DECISION

Lord, Bissell & Brook v. DefaultData.com

Claim Number: FA0203000108064

PARTIES

The Complainant is Lord, Bissell & Brook, Chicago, IL (“Complainant”).  The Respondent is DefaultData.com, Kansas City, MO (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

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

PANEL

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

Edward C. Chiasson, Q.C. as Panelist.

PROCEDURAL HISTORY

The Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on March 29, 2002; the Forum received a hard copy of the Complaint on March 29, 2002.

On April 2, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <lordbissellandbrook.com> is registered with Network Solutions and that the Respondent is the current registrant of the name.  Network Solutions has verified that the Respondent is bound by the Network Solutions 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 April 4, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 24, 2002 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts and to postmaster@lordbissellandbrook.com by e-mail.

A timely Response was received and determined to be complete on April 24, 2002.

A timely additional submission by the Complainant was received on April 29, 2002.  This was followed by a further timely submission from the Respondent which was received on April 30, 2002.

On May 10, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Edward C. Chiasson Q.C. as Panelist.  The Panelist has considered all of the submissions of the parties.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The Complainant is a law firm that has been in existence since 1914.  In 1954, the firm’s name became Lord, Bissell & Brook. 

For the past 48 years, the Complainant has continuously and extensively used the common law mark “Lord, Bissell & Brook” to identify the source of the legal services it has provided to thousands of clients throughout the United States and throughout the world.  The firm has five offices in the United States (Chicago, New York, Los Angeles, Atlanta, and Rockford, Illinois) and one in London. 

The firm presently has approximately 333 attorneys and more than a thousand clients.  It has provided legal services to clients located in most states (including Colorado, the state of Mr. Wick) and in numerous foreign countries. 

The Complainant registered the domain name <lordbissell.com> in September 1995 and has operated a web site via that domain name since September 1998. 

In November 1997, more than four years prior to the Respondent’s registration of the subject domain name, the Complainant was recognized as the 78^th largest law firm in the United States. 

The Respondent is affiliated with Brian G. Wick, an individual who has registered domain names identical or confusingly similar to scores of major law firms and numerous corporations.

The Complainant has not authorized the Respondent or Mr. Wick to use the Complainant’s mark or law firm name.  To the contrary the Complainant has successfully pursued a prior ICANN proceeding against the Respondent in connection with another domain name reflecting the Complainant’s mark.

Neither the Respondent nor Mr. Wick have manifested any intention to use the subject domain name in connection with a bona fide offering of goods or services.

The Complainant visited the Respondent’s web site on March 21, 2002.  The home page of the Respondent’s web site began with the insult of the federal judge (dubbed a “1^st Amendment Challenged Country Club Good ole’ Boy”) who ruled against the Respondent in the Morrison & Foerster case.  There followed a series of references to objects of the Respondent’s purported parody. The textual portion of the site concluded with a statement that “the web site has no relation to any person, organization, lawyer or law firm claiming rights to Lord, Bissell & Brook.” Below this text is the phrase “Lord Bissell and Brook.com ... ‘have a swim with us...’”  The site features fish swimming about, kangaroos hopping about, and dollar signs moving about. 

The Respondent has never been commonly known by the subject domain name.  In fact, the Respondent’s purported disclaimer on the web site admits a lack of affiliation with the Complainant.

In a prior ICANN proceeding between these parties, the Respondent argued that it was operating a “free-speech” or “parody” site at the domain name <lordbissellbrook.com>.  The panel in that case rejected the Respondent’s “rights or legitimate interests” argument, observing that “[i]t is clear that this [domain name] registration was an attempt on the Respondent’s behalf to misleadingly divert customers and tarnish Complainant’s service mark.”  Lord, Bissell & Brook v. DefaultData.com, FA 97334 (National Arbitration Forum July 17, 2001).

The Complainant relies on its use the name Lord Bissell & Brook and says that the subject domain name essentially is identical.  It states: “The lack of capital letters and the lack of spacing between words in the Domain Name, and the use of “and” instead of an ampersand, do not remove confusing similarity”.

The previous conduct of Mr. Wick and the fact that the Respondent is not identified with or known by the subject domain name support the Complainant’s position that the Respondent does not have a legitimate interest in the subject domain name.

B. Respondent

The Respondent did not address the factual issues, but argued that it is exercising a right of free speech and that the Complainant’s position violates the Respondent’s rights under the United States’ Constitution.

Mr. Wick, who delivered the submission of the Respondent, states that in 1999 he started an Internet project which represented an electronic version of what he experienced some 20 years earlier as a student at the University of Colorado, where he passed out free speech flyers at the physical address to Wardenburg Hospital and also passed out ‘No-Nuke’ free speech flyers at the physical address to Rocky Flats Nuclear Weapon Plant a few miles away from campus.  He states that he operates a website using the <RockwellInternational.com> Internet address. Rockwell was a contractor at Rocky Flats.

Because more and more commerce is occurring on the Internet, Mr. Wick’s Internet project targets Brick & Mortar big business. He states that he has reserved hundreds of Internet addresses similar to the names of large companies, law firms and the resorts and country clubs where people from these large businesses entertain each other.

The original free speech flyer website content at the <MorrisonFoerster.com> address was practically identical to what is found today at the subject domain name.  It is at these free speech flyer websites and free speech flyer websites at well over 100 additional Internet addresses similar to the names of large law firms where Mr. Wick’s provides information about the overall legal system – this same information to which current and former employees and partners of law firms, including the Complainant, may want to add.  It is his intention to emphasize the Internet’s inherent conflict with the United States Constitution by operating free speech flyer websites at Internet addresses similar to the names of numerous law firms.

In 1999 Mr. Wick tried to reserve <AmericanDistributionSystems.com> because it was an Internet address similar to his company name, but the length exceeded the 23-character maximum at the time. He reserved <NameIsForSale.com> as an Internet presence because it conformed to the shorter Internet address standards. It also sounded like a good name for a free electronic bulletin board and represented his business of computer consulting by developing websites for the generic Internet addresses which he was reserving, like <BodyStocking.com>, <hobbits.com>, <WholesaleUsedCars.com>, <CheapChina.com>, <DiscountSofas.com>, <BudgetWines.com>, <StPatricksDayParade.com> and <WholesaleChairs.com>.

<NameIsForSale.com> became Mr. Wick’s Internet WHOIS organizational contact (like a telephone book) and virtually all of his Internet addresses, including his Trademark Internet addresses, were reserved with the <NameIsForSale.com> in the Internet WHOIS ‘telephone book’.

Approximately 85% of Mr. Wick’s Internet addresses are generic. The website at <NameIsForSale.com> has never had any substantive content other than an outline including expectations of a free bulletin board. To avoid any contrived confusion as to his intentions with the <NameIsForSale.com> lookup in the WHOIS ‘telephone book’, Mr. Wick changed his look up in the WHOIS ‘telephone book’ to <DefaultData.com> in the Spring/Summer of 2000 for all his Internet addresses. In January 2000, after ICANN approved Internet addresses with lengths up to 63 characters (.extension not included), Mr. Wick reserved <AmericanDistributionSystems.com>.

Mr. Wick has never offered his Trademark Internet addresses for sale, let alone for a profit.

The Respondent says: “The Complainant claims it has rights to the [subject domain name]. Under the guidelines of UDRP, I do not dispute this claim”.

C. Additional Submissions

The Complainant delivered a further submission in which it asserted that the United States’ Constitution is not relevant to the disposition of the Complaint because the issues are contractually based and relate to the Complainant’s trademark rights.

The Complainant notes that the Respondent is not a client or former client of the Complainant

The Respondent replied to the Complainant’s additional submission and addressed legal arguments advanced by the Complainant.

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.

The Policy provides a number of examples of factual situations from which evidence of bad faith can be inferred.  They are not exhaustive.

The parties have referred to a number of previous decisions.  While they are neither controlling nor binding on this Panel reference to them can be of assistance.

Identical and/or Confusingly Similar

The Respondent concedes that the subject domain name is identical or confusingly similar to the Complainant’s rights.

Rights or Legitimate Interests

The Respondent uses the Complainant’s name as a vehicle to comment critically on the legal system and matters associated with it.  The Complainant points to the usual indicia of a lack of legitimate interest – for example, no authorization and the fact that the Respondent is not normally known by the name.  The Respondent contends that it is exercising its right of free speech.  In the context of this matter, it is not.

Free speech allows criticism.  Insofar as the criticism is directed towards a particular entity, reference to and potentially the use of the entities name, may be permissible.  Use of another’s mark to attract users for the purpose of criticizing issues that merely relate to the general activity of an entity is not legitimate.

The Respondent does not have a legitimate interest or right in the subject domain name.

Registration and Use in Bad Faith

Findings that the a respondent does not have a legitimate interest in a domain name that is identical or confusingly similar to the rights of another, do not lead automatically to bad faith, but the facts that the support the findings may be relevant to the issue.

In this case the Respondent contends that it is entitled to draw users to its web-site through the use of the subject domain name.  By doing so, at a minimum it risks confusing users into thinking that the Complainant supports the criticism.  It trades on the Complainant’s reputation and recognition to criticize the legal system and by association risks tarnishing the Complainant’s reputation and mark.

The potential harm to the Complainant comes not from criticism direct to it, to which it could respond with particularity, but from criticism of others who operate in the legal system and of the legal system itself.

Again, the Respondent’s right to free speech is not engaged.  It can criticize, but it cannot draw users to its criticism by using the intellectual property rights of another. Registration and use of a domain name for this purpose is bad faith. 

FINDINGS

Identical and/or Confusingly Similar

The subject domain name is identical or confusingly similar to the Complainant’s name and mark.

Rights or Legitimate Interests

The Respondent does not have a right to or a legitimate interest in the subject domain name.

Registration and Use in Bad Faith

The subject domain name has been registered and is being used in bad faith.

DECISION

Based on the information provided to the Panel and on its findings of fact, the Panel concludes that the Complainant has established its case.

The Complainant asks that the subject domain name be transferred to it.  The Panel so orders.

Edward C. Chiasson, Q.C., Panelist
Dated:  May 23, 2002

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