoby & Meyers is a famous law firm.
It has a lot of money.

Ö

Somebody at Jacoby & Meyers messed up.
Somebody forgot to register the name jacobymyers.com.

Ö

Jacoby & Meyers is willing to pay your law firm a lot of money to try to take this domain name away from me.
You might win.
You might not.
In either case, Jacoby & Myers will have spent a lot of money.
Your client would like to avoid this.
Your client would like to pay me a lot of money in exchange for transfer of the domain name.
Am I close?
It was not my goal to sell this domain name.
But my dad always told me never to reject an offer until it is made.
What do you have in mind?"

On May 20, 2002, the Complainantís attorneys replied to the Respondent, offering a "nuisance fee" of $5,000 in exchange for the immediate transfer of the domain name <jacobymeyers.com> and "any other domain names corresponding to [the Complainantís] valuable trademarks". The Respondent did not reply to this offer.

On June 12, 2002, the Complainantís solicitors wrote again to the Respondent, offering him "one final opportunity" to accept the offer. Again, the Respondent did not reply.

 

5. Partiesí Contentions

A. Complainant

The Complainant claims that it owned one of the disputed domain names, <jacobymeyers.com>, from August 1998 to August 2001. It states that in or around August 2001, it attempted to renew its registration in a timely manner, but although the registrar accepted payment for the domain name registration renewal, for reasons "unknown", the renewal was not issued and the Complainantís registration lapsed.

The Complainant states that immediately after the registration for <jacobymeyers.com> lapsed, the domain name was registered by Eminent Domain. The Complainant alleges that Eminent Domain is a pseudonym for the Respondent. Eminent Domain subsequently registered the domain name <jacobymeyers.biz> also.

The Complainant alleges that when it communicated with Eminent Domain about the registrations, Eminent Domain transferred the registrations (or changed the name of the registrant) to "Jacob Yosef Meyers" and then to "Jacob Y. Meyers", back to "Jacob Yosef Meyers" and finally, to "Jacob Yale Meyers". The Complainant alleges that all of these names are fictitious.

The Complainant also claims that the Respondent changed the registered address to a location outside the United States of America in order to avoid service of process, US legal action and the reach of US civil and criminal authorities and agencies.

The Complainant states that some time after the Respondent registered the disputed domain names, he directed the domain name <jacobymeyers.com> to a webpage that reproduces a legal complaint filed by one of the partners of the Complainant against the other partners of that firm. The Complainant alleges that the re-direction of consumers to the legal complaint misleads the public as to the source, origin and sponsorship of the webpage, and also intentionally tarnishes the reputation and goodwill of the Complainant.

The Complainant claims that in the Respondentís email of April 24, 2002, (set out in part above), he expressed that he registered the disputed domain names for "the singular purpose of extorting a large amount of money from the Complainant".

In terms of the three elements of the Policy, the Complainant claims that:

(a) the disputed domain names are identical and confusingly similar to the Complainantís trademark JACOBY & MEYERS. The only difference between the trademarks is the absence of the ampersand ("&"), which is in any case not permitted in Domain Name or URL syntax;

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondentís communication indicates no intention to use the domain names or a name corresponding to the domain names with a bona fide offering of goods or services, nor is the Respondent commonly known by any of the domain names.

(c) the domain names were registered and used in bad faith for the following reasons:

h the Respondent immediately registered <jacobymeyers.com> upon the lapse of the Complainantís registration of that domain name.

h the Respondent created fictitious names and changed the registrantís address to an address outside the United States in order to avoid service of process in the United States and to avoid formal legal action.

h the Respondent used the domain <jacobymeyers.com> to divert clients and potential clients of the Complainant to a disparaging complaint filed against the Complainant.

h the Respondent stated that he would not transfer the disputed domain name to the Complainant until the Complainant made him an offer for a "lot of money".

h the Respondent registered the domain name for the purpose of extorting money from the Complainant.

B. Respondent

The Respondent notes that the Complainant has not provided any documentation to support its allegation that the Complainant had previously registered the domain name <jacobymeyers.com> and paid the registrar to renew the registration.

The Respondent claims that he registered the domain name <jacobymeyers.com> on an impulse. He says that about a year and a half ago, he saw an article about a lawsuit being proposed by the Complainant, and decided to look at the Complainantís website. However, when he typed in <jacobyandmeyers.com> and <jacobymeyers.com> nothing came up. He checked the registry and discovered that <jacobyandmeyers.com> was owned by Leonard Jacoby, the partner who issued a legal complaint against the other partners of the Complainant. The domain name <jacobymeyers.com> was not registered at all.

The Respondent states that he then registered the domain name <jacobymeyers.com> with the intention of re-directing it to a site related to the movie "Liar, Liar". The Respondent states that his intention in doing this was to convey the Respondentís attitude toward lawyers in general, but he never got around to acting on this impulse. The site remained inactive for some time.

The Respondent claims that his motivation in registering the disputed domain names was not in order to sell these to the Complainant or to anybody else. He states that the Complainantís offer of $5,000 for the domain name <jacobymeyers.com> was more than 100 times what he had paid for the domain name but he had no desire to sell it.

Until he received the first "nasty letter" from the Complainant, the Respondent states that he had done nothing with the domain name <jacobymeyers.com>. After receiving the letter, he decided that simply redirecting the domain name to a "Liar, Liar" site, would not be sufficient to express his irritation. Instead, he directed the URL to the Court TV webpage containing the legal complaint by one of the partners of the Complainant against the other partners of that firm.

The Respondent states that after receiving the various emails from the Complainant, he again forgot about all the matter. About six months later he began to receive copies of emails from WIPO to the Complainant.

At this stage, the Respondent states that he re-directed both domain names to the Complainantís own website and emailed the Complainant, suggesting "that we talk". He states that he received "[a]n insulting response", suggesting that the Respondent accept $1,500 in lieu of the Complainant having to pay the WIPO filing fee. The Respondent claims that he did not want any money, he just wanted to talk.

The Complainant then made a supplemental filing alleging that the re-direction of <jacobymeyers.com> to the Complainantís own website demonstrated bad faith. In response to this allegation, the Respondent once again re-directed the domain name <jacobymeyers.com> to the Court TV website. The domain name <jacobymeyers.biz> still resolves to the Complainantís website.

The Respondent alleges that the source, origin and sponsorship of the <jacobymeyers.com> webpage is clearly Court TV. The Respondent concedes that the URL may be similar to the Complainantís trade mark, but states that there is no possibility of confusion. He claims to be making a fair, non-commercial use of the domain names.

Comment

The Respondent does not explain why, many months later, he also registered the domain name <jacobymeyers.biz>. Nor is there any reference in either the Complaint or the Response to the domain name <jacobymeyers.org>. According to the letter of demand sent by the Complainant in April 2002, this was also registered by the Respondent. (According to a Whois search conducted by the Panel, the domain name <jacobymeyers.org> is currently unregistered.)

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the Policy, is to show:

h That the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

h That the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

h That the domain names have been registered and are being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of its registration in the United States of America of the trademark JACOBY & MEYERS LAW OFFICES. It does not have a trademark registration for the mark JACOBY & MEYERS, but the Panel is in no doubt that the Complainant has strong unregistered trademark rights in this mark as a result of some 30 years use and promotion in the United States, including substantial television advertising to the extent of $100 million. The Policy protects both registered and unregistered trademark rights.

The disputed domain names are identical to the Complainantís name and unregistered trademark JACOBY & MEYERS apart from the omission of the ampersand between the two words. They are also very similar to the Complainantís registered trademark JACOBY & MEYERS LAW OFFICES. The additional elements of that trademark, "LAW OFFICES" do not substantially alter the likelihood of confusion.

The Panel therefore finds that the domain names <jacobymeyers.com> and <jacobymeyers.biz> are confusingly similar to both the trademark JACOBY & MEYERS LAW OFFICES and the Complainantís unregistered trademark JACOBY & MEYERS.

B. Rights or Legitimate Interests

The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondentís rights or legitimate interest in the domain names. These circumstances are:

(i) before any notice to the Respondent of the dispute, the Respondentís use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with the bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organisation) has been commonly known by the domain names, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel finds that none of the conditions outlined in (i) to (iii) have been made out.

The name under which the Respondent has registered the disputed domain names, namely Jacob Y Meyers and Jacob Meyers corresponds with both domain names. The Complainant has contended that this is a fictious name. Nowhere is this allegation ever addressed by the Respondent, yet it is important to the case. If the Respondent was in fact called Jacob Y. Meyers, this would surely have been squarely dealt with. It is not. The Respondent has, however, claimed that he is making fair non-commercial use of the domain name <jacobymeyers.com> by directing this on two occasions to the Court TV site and in particular a complaint filed against the Complainant by one of its former partners.

The Panel does not accept that the Respondent has a legitimate interest in registering the disputed domain name <jacobymeyers.com>. First, the Respondent has not demonstrated that his name is Jacob Y. Meyers. Secondly, previous Panels have established that, although a party may have a right to free speech and a legitimate interest in criticizing a Complainant, this does not confer on the Respondent a right or legitimate interest in registering a domain name incorporating a Complainantís trademark: WIPO Case No. D2001-0376, Compagnie Generale Des Matieres Nucleaires v. Greenpeace International; WIPO Case No. D2002-0776 Trodos Bank NV v. Ashley Dobbs:

"The Panel accepts for the purposes of this dispute that the Respondent has a genuine grievance against the Complainant and genuinely believes that the Complainant has behaved reprehensively. The Panel further accepts that the Respondentís rights of free speech entitle him fairly to express his views on the matter.

However, none of that entitles the Respondent to represent that he is the Complainant. In taking the Complainantís name in the way that he has, without adornment apart from the hyphen, the Respondent has misrepresented to a substantial number of visitors that he is the Complainant. Ö

The fact that the nature of the site is apparent as soon as one arrives at it is too late. By then, the visitor has been deceived, the Respondent has achieved his objective and the damage is done. Ö

In the view of the Panel there is a world of difference between, on the one hand, a right to express (or a legitimate interest in expressing) critical views and, on the other hand, a right or legitimate interest in respect of a domain name. The two are completely different. The fact that use of the Domain Name enables the Respondent to transmit his views more effectively is neither here nor there. Depriving the Respondent of the ability to deceive internet users by his use of the Domain Name does not in any way deprive him of his right to free speech. He could readily use a domain name which telegraphs to visitors precisely what his site contains and thereby obviate any risk of deception."

The Panel respectfully adopts these comments in the present case. There is nothing in the disputed domain names themselves to indicate that they relate to protest or criticism sites, or are anything other than the official website of the Complainant. Once an Internet user enters the Court TV website this becomes apparent immediately, but by then it is too late.

As for the domain name <jacobymeyers.biz> there is no evidence of any attempt by the Respondent to re-direct this to another site for the purposes of criticism. So the Respondentís purported justification does not even apply to this site.

At present, this disputed domain name currently resolves to the Complainantís website. There is no guarantee that this will continue to be the case. Indeed, the very fact that the Respondent has re-directed this to the Complainantís website strongly suggests that the Respondent realises he does not have a right or legitimate interest in this domain name.

The Panel therefore concludes that the Respondent has no legitimate rights or interest in either of the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(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 website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

Although the Panel does not consider that the Respondentís actions fall within any of the categories outlined above, they still amount to bad faith. The Policy specifically provides that these categories are non-exhaustive.

The Complainant alleges that the Respondent registered the domain names with the intention of selling these for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain names in terms of subparagraph (i). While there is some evidence that the Respondent may have been prepared to transfer the domain name for a fee, this evidence is relatively slim and in the Panelís view falls well short of demonstrating that the Respondent registered the disputed domain names primarily for this purpose.

Subparagraph (ii) is not relevant as the Panel considers that the registration of two domain names incorporating the Complainantís trademark is insufficient to establish the requisite pattern of conduct" (see e.g. WIPO Case No. D2000-1342, Time Inc. v. Chip Cooper and WIPO Case No. D2000-0021, Ingersoll-Rand Co v. Frank Gully, d/b/a/ Advcomren). Nor is there any evidence that the Respondent is a "competitor" of the Complainant in terms of subparagraph (iii). Finally, the Respondent is not making a commercial gain from the use of the domain names and therefore falls outside subparagraph (iv).

As noted above, however, that the circumstances of bad faith are not limited to those set out above. The Panel considers that while the Respondentís conduct in this case does not fall within any of the specified categories of bad faith, there is nonetheless evidence that the domain names were registered and used in bad faith.

Again, the comments of the Panel in Triodos Bank are particularly relevant to these facts and articulate the bad faith actions of the Respondent in this case:

"In short, what the Respondent has done is select for the Domain Name a name which is not his own, which it knew at the time of registration to be the name and trademark of the Complainant and which it proposed at the time of registration to use in a campaign against the Complainant to cause the Complainant disruption and damage. The Domain Name would be particularly useful for that purpose because it would catch by surprise visitors intending to reach the Complainantís website."

Here, there is further evidence of bad faith in that the Respondent has never denied that he registered the disputed domain names under a fictitious name. Furthermore, the registrations occurred some time apart i.e. <jacobymeyers.com> in August 2001, and <jacobymeyers.biz> in April 2002. The Panel considers that this shows a deliberate targeting of the Complainantís trademark in a way which involved bad faith registration and use.

The Panel therefore concludes that the disputed domain names were registered and used in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <jacobymeyers.com> and <jacobymeyers.biz> be transferred to the Complainant.

 


 

Andrew H. Brown QC
Sole Panelist

Dated: January 30, 2003