WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Valero Energy Corporation v. American Distribution Systems, Inc., D/B/A Default Data.Com And Brian Wick
Case No. D2001-0581
1. The Parties
Complainant is Valero Energy Corporation., a Delaware corporation with its principal place of business in San Antonio, Texas, U.S.A. (Valero).
Respondents are (a) American Distribution Systems, Inc., d/b/a DefaultD, and (b) Brian Wick. American Distribution Systems, Inc., is a corporation with a physical address in Aurora, Colorado, U.S.A., and a mailing address in Denver, Colorado, U.S.A. Brian Wick is an individual whose addresses are the same as American Distribution Systems, Inc.�s addresses. Brian Wick is president of American Distribution Systems, Inc. In this decision, Respondents are some times referred to collectively as Respondents and sometimes by their individual names (i.e. American Distribution and Wick).
2. Domain Name and Registrar
The domain name in issue is .
The registrar is R, Inc. with offices in New York, New York, U.S.A. (Register).
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received Valero�s complaint in hard copy form on April 23, 2001, and via email on April 25, 2001. After the complaint was received in electronic form, the Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Valero made the required payment to the Center. The formal date of the commencement of this administrative proceeding is May 2, 2001.
On April 26, 2001, the Center transmitted via email to Register a request for registrar verification in connection with this case. On April 30, 2001, Register transmitted via email to the Center Register�s confirmation that (1) Wick is the current registrant of the domain name in issue, (2) the Policy applies to the domain name, and (3) the domain name is "active".
On May 2, 2001, the Center transmitted to Respondents Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, via post/courier, facsimile, and email. The Center advised, inter alia, that the response was due by May 21, 2001, and pointed out the response should be in accordance with requirements set out in the Rules and the Supplemental Rules.
On May 17, 2001, the Center received Respondents� request for an extension to May 26, 2001, of their time to file. On May 17, 2001, Valero transmitted to the Center Valero�s objection to Respondents� request. On May 18, 2001, the Center advised the parties via email that the Center had set a new due date of May 24, 2001.
The Center received Respondents� response via email on May 24, 2001, and in hard copy on May 29, 2001. Respondents requested a panel of three arbitrators. On May 25, 2001, the Center requested via email that by May 30, 2001, each party identify three candidates for the panel.
On May 24, 2001, Valero requested via email permission to file a reply to the response. On May 25, 2001, the Center advised Valero via email that it would be in the panel�s sole discretion if Valero were to submit a reply.
On May 25, 2001, Valero advised the Center and Respondents of Valero�s three candidates for the panel. On the same day, Respondents objected to each of Valero� s candidates. On May 30, 2001, Valero advised the Center and Respondents via email that Respondents� objections should be disregarded. On June 1, 2001, the Center responded via email to Respondents� May 25 objections. On June 5, 2001, Wick transmitted to the Center another email, stating in part:
"I operate over one hundred parody web sites using Internet domains that �correspond� to large, powerful and successful law firms and kindly request a panel of retired or current Judges (solely at the choice of the WIPO) and not �lawyers� who become �arbitrators for the day� ... ."
On July 4, 2001, the Center acknowledged receipt of the foregoing message and advised that it would be forwarded to the panel.
On July 5, 2001, the Center received via email Valero�s reply to the response, and on July 12, 2001, a hard copy of the reply. On July 6, 2001, the Center advised Valero that the reply would be forwarded to the panel and consideration of the reply is discretionary with the panel.
On July 9, 2001, the Center received via email Respondents� "Response To Complainant�s Addendum", and on July 16, 2001, a hard copy version of the document. On July 10, 2001, the Center acknowledged receipt of this response, and advised it would be forwarded to the panel and consideration is discretionary with the panel.
On July 23, 2001, the Center advised the parties via email of the appointment of Gordon D. Harris and Richard W. Page as panelists, and David W. Plant as presiding panelist, and that in accordance with Rules, Paragraph 15, the decision is to be transmitted to the Center by August 6, 2001.
4. Factual Background; Parties� Contentions
a. The Trademark
The complaint is based on the service marks VALERO and VALERO ENERGY CORPORATION. Both are registered on the principal register of the United States Patent and Trademark Office (USPTO). Copies of the registrations appear at Annexes 3 and 4 to the complaint. VALERO is a word mark, first used in commerce in 1983. VALERO ENERGY CORPORATION is a word and design mark, first used in commerce in 1979. The registrations issued in 1985 and 1982, respectively.
b. The Complaint Re Respondents� Activities
Valero contends that (1) the domain name in issue is identical or confusingly similar to the service marks in which Valero has rights, (2) Respondents have no rights or legitimate interests in the domain name, and (3) the domain name was registered and is being used in bad faith.
Valero contends that the domain name is confusingly similar to its registered service marks because contains the word mark VALERO and two of the words in the VALERO ENERGY CORPORATION mark.
Valero cites authority to the effect that Internet users often hazard a guess as to a domain name, especially if there is an obvious domain name to try. Valero asserted its counsel discovered Respondents� domain name by hazarding such a guess that "www." would address Valero�s website.
Valero contends that Respondents have no rights to the domain name because Valero owns the exclusive right to use the service marks throughout the United States in connection with oil and gas exploration, production, processing and distribution services. Valero asserts that because is confusingly similar to Valero�s service marks, Respondents "cannot prove any legal right to the domain name," citing Morrison & Foerster, L.L.P. v. Wick, 94 F.Supp.2d 1125, 1134-35 (D.Colo. 2000).
Valero contends Respondents have no legitimate interests in the domain name, because "Respondents have a long, documented history of engaging in cybersquatting activity," and "Respondents have repeatedly [been] found to have violated the intellectual property rights of trademark owners by registering and using certain domain names in bad faith," citing Morrison & Foerster, supra, Hunton & Williams v. American Distribution Systems, Inc. et al., WIPO D2000-0501, and Bandon Dunes, L.P. v. DefaultD, WIPO D2000-0431.
Valero contends Respondents have registered and are using the domain name in bad faith, asserting:
1. Wick boasts on his personal website he has registered "several hundred Internet Domains confusingly similar [sic] to large law firms & the large companies ...." (Emphasis in complaint. Copy of April 5, 2001 website appears at Annex 7.) Wick has also testified under oath he has registered domain names for 7% of the Fortune 500 companies as his "way of messing with them." Valero is a Fortune 500 company. It is reasonable to conclude Wick was aware Valero "had an interest in the domain name," before he registered it.
2. In Morrison & Foerster, the court found Wick�s registration of several domain names was in bad faith, "based primarily on Wick�s testimony in which he admitted that he was on a �rampage� against corporate America and the legal community and took pleasure in seeing others �squirm around over 70 bucks.�" This testimony and his "messing with them" testimony "conclusively demonstrate the Respondents� bad faith."
3. After receiving Valero�s February 14, 2001 "demand letter" [1], Respondents� "first response was to publish a website using the domain name," with, in photos and text, "presumably a reference to cattle manure." (Copy of website printout at Annex 8.) Respondents� use of Valero�s marks in the domain name is "in connection with energy sources, a use of the ... marks to which Complainant owns the sole rights pursuant to its U.S. trademark registrations."
4. The "Infringing Website also contains hyperlinks to numerous other websites owned and operated by Respondents ... These websites contain simulated images depicting various celebrities and politicians and others being portrayed in a disparaging light. The Respondents� use of a domain name that is confusingly similar to Complainant�s service marks is disparaging to Complainant. Any argument from Respondents that the Infringing Website is merely a parody or fair use fails as a matter of law." Valero cites the Bandon Dunes decision, supra.
5. It is "self-evident that Respondents seek to divert traffic from Complainant�s website to the Infringing Website." Valero cites Hunton & Williams, supra.
6. There is no evidence "either Respondent has ever used, or prepared to use, the domain name ... in connection with a bona fide offering of goods or services."
7. Neither Respondent has ever been commonly known by the name "Valero Energy".
8. Wick�s testimony clearly shows he registered "for the purpose of preventing Complainant from doing so."
9. Respondents have made no fair use of the domain name. Respondents� fair use defenses have been uniformly rejected, citing, e.g. Bandon Dunes, supra. Nothing on the "Infringing Website ... could reasonably be considered a �parodic character.� Respondents fail to meet the threshold requirement for a parody."
Valero requests that the panel determine that be transferred to Valero.
The complaint concludes with the requisite certification as to completeness and accuracy and is signed by Valero�s counsel.
c. The Response
1. Preliminary Comments
The response, not including Exhibits, comprises more than 11,000 words, thus exceeding by more than 6,000 words the 5,000 word limit set out in Supplemental Rules, Paragraph 10.(b). The response includes abundant and redundant argument asserting various rights under the U.S. Constitution, criticizing "the Establishment", challenging the integrity of the process under the Policy and Rules, challenging the impartiality of panelists, challenging the competence of the judiciary, and the like.
The panel has elected to consider the response to the extent its contentions and assertions are arguably relevant here. We summarize here the portions of the response which appear pertinent to aspects of the dispute over which the panel has jurisdiction in this proceeding. In so doing, for each contention and assertion, we have cited at least one page at which the contention or assertion appears in the response. Also, to some extent, we have attempted to group contentions and assertions directed to similar points.
The response is generally written in the first person. It is signed on behalf of all Respondents by Wick.
2. Respondents� Contentions and Assertions
In essence, Wick asserts throughout that U.S. Constitutional guarantees of free speech (Wick refers to the 5th and 14th Amendments) give rise to a right in Wick to use Valero�s service marks, as well other well-known marks, as Internet addresses to websites at which Wick contends he parodies an aspect of the trademark or service mark owner�s activities. In addition, Wick asserts (p. 3) that ACPA �3002(d)(1)(B)(ii), in providing that bad faith intent shall not be found where a court determines "the person believed and had reasonable grounds to believe" that use of the domain name was a fair use, affords Wick permission to use any Internet domain name that corresponds or is identical to a "famous, strong and exclusive" mark. At the same time, Wick asserts (p. 8) ACPA & ICANN UDRP violate the U.S. Constitution.
Wick contends (p. 4) in August 1999 NameIsForS became American Distribution�s d/b/a for all his Internet based activities, including:
"a) Operating free bulletin board like eBay matching buyers & sellers.
"b) Offering my programming services and selling my generic Internet Domains.
"c) �TownDrunk Parody Web Site Network� which can be accessed by keying in TownD or by keying in one of my generic Internet Domains ...
"(1) The TownDrunk Parody Web Site Network links to my Trademark Internet Domain parody pages but these pages do not link back or anywhere else:
"(a) Non commercial, NO meta-tags, NO meta-links, NO hyper-links, NO email, NO advertising and NO goods or services offered [2].
"(b) Just free information about the Establishment in the form of parody."
Wick asserts (p.5) that "I changed my �default� company at R to my d/b/a NameIsForS for all new Internet Domain reservations," and --
"a) From August 1999 on, all my Trademark & generic Internet Domains were reserved with my Internet d/b/a/ NameIsForS as the WHOIS contact company [3]
"b) 85% percent [sic]of my Internet Domains are generic ... and 15% of my Internet Domains �correspond (are identical)� to famous, strong and exclusive marks like ValeroE." [4]
Wick contends (p. 5) that ACPC and UDRP opinions have "subjectively translated my d/b/a NameIsForS to: �This Internet Domain is for sale only to the mark holder for a lot of money.�" Wick asserts (p. 5) that as a consequence he changed his WHOIS contact company to a d/b/a DefaultD. "This long and lengthy process (10 screens per domain) was finally done by June 2000." Wick asserts (p. 6) this change led to UDRP opinions that he was attempting to hide is true intentions.
Wick asserts also (p. 7):
"a. By the Complainant�s own admission, ValeroE is confusingly similar to the Complainant�s Mark �Valero Energy� which is famous, strong and exclusive.
"1) We both operate using an identical channel of trade ... .[also, p. 22]
* * *
" .... one might hazard a guess at keying in an Internet Domain, like ValeroE, as emphasized in the aforementioned Brookfield and Sporty�s cases and be surprised with free speech information about the energy industry in the form of parody."
Wick contends (p. 21):
"Because ValeroE is confusingly similar to the mark �Valero Energy Corporation�, any free speech author, including me, is able to use ValeroE to communicate free information about the energy industry."
Wick asserts (p. 21) that both Valero�s web site, at V, and his web site, at ValeroE, "communicate free information about the energy industry."
Wick contends (p. 13):
"f. When I communicate free speech information about the energy industry using ValeroE, I am really communicating free speech information using the famous, strong and exclusive mark �Valero Energy�, which is used in every other media channel.
"g. Examples of fair use free speech using ValeroE:
* * *
"2) I communicate free information about energy industry in the form of a fan club using ValeroE to praise Valero Energy Corporation.
* * *
"4) I communicate free information about the energy industry in the form of parody using ValeroE." (Also, p. 21)
Wick contends (p. 22) his U.S. Constitutional rights afford him opportunities to learn from his mistakes, but "my subjectively interpreted mistakes are turning out to be a result of flawed ACPA & UDRP opinions anyway." (Emphasis in response)
Wick asserts (p. 24) he includes "a standard disclaimer at the top of each page, which is a parody in itself ... ."
Wick contends (pp. 23, 24) the majority of his Trademark Internet Domains were "reserved" prior to the ACPA & UDRP, i.e. were "operational" by the end of 1999.
Wick asserts (p. 5), "I have never listed any of my Trademark Internet Domains for sale."
Wick asserts (p. 5) that, in response to "unsolicited threatening communication from lawyers," [5] he
"reacted by modifying my parody web site content & WHOIS contact information and because of some of the letters, I even registered a few of my parodies as bogus d/b/a�s of my company ADSI which I withdrew a few months later when I realized I had been manipulated by these unsolicited phone calls and letter from lawyers. (Exhibit-J)" [6]
Wick asserts (p .6) "an imaginary d/b/a WHOIS company called FreeSpeechP could operate the exact same parody [as Wick] is the only evidence of bad-faith that has ever existed." Wick contends (p. 6) "many people (including lawyers) have created temporary email addresses and sent me email trying to entrap me. (Exhibit K)." [7]
Wick avers (p. 6) ADPC and UDRP opinions "also cited my high volume of Trademark Internet Domains." Wick states (p.6) "I have never made a secret of how excited I was to be able to communicate free information about the Establishment in the form of parody using the Establishment�s capriciously coveted Internet Domains."
Wick contends (p. 7) "I have always better communicated with people (or messed with as I have testified) in a more sarcastic way using parody, metaphors and similes."
Wick asserts (p. 9) that Valero "reserved ValeroE on October 12, 2000 ... ValeroE is surely a �corresponding domain name� for the famous, strong and exclusive mark �Valero Energy�."
Wick contends (p. 9, also 18) he cannot sell "my Trademark Internet Domains because they are the integral part of my �TownDrunk Parody Web Site Network�. I do not make a direct commercial use of my Trademark Internet Domain parodies simply because these web sites have NO meta-tags, NO meta-links, NO hyper-links, NO email, NO advertising and NO goods or services offered." Wick contends (p. 16) he makes "no commercial use of ValeroE, or any of my Trademark Internet Domain parodies ... ."
Wick contends (p. 10):
"a. Valero Energy has produced no bad-faith evidence of their own, because they know there is no bad-faith evidence to be found.
"b. Valero Energy is relying solely on the US unconstitutional guilty-until-proven-innocent legal model by riding the coat tails of retroactive, unknown and subjectively interpreted evidence from previous ACPA & UDRP cases."
Wick contends (p. 11) Valero is guilty of bad faith, asserting that Valero had 3.5 years from the time Valero registered V in February 1996 to Wick�s registration of ValeroE in October 1999, and by Valero�s admission, it "did not even capriciously covet ValeroE until March 2001, over 5 years after reserving V." Wick asserts Valero has been derelict and negligent "in tending to a capriciously coveted Internet Domain they new [sic] how to reserve and could have reserved for 3.5 years."
Wick contends (p.12) Valero claims "Rights-In-Gross for their mark �Valero Energy� meaning they are claiming exclusive rights to all uses and all media channels, including those media channels they do not control and are not entitled to control, like the Internet." (Emphasis in original)
Wick contends (p. 13):
"e. Because �Valero Energy� is a famous, strong and exclusive mark ValeroEnergy.anyextension initially represents free speech information about the energy industry, whether that free information come [sic] from the Complainant or some other free information source."
"f. When I communicate free speech information about the energy industry using ValeroE, I am really communicating free speech information using the famous, strong and exclusive mark �Valero Energy�, which is used in every other media channel."
Wick criticizes (pp. 14 - 16) the opinion in Morrison & Foerster, supra, and a UDRP decision involving Morrison & Foerster and Wick.
Wick relies heavily (e.g. pp. 3, 13, 14, 19, 25) on the majority opinion in Bruce Springsteen (Sony) v. Jeff Burgar, WIPO D2000-1532. Wick quotes or paraphrases extensively from portions of that decision, especially to the effect that: [8]
" ... the users of the internet do not expect all sites bearing the name of celebrities or famous historical figures or politicians, to be authorized or in some way connected with the figure themselves. ... The internet ... is a valuable source of information in many fields, and any attempt to curtail its use should be strongly discouraged. Users fully expect domain names incorporating the names of well known figures in any walk of life to exist independently of any connection with the figure themselves, but having been placed there by admirers or critics as the case may be."
Wick criticizes (e.g. pp. 17, 20) the dissenting opinion in Bruce Springsteen. In essence, Wick contends that "US Constitutionally guaranteed free speech is a bona-fide use of a mark," and therefore the second element of Policy, Paragraph 4.(a) cannot be satisfied here, and the third element is not applicable. Wick asserts that decisions finding these two elements have been satisfied confuse the two elements and improperly fold the third element into the second element. Wick argues that the dissenting view in Bruce Springsteen and similar views in other decisions have all been modified by the majority opinion in Bruce Springsteen.
Wick criticizes (e.g. pp. 19 - 20) various other domain name decisions, including decisions by one or another of the members of this panel. Wick argues (p. 17) that a newspaper report about "Valero Energy" would be forbidden by those decisions.
Wick asserts (p. 15) "My web sites communicate free information about the legal system in the form of parody using Internet Domains which �corresponded� to the famous, strong & exclusive marks of over a hundred law firms."
Wick relies (p. 16, also pp. 7, 8) on Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 582 (1994), for the proposition that inter alia "fair use for purposes such as criticism [or] comment ... is not an infringement."
Wick iterates (p. 23) he communicates free information about the energy industry using ValeroE. He asserts (p. 23):
"In order for my �TownDrunk Parody Web Site Network� to be successful I communicate free information about the Establishment in the form of parody using Internet Domains confusingly similar to famous, strong and exclusive marks of the Establishment."
"A consumer protection advocate is allowed to �mess� with Corporate America by communicating free information about the Establishment in the form of parody using hundreds of the Establishments [sic] capriciously coveted Internet Domains.
* * *
"One way for a consumer protection advocate to go on a �rampage� against Corporate America is to communicate free information about the Establishment in the form of parody using hundreds of the Establishments [sic] capriciously coveted Internet Domains."
Wick asserts (p. 25) that "both the Complainant and I want to communicate free information about the energy industry using ValeroE."
Citing Bruce Springsteen, Wick argues (p. 25):
"If an Internet user is sophisticated enough to correctly type in �ValeroE� then, it is assumed that an Internet user is sophisticated enough to recognize a non-official web site with a standard disclaimer the size of Texas."
Wick contends (p. 25) that, on "the off chance" such an Internet user does not find "the free information they are looking for at ValeroE, an Internet user sophisticated enough to correctly spell �ValeroE�," could key in V or use a well-known search engine.
Wick contends (p. 26):
"a. My ValeroE web site does not provide similar commercial services as the Complainant, simply because ValeroE is a non-commercial web site.
"b. However, both the Complainant (who has operated V since 1996) & my ValeroE web site do communicate free information about the energy industry."
Wick states (p. 26) he has never been known as "Valero Energy ", and any one going to his web site would be looking for "free information about the energy industry because the �Valero Energy� mark is famous, strong and exclusive."
Wick asserts (p. 26) that the ACAP and Bruce Springsteen confirm there are "many choices for the Complainant to choose a �corresponding domain name� and, therefore, my use of ValeroE does not prevent the Complainant from doing so." Wick asserts Valero has no interest in ValeroE, Valero had 3.5 years after registering V to prevent another from registering ValeroE, Wick did not attempt to block use of the mark, and Valero has reserved "ValeroE" as its "corresponding domain name." [9]
Wick asserts (p. 27) his "Trademark Internet Domain parody pages" center around his "TownDrunk Parody Web Site Network". He analogizes his parody pages to parody pages in magazines such as Mad Magazines and National Lampoon. Wick argues his "TownDrunk" logo is placed on each of his Trademark Internet Domain parody pages, just as magazines contain a logo on their pages.
Wick states (p. 27):
"Some day, I hope to sell hats, T-shirts, other merchandise, advertising and generic Internet Domains on my TownD web site to offset the enormous debt I have incurred in developing my Tradmark Internet Domain parodies ... ."
In his conclusion, Wick asserts (p.30), inter alia, Valero�s case "rides solely on the coat tails of my previous cases ... and ... has presented no evidence, because none exists."
Wick requests (p. 31) that he be permitted to keep ValeroE "because it is an integral part of my �TownDrunk Parody Web Site Network� and ValeroE allows me to effectively communicate free information about the energy industry and the Establishment."
The response concludes with Wick�s certification, on behalf of all Respondents, as to completeness and accuracy.
d. Valero�s Reply to Response
The panel did not request Valero�s reply. Rule, Paragraph 12. The panel has read the reply and decides in its discretion not to take into account any statement in the reply. The reply does not add any evidence, argument or inference the panel can not derive from the complaint and the response.
e. Respondents� Response to Complainant�s Addendum
The panel did not request this response to Valero�s reply. Rule, Paragraph 12. The panel has read the response and decides in its discretion not to take into account any statement in the response. The response by and large repeats Respondents� contentions in their original response.
5. Discussion and Findings
Paragraph 4.(a) of the Policy directs that Valero must prove, with respect to the domain name in issue, each of the following:
(i) The domain name is identical or confusingly similar to a mark in which Valero has rights, and
(ii) Respondents have no rights or legitimate interests in respect of the domain name, and
(iii) The domain name has been registered and is being used in bad faith.
Paragraph 4.(b) of the Policy sets out four illustrative circumstances, any one of which, if proved by a complainant, shall be evidence of a respondent�s registration and use of a domain name in bad faith under Paragraph 4.(a)(iii).
Paragraph 4.(c) of the Policy sets out three illustrative circumstances, any one of which, if proved, shall demonstrate respondent�s rights or legitimate interests to the domain name for purposes of Paragraph 4.(a)(ii).
a. Identity or Confusing Similarity
Valero has the burden of proving this element and each of the other two elements of Paragraph 4.(a) of the Policy.
It is beyond dispute that, under United States law, Valero has rights in the service marks VALERO and VALERO ENERGY CORPORATION. Each mark is the subject of a registration on the Principal Register of the USPTO. The registrations issued 17 years and 14 years, respectively, before Respondents registered . On this record, it is fair to infer that Valero�s rights in the mark are incontestable under 15 U.S.C. �1065.
Wick repeatedly agrees that ValeroE is confusingly similar to the mark "Valero Energy Corporation" and "Valero Energy" which is "famous, strong and exclusive." Wick readily agrees that he relies on confusing similarity in his parody sites (e.g. "parody cannot be a successful parody unless the subject material ... is identical to or confusingly similar to a Trademark or Service Mark"). Also, Wick repeatedly asserts that Valero and Respondents operate in identical channels of trade.
In light of the foregoing, on this record, the Panel finds that Valero has carried its burden of proof as to Paragraph 4.(a)(i).
b. Rights or Legitimate Interests
Valero has demonstrated (1) ownership of the two marks, (2) the validity of the marks, (3) Valero�s continuous use of the marks for years before Respondents registered the domain name, and (4) the lack of any express authorization by Valero of Respondents� use of the domain name.
It is clear from the USPTO registrations, and from Valero�s complaint, that the marks afford Valero "exclusive" of the marks for "oil and gas exploration, production, processing and distribution services."
Valero�s prior use and registrations of the two marks do not alone preclude Respondents from having any rights or legitimate interests in the domain name [10]. The panel must consider the rights and interests Respondents claim and their purpose in asserting such rights and interests. Here, Respondents have elected to use "Valero Energy" as a domain name -- in other words, as an address or an identifier of the source of the content at the web site. "Valero Energy" is not only referred to in the content of the web site page, "ValeroEnergy" is the address of the web site.
On this record, the question as to rights and legitimate interests resolves to the issue of whether or not Respondents are within the protection of Policy, Paragraph 4.(c)(iii), or a similar safe harbor. The core issue is whether or not Respondents are making a "legitimate noncommercial or fair use of the domain name." If they are, a second issue is whether or not such use is "without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
In the Panel�s view, neither party has focused properly on the core issue of "legitimate noncommercial or fair use." In the Panel�s view, in light of the weight of authority, the resolution of this core issue turns on whether or not the domain name in issue here, which is demonstrably and concededly confusingly similar, if not identical, to the marks in issue, can be the subject of noncommercial or fair use separate and apart from the fair use or free speech principles that may arguably protect the content of the web site whose address is the domain name.
As for "noncommercial use" of the domain name, it appears that Wick has maneuvered in creative ways to confect the impression that the domain name in issue is not an address of a commercial website. The undisputable facts point to the opposite conclusion. For example:
1. Wick admits that at least from August 1999 to June 2000, the domain name was registered with his d/b/a NameIsForS as the contact company [11].
2. All of Respondents� Internet activities under the NameIsForS d/b/a included, inter alia, "Offering my programming services and selling my generic Internet Domains." [12]
3. Wick has openly expressed here his hope that he will someday "sell hats, T-shirts, other merchandise advertising and generic Internet Domains on my TownD web site to offset the enormous debt I have incurred in developing my Trademark Internet Domain parodies ... ." [13]
4. Wick�s use in 2000 of three well-known law firm names as "bogus" d/b/a�s was in each case for the stated purpose of transacting "Internet eBusiness consulting, web design and programming, bar code distribution computer systems and web based property design & management systems." These three names also comprise three of Wick�s domain names.
5. At the web site of , an advertising graphic for Register appears, touting "Email Services", "Affiliate Program", and "Business Resources". Whether such services or products are offered by Respondents themselves or by Register is not material. The services and products are offered at the web site in issue.
On this record, it is fair to conclude that Respondents are not making, and do not intend to make, legitimate noncommercial use of the domain name.
As for fair use, in the Panel�s view, it is not the address of the web site that is protected by free speech principles, but rather the content of the web site. Both parties tend to merge the two uses in their contentions. Whatever may be the parodic character of the web site, it is and must be in the content and not the address -- i.e. not the domain name itself. The domain name itself is not protected. Bandon Dunes v. DefaultD, WIPO D2000-0431 (citing Compagnie de Saint Gobain. Com-Union Corp., WIPO D2000-0020, E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615.
As in these cases cited and other situations, Respondents here are openly counting on initial interest confusion to lead the Internet user to the "parody" site. Disclaimers and TownDrunk logos appear after the Internet user arrives at the web site. This is too late. The Internet user has arrived at the site because of initial confusion on which Respondents openly rely here. To assume, as Wick does, that Internet users who key in expect to find parody at the site is unfounded. Well-known service marks are meant to identify a legitimate or authorized source of services the marks are ordinarily used with. The source, here Valero, may be a proper subject of parody, but its valid service marks may not properly be used as the address for a website purporting to contain such parody.
The majority opinion in Bruce Springsteen, supra, does not avail Respondents here. That case centered on the rights of celebrities, famous historical figures or politicians. This dispute concerns undisputably strong and well-known service marks. In the commercial world, Internet users generally expect to find information sponsored or endorsed by the owner of the mark at a web site whose address is a strong and well-known mark. It is not enough to simply substitute in the Bruce Springsteen majority opinion words that are not there, and which alter the thrust of that opinion. It is an inappropriate distortion.
On this record, the Panel finds that Valero has carried its burden of proof with regard to Paragraph 4.(a)(iii) as to the domain name in issue.
c. Registration and Use in Bad Faith
In appropriate circumstances, bad faith registration and use of a contested domain name can be inferred from circumstantial evidence. Both registration in bad faith and use in bad faith must be proved by Valero.
Paragraph 4.(b)(iv) of the Policy sets out an illustrative circumstance of "evidence of the registration and use of a domain name in bad faith." That subparagraph provides:
"iv. by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
This illustrative criterion differs from any of the illustrative criteria set out in Paragraph 4.(c) regarding rights and legitimate interests. There are, however, some overlaps in considerations.
In light of the undisputed facts here, it is clear that Respondents have intentionally attempted to attract Internet users to the web site by creating a likelihood of confusion with Valero�s service marks as to source, sponsorship or affiliation of the web site or of a service on the web site. Respondents openly and enthusiastically rely on the confusion they have created as to source, sponsorship or affiliation. The question is whether or not they have done so for commercial gain.
In the panel�s view, in light of the facts recited supra as to Respondents� past activities and intent as to future activities, it is not reasonable to reach any conclusion other than Respondents� activities have been, at least in part, for commercial gain. Respondents have in the past offered services under d/b/a�s comprising famous service marks. They have sold goods at a web site whose domain name has been identical or confusingly similar to a well-know service mark. Services are in fact offered at the web site [14]. Respondents "hope" to sell goods and "generic" domain names at the web site, i.e. on the TownDrunk Parody Web Site Network, or which is an "integral part." By his own admission, "all" of Wick�s Internet based activities under the d/b/a NameIsForS have offered his programming services and sale of his "generic" domain names.
Taken together, this integral network which Wick says cannot afford to lose is not a purely altruistic, public service. It is commercial endeavor. Parody is its cover. But as we have seen, the cover is misplaced. Parody cannot protect the domain name. Parody may, but not necessarily so, protect the content at a web site. In short, Respondents have been hanged by their own evidence and contentions.
The Panel finds that, under Paragraph 4.(b)(iv), Respondents have registered and used in bad faith.
6. Decision
In light of the findings by the Panel, the Panel decides that Valero has met its burden of proof with respect to each of the three elements of Policy, Paragraph 4.(a).
Accordingly, the Panel requires that the registration of the domain name be transferred to Valero.
David W. Plant
Presiding Panelist
Gordon D. Harris
Panelist
Richard W. Page
Panelist
Dated: August 12, 2001
Footnotes:
1. This apparently refers to a March 14, 2001 email from Valero�s counsel to Wick (Annex 5).
2. Wick says (p. 24) Valero is lying with regard to web site hyper-links. Wick asserts Valero has presented no evidence of hyper-links because there is none.
3. At p. 6, Wick asserts legal issues have caused his d/b/a/ NameIsForS never to be more than a web site outlining his Internet business expectations.
4. Wick asserts (p. 4) he has registered "over a hundred law firms & lawyers like FLeeB in order to communicate free information about the legal system."
5. Wick includes copies of two letters at Exhibit I. One letter is a January 4, 2000 letter from Morrison & Foerster, which states inter alia:
"... the domain names and were registered by an entity named Morri, Son & Foerster on October 24, 1999. ... It is our understanding that there is some affiliation between ADS and Morri, Son & Foerster given that both entities share the same phone number and share the same post office box."
6. Exhibit J includes State of Colorado (a) June 2000 certificates of withdrawal of trade name and (b) January 2000 certificates of assumed or trade name by American Distribution Systems re three well-known law firms, viz.: "MorrisonHecker", "HuntonWilliams", and "GrahamJames." In each certificate of assumed or trade name, Wick stated "the kind of business transacted under such assumed or trade name is: Internet eBusiness consulting, web design and programming, bar code distribution computer systems and web based property design & management systems."
7. Exhibit K contains a single page which appears to reproduce a July 14, 2000 email message from "Brian Meadows", viz. "Are you interested in selling the domain name ?", together with Wick�s response, in part: "WilliamSC is not offered for sale.
8. We quote from the decision itself, not from Wick�s replication which, inter alia, substitutes "trademark or service mark" for "the figures themselves."
9. Wick�s Exhibit M comprises print outs of registration information for ValeroE, ValeroE, and ValeroE. It appears that, on October 12, 2000, Valero registered both .net and .org domain names.
10. Valero did not register ValeroE in 1996, when Valero registered V and when ValeroE was available. Valero registered ValeroE and ValeroE in October 2000, one year after Respondents had registered ValeroE. This sequence of events is not relevant to the panel�s considerations under the paragraphs of the Policy on which we rely in this decision.
11. After this d/b/a was found in Morrison & Foerster v. Wick, 94 F.Supp.2d 1125 (D.Colo. 2000), to give rise "to reasonable inference of intent to sell the domain names for a profit," Wick changed his contact company to another d/b/a, viz.: DefaultD. As Wick�s own Exhibit E shows, his NameIsForS website advertised: "Name the property, product or service you want to donate, sell, buy or rent."
12. In his response, Wick takes care to refer only to his desire to sell his "generic" domain names. He asserts he cannot sell his "Trademark" domain names because they are an integral part of his TownDrunk Parody Web Site Network. This does not ring true. If, as Wick asserts, the only route to the Network is by keying in or one of his "generic" domain names, his "Trademark" domain names, such as are not needed to serve as domain names in connection with the Network. On the other hand, the logical conclusion from Wick�s contentions is that the domain name and web site are an integral part of all of Wick�s offers of services and goods on his Network.
13. In Hunton & Williams, WIPO D2000-0501, the panel found as a fact, as of August 1, 2000, "Respondent�s and web sites "have advertised products, in the form of T-shirts ..." These are, in Wick�s terms, Trademark Internet Domain names.
14. The terms and conditions of Respondents� arrangement with Register are not apparent from this record, other than an agreement that the provisions of the Policy apply to disputes of this kind. The web site is apparently set up, serviced or otherwise subject to some agreement with Register.
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