DECISION

Baker & Daniels v. DefaultData.com

Claim Number: FA0202000104579

PARTIES

The Complainant is Baker & Daniels, Indianapolis, IN (“Complainant”) represented by Robert S. Meitus, of Baker & Daniels.  The Respondent is DefaultData.com, Denver, CO (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <bakeranddaniels.com>, registered with Network Solutions, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.

Estella S. Gold, Esquire as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on February 8, 2002; the Forum received a hard copy of the Complaint on February 8, 2002.

On February 13, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <bakeranddaniels.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On February 14, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 6, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@bakeranddaniels.com by e-mail.

A timely Response was received and determined to be complete on March 6, 2002.

On March 15, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Estella S. Gold, Esquire as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Plaintiff is a law firm in Indianapolis, Indiana, which has been using the name “Baker & Daniels” since approximately 1890 in interstate commerce.  Complainant owns United States Trademark Registration No. 1,635,100 for the service mark BAKER & DANIELS, which registration issued on February 12, 1991.

Respondent registered the domain name at issue <bakeranddaniels.com> in approximately February 2000, without Complainant’s authorization. Complainant alleges that its business has been disparaged, and its good reputation damaged by the content of Respondent’s website at <bakeranddaniels.com>. 

Respondent’s website contains different content at different times, but a printout of Respondent’s site state inter alia, “Greed is good!”; “We bend over for you…because you bend over for us!”; “Parasites no soul…no conscience…no spine…NO PROBLEM.”

B. Respondent

Respondent does not dispute Complainant’s registration, status of the trademark with the United States Patent and Trademark Office, content of its sites, or duration of use in commerce of Complainant’s mark.  Respondent has neither currently nor in the past had any relationship, legitimate right or interest between Respondent’s business and Complainant’s business.  Respondent contends that his right to use and own <bakeranddaniels.com> is grounded in the First and Fourteenth Amendments, allowing him to express criticism and opinions.  Respondent alleges that he has not acted in bad faith, because he has never made any commercial use of <bakeranddaniels.com>.

FINDINGS

The Panel finds:

1. Respondent’s registration of <bakeranddaniels.com> is equivalent to the Baker & Daniels registered trademark as well as the Baker & Daniels common law trademark.

2. Respondent has no rights or legitimate interest in the Complaint’s BAKER & DANIELS mark.

3. Respondent’s domain name has been registered and is being used in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this 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.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

I. Identical and/or Confusingly Similar

Complainant contends that the disputed domain name is materially equivalent to Complainant’s mark.  Respondent does not dispute this, in fact Respondent asserts that they “must be similar…”

The Panel finds that the name in dispute, <bakeranddaniels.com> is confusingly similar to a mark in which Complainant has rights.

II.  Rights or Legitimate Interests

Complainant contends that Respondent, known as DefaultData.com, is not commonly known by the disputed domain name or Complainant’s mark.  As a result, Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).  Respondent provides no facts showing a nexus between Complainant and Respondent’s business.

Complainant contends that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i) because it initially registered the disputed domain name under “NameIsForSale.com”, which indicates its primary purpose for registering the disputed domain name was to sell it.  See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).  A latter undisputed name change does not eliminate the apparent intent at the time of initial registration.

Complainant contends that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii) because its “disclaimer” indicating it’s a “free speech flyer” used as a parody is insufficient evidence of rights or legitimate interests when the disputed domain name incorporates Complainant’s well-known mark in its entirety.  See E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free speech/complaint site does not give rights to use a famous mark in its entirety); see also Ciccone v. Parisi (Madonna.com), D2000-0847 (WIPO Oct. 12, 2000) (finding that “[r]espondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith.  First, the disclaimer may be ignored or misunderstood by Internet users.  Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions.  Such confusion is a basis for finding a violation of Complainant’s rights”).

 

Complainant contends that unless the Complainant’s trademark is at least, in part, the target of Respondent’s parody, then Respondent’s work is not a legal “parody.” Respondent’s use of this domain name is not a “parody.”  A “parody” is defined as a “simple form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner.”  People for the Ethical Treatment of Animals vs. Doughney, 263 F.3^rd, 357, 365(4^th Cir. 2001).   There is no juxtaposition here with the domain name.  Also, in this case, Complainant’s trademark is never mentioned on Respondent’s website.  See Campbell v. Acuff-Rose Music, 510 U.S. 569, 127 L. Ed. 2d 500, 114 Ct. 1164, 29 U.S.P.Q.2d 1961, 1969 (1994).

 

Respondent contends that it does have rights and legitimate interests in the disputed domain name because the equal access provisions of the U.S. Constitution’s 14^th Amendment must provide Baker & Daniels employees and partners their Constitutional free speech forum, and should those individuals not have the resources to reserve the disputed domain name for themselves, Respondent must be allowed to register it for them.   The Panel finds that Respondent has never, nor is it currently operating the website located at the disputed domain name for employees of Baker & Daniels.

The Panel finds Pensacola Christian College v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (finding that Respondent has rights and legitimate interests in a domain name incorporating Complainant’s name at which commentary and criticism of Complainant are offered, and at which users are free to post messages about Complainant); see also Meijer, Inc. v. Porksandwich Web Services FA 97186 (Nat. Arb. Forum  July 6, 2001) (finding where a sufficient factual showing is made that no alternatives to using the Complainant's mark or name in the domain name for a complaint site criticizing Complainant exist, then under the unique facts of that dispute, a panel may conclude that the use there is legitimate) distinguishable because Respondent has alternatives to benefiting from the initial interest confusion created by use of Complainant’s mark.

In addition, because Respondent’s domain name merely incorporates Complainant’s trademark, the domain name does not constitute a protectable, communicative message.  (“Whether a particular domain name is entitled to protection under the First Amendment depends on the extent of its communicative message.”  Name Space, Inc. vs. Network Solutions, Inc., 202 F.3^rd 573,(2^nd Circuit 2000).  Respondent has chosen to use the Baker & Daniels mark to deceive Internet users into believing they were accessing Baker & Daniels’ websites.  Such use of the mark is not protected by the First Amendment.  (“Use of another’s trademark is entitled to First Amendment protection only when the use of that mark is part of a communicative message, not when it is used merely to identify the source of a product.”)  Planned Parenthood Federation of America, Inc. vs. Bucci, 1997 WL133313(S.D.N.Y. 1997). 

III.      Registration and Use in Bad Faith

Complainant contends that Respondent’s history of registering domain names that infringe the marks of prominent law firms is evidence of its bad faith intention to prevent Complainant from reflecting its mark in a corresponding domain name pursuant to Policy ¶ 4(b)(ii).  See Australian Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy paragraph 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).

The Panel finds that because Respondent’s domain name is identical to Complainant’s mark, a likelihood of confusion on the part of Internet users will occur as to the ownership and affiliation of the website.  This suggests opportunistic bad faith on the part of Respondent.  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).

Under 15 U.S.C. §1125(d)(1)(B)(i), several factors must be considered to determine whether a respondent acted in bad faith. Among the factors to be considered are “the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods and services; and the person’s intent to divert consumers from the marks owner’s online location to a site acceptable under the domain name that could harm the good will represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the site…”  People for the Ethical Treatment of Animals at 367.  In one case before the Panel, the name “Baker & Daniels” originated from individuals who are partners in that law firm, and these names have been in use since approximately 1890.  Furthermore, the substantial prior use of the mark by the law firm is in connection with the bona fide offering of services.  The content of the Respondent’s website is clearly with an intent to tarnish or disparage the law firm’s services, thereby disparaging the source of the services in use of the mark. Since the Respondent appears, by implication, to be criticizing lawyers, it is evident that the Respondent intended the confused consumer to read that negative message in the contents of the site.

 

DECISION

Respondent shall transfer the domain name <bakeranddaniels.com> to Complainant.  Rule 3(b)(x). 

Estella S. Gold, Esquire, Panelist
Dated:

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