Generic Top Level Domain Name (gTLD) Decisions

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 "bgw@earthnet.net." 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.

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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, bgw@eardmet.net." 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, bgw@earthnet.net" to simply "bgw@earthnet.net." 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:

1. 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
2. the Respondent has no rights or legitimate interests in respect of the domain names; and
3. 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