P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com
Complainant:
McKenna & Cuneo, L.L.P.
Respondent:
NameIsForSale.com
BEFORE THE NATIONAL ARBITRATION FORUM
File Number: FA0002000093677
Filing Date: 2/10/00
DOMAIN NAME DISPUTE ADMINISTRATIVE PANEL DECISION
Domain Name(s): MCKENNAANDCUNEO.com
Domain Name Registrar: Register.com
Date of domain name registration: October 24, 1999
Date Complaint was sent to Respondent in accordance with
Rule 2(a):February 10, 2000
Response Due Date: March 4, 2000
PROCEDURAL FINDINGS
The Complainant filed its complaint with the National
Arbitration Forum pursuant to the Uniform Domain Name Dispute Resolution
Policy adopted by the Internet Corporation for Assigned Names and Numbers
(ICANN) on February 10, 2000. After
reviewing the Complaint for administrative
compliance, the Forum transferred the Complaint to the Respondent in
compliance with Rule 2(a), and the administrative proceeding
was commenced pursuant to Rule
4(c). In compliance with Rule 4(d) The Forum immediately
notified the above Registrar, ICANN and the Complainant that the
administrative
proceeding had commenced.
The Respondent registered the domain name with Register.com,
the entity that is the Registrar of the domain name. By registering
the domain name with Register.com, the Respondent agreed to resolve
any dispute regarding its domain name through
ICANN's Uniform Domain
Name Dispute Resolution Policy.
The complaint is based on the following service mark:
McKenna & Cuneo service mark for legal services provided by McKenna
& Cuneo, L.L.P.
The above-captioned matter came on for an administrative
hearing on March 16, 2000 before the undersigned on the Complaint
of
McKenna & Cuneo, L.L.P., hereafter "Complainant", against NameIsFor
Sale.com, hereafter "Respondent". The
Respondent has responded to the
Complaint. This matter is submitted for decision in accordance with
ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy")
and Rules (the "Rules"). Upon the written submitted record,
and the
following findings and conclusions, I find for the Complainant.
FINDINGS OF FACT
- McKenna & Cuneo is a service mark of the law firm of McKenna &
Cuneo, L.L.P.
- McKenna & Cuneo, L.L.P. is a law firm comprised of approximately
225 attorneys with offices in the District of Columbia,
Denver,
Dallas, San Francisco, Los Angeles, San Diego, and Brussels. It
commenced operations in 1954
under the name Sellers & Conner. After
a few name derivations over the years, the firm began using the
name McKenna, Conner & Cuneo in 1980. On September 1, 1990, the
firm began operating as McKenna & Cuneo.
- The service mark McKenna & Cuneo identifies the services of McKenna
& Cuneo, L.L.P. and distinguishes them from the
services of others.
See Lanham Act § 45, 15 U.S.C.A. § 1127. The firm
has also continually used the service mark McKenna & Cuneo.
The
firm's letterhead bears the name McKenna & Cuneo, L.L.P. The firm's
attorneys and other personnel
carry business cards with the name
McKenna & Cuneo, L.L.P. The firm conducts its advertising under
the name McKenna & Cuneo, L.L.P. The firm has a web site at www.mckennacuneo.com.
The firm participates in seminars under the name McKenna & Cuneo,
L.L.P. The firm also authors numerous
publications under the name
McKenna & Cuneo, L.L.P.
- The media refers to the firm by its service mark McKenna & Cuneo.
The legal community also refers to the firm by the
service mark
McKenna & Cuneo. In addition, the consumers of the firm's legal
services refer to the
firm by the service mark McKenna & Cuneo.
- The domain name registered by Respondent is confusingly similar
to the service mark McKenna & Cuneo. The Respondent has registered
the domain name "MCKENNAAND CUNEO.com". The Respondent's domain
name is
not only confusingly similar to the McKenna & Cuneo service
mark, it is virtually identical. The Respondent has merely
substituted
"AND" for the "&" in the McKenna & Cuneo service mark. Consequently,
the domain name "MCKENNAAND
CUNEO.com" could easily be mistaken
for the service mark McKenna & Cuneo.
- The Respondent has no rights or legitimate interests in the domain
name. The Respondent has not used the "MCKENNAANDCUNEO.com"
domain name or a name corresponding to the domain name in connection
with a bona fide offering of goods or services nor in a legitimate
noncommercial or fair use manner.
- The Respondent has registered and is using the domain name in
bad faith. The Respondent has a pattern and practice
of registering
domain names confusingly similar to the service marks of other law
firms with offices
in Denver, Colorado and of attempting to sell
those domain names to the service mark holders for a profit. The
Registrant's name is "NameIsForSale.com." The banner on NameIsForSale.com's
web site, which is under construction,
is "NameIsForSale.com - Name
the property, product or service you want to donate, sell, buy,
or rent."
See http://www.nameisforsale.com. The Respondent
is trading "on the value of marks as marks". See Avery Dennison
Corp. v. Sumpton, [1999] USCA9 436; 189 F 3d 868 (9th Cir. 1999), 51
U.S.P.Q. 2d 1801 quoting Panavision Int'l, L.P. v. Toeppen,
945 F. Supp. 1296 (C.D. Cal. 1996), 40 U.S.P.Q. 2d 1511, aff'd,
[1998] USCA9 991; 141 F. 3d 1316 (9th Cir. 1998), [1998] USCA9 991; 46 U.S.P.Q. 2d 1511.
Furthermore, the Respondent has registered the domain name in order
to prevent the owner of the service
mark from reflecting the mark
in a corresponding domain name. Consequently, Respondent has registered
and used the domain name in bad faith.
CONCLUSIONS
Paragraph 4(a) of the Policy requires that the Complainant
must prove each of the following:
- that the domain name registered by the Respondent is identical
or confusingly similar to a trademark or service mark
in which the
Complainant has rights; and
- that the Respondent has no legitimate interests in respect of
the domain name; and,
- that the domain names have been registered and used in bad faith.
The Complainant has shown each of the above.
DECISION
I certify that I have acted independently and have no
known conflict of interest to serve as the arbitrator in this proceeding.
Having been duly selected and being impartial, I enter the following
decision:
Based upon the above findings and conclusions, and pursuant
to Rule 4(i), I find in favor of the Complainant and direct that
the domain name "MCKENNAANDCUNEO.com" registered by Respondents
be transferred to Complainant, McKenna & Cuneo, L.L.P. Charles K. McCotter,
Arbitrator
This 16th day of March, 2000.
