WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Chadbourne & Parke LLC v. American Distribution Systems, Inc. dba DefaultD and Brian Wick
Case No. D2003-0553
1. The Parties
The Complainant is Chadbourne & Parke LLC, New York, United States of America, represented by Chadbourne & Parke, LLP, United States of America.
The Respondent is American Distribution Systems, Inc. dba DefaultD and Brian Wick, Denver, Colorado, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 12, 2003. On July 14, 2003, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On July 17, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, Paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 22, 2003. In accordance with the Rules, Paragraph 5(a), the due date for Response was August 11, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on August 13, 2003.
The Center appointed Mark A. A. Warner as the Sole Panelist in this matter on August 22, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, Paragraph 7.
4. Factual Background
The Complainant is an international law firm, headquartered in New York, with offices in Washington, Los Angeles, Houston, London, Moscow and Beijing. The Complainant has been in existence as a New York-based firm since 1902, and since that time the mark CHADBOURNE has appeared in the firm name. Since 1937, the mark PARKE has also appeared in the firm name. However, it is not until 1986 that the firm used exclusively the marks CHADBOURNE and PARKE in the firm name. In 1995, the firm name was also amended to reflect its new status as a Limited Liability Partnership, by adding the abbreviation "LLP" to the mark.
The Complainant owns the mark CHADBOURNE, U.S. Registration No. 2,582,252, for legal services in International Class 42 in the United States Patent and Trademark Office ("PTO"), claiming a date of first use of October 1902. The Complainant has duly renewed its claim to the mark every 10 years as required by statute.
The Complainant also has U.S. trademark applications pending for the marks Chadbourneparke and C&P with application serial numbers 78,190,362 and 76,421,272 respectively both for legal services in International Class 42 in the PTO. The application for the CHADBOURNEPARKE mark was filed on December 2, 2002, but has not yet been registered by the PTO. The application for the C&P mark was filed on June 14, 2002, and it has not yet been registered.
The mark C&P is not at issue in the present case as the Complainant has not asserted that either it or the Respondent has registered a related domain name.
The Respondent registered the domain name on November 19, 2001.
Although, the Respondent did not respond to the Complaint, I take note of the fact that it is not unfamiliar with dispute resolution under the Policy. The Respondent has been the respondent in numerous prior arbitrations of contested domain names, many of which concern law firms as with the Complainant here. [Morrison & Foerster LLP, NAF Case No. FA0003000094301 (April 17, 2000); and Dykema Gossett PLLC, NAF Case No. FA0104000097031 (May 29, 2001); Hunton & Williams v. American Distribution Systems, Inc. et al., WIPO Case No. D2000-0501 (August 1, 2000); Gardere Wynne Sewell LLP v.DefaultD, WIPO Case No. D2001-1093 (November 16, 2001); Adams & Reese LLP, NAF Case No. FA0112000102860 (February 6, 2002); Preston Gates & Ellis, LLP v. DefaultD and Brian Wick, WIPO Case No. D2001-1381 (February 13, 2002); Baker & Daniels, NAF Case No. FA0202000104579 (March 27, 2002); Lord, Bissel & Brook, NAF Case No. FA0203000108064 (May 23, 2002); Akerman, Senterfitt & Eidson, P.A. v. American Distribution Systems, Inc. d/b/a DefaultD, WIPO Case No. D2002-0596 (September 5, 2002); Foley & Lardener, NAF Case No. FA0207000114758 (September 10, 2002); and Jenner & Block LLC, NAF Case No. FA0207000117310 (September 27, 2002).]
In all but one of these prior cases � Morrison Foerester, NAF Case No. FA0003000094301, the Respondent submitted a timely response to the Complaint. In each of these prior cases, panels ruled in favor of the complainants and ordered the transfer of the contested domain name from the Respondent to each of the respective complainants.
5. Parties� Contentions
A. Complainant
The Complainant contends that it has continuously and conspicuously used and established common law rights in the service mark CHADBOURNE & PARKE "or variations thereof in connection with providing legal services to the public since 1937". [Emphasis added.] It contends that the mark has become distinctive and famous and has engendered significant goodwill worldwide as it is well known to government officials, regulatory agencies, investment bankers, financial institutions, law firms, accounting firms and consultants throughout the world.
The Complainant further contends that it has owned and continuously used the service marks CHADBOURNE and CHADBOURNE & PARKE for 99 and 64 years respectively, before the Respondent registered the domain name in question in 2001.
The Complainant contends that the domain name is identical or confusingly similar to the CHADBOURNE & PARKE, CHADBOURNE and CHADBOURNEPARKE service marks.
The Complainant cites the decision in Hunton & Williams v. American Distribution Systems, Inc. et al., WIPO Case No. D2000-0501, to the effect that "the �&� sign commonly used in the names of law firms in the United States is not used in the creation of domain names. The functional equivalent of the �&� sign is the word �and� or the deletion of the sign." Following that reasoning, the domain name is the functional equivalent of the service mark CHADBOURNE & PARKE.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the contested domain name because the Respondent: (1) has made no use of, or demonstrated preparations to use the contested domain name or a name not corresponding to the contested domain name in connection with a bona fide offering of goods and services; (2) has never been commonly known by the domain name and it has acquired trademark or service mark rights; and (3) is not making a legitimate noncommercial fair use of the domain name without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
With respect to contention (1), the Complainant cites the many panel findings ordering the transfer of domain names owned by the Respondent in prior decisions pursuant to the Policy in cases involving law firm names.
With respect to (2), the Complainant asserts that the Respondent has never been commonly known by the contested domain name, and in any case, the Complainant not the Respondent has the service rights to the name.
With respect to (3), the Complainant cites prior panel decisions in which the Respondent has been found not to be making legitimate noncommercial or fair use of other contested domain names, and in particular the various rationales advanced by the Respondent in its replies to the complaints in those cases.
Finally, the Complainant contends that the contested domain name was registered in bad faith. Here the Complainant relies on Paragraph 4(b) of the Policy and argues that the Respondent is denying the Complainant as owner of valid service marks in CHADBOURNE, CHADBOURNE & PARKE and CHADBOURNEPARKE to reflect those marks in corresponding domain names. Paragraph 4(b) of the Policy instructs panelists to take particular note where as here the Respondent has engaged in a pattern of such conduct. The Complainant again cites prior panel decisions involving the Respondent that resulted in orders for the transfer of a contested domain name to support the Complainant�s position. In addition, the Complainant notes that the Respondent took no steps to host the domain name with an Internet Service Provider.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
I find that the Complainant has presented sufficient evidence that the name CHADBOURNE & PARKE has acquired secondary meaning within the legal and business community to constitute a valid common law service mark. As in Hunton & Williams v. American Distribution Systems, Inc. et al., WIPO Case No. D2000-0501, I find that the "&" sign commonly used in the names of law firms in the United States is not used in the creation of domain names. The functional equivalent of the "&" sign is the word "and" or the deletion of the sign. Following that reasoning, the domain name is the functional equivalent of the service mark CHADBOURNE & PARKE.
I am less convinced that the Complainants registration of the mark CHADBOURNE alone would be sufficient for it to claim CHADBOURNEPARKE or CHADBOURNE & PARKE. I note the pending application by the Complainant for the mark CHADBOURNEPARKE, although the Complainant has not provided any evidence of an application for the mark CHADBOURNE & PARKE or CHADBOURNE & PARKE LLP. However, I note further that the Complainant�s application for the mark CHADBOURNEPARKE was made more than one year after the Respondent registered the contested domain name, and more than six months after the Complainant had applied for the C&P mark.
Nonetheless, the Complainant has demonstrated sufficient common law rights to the mark CHADBOURNE & PARKE although perhaps dating in time from a point closer to 1986 rather than 1937, and for the reasons stated above I find the contested domain name to be identical or confusingly similar to the Complainant�s common law service mark in contravention of Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Because of the Respondent�s default, I have no evidence before me that would suggest that the Respondent has any rights or legitimate interests in respect of the contested domain name either: arising from use of or demonstrable preparations for use of a corresponding name in a bona fide offering of goods or services; or as a result of the Respondent being commonly known by the domain name.
However, the numerous prior panel decisions against the Respondent and ordering the transfer of its domain names in similar cases involving law firm names strongly suggest the absence of any such prior rights or legitimate interests in the contested domain name.
Unlike in prior cases of contested domain names, the Respondent has not sought to suggest a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the service mark at issue. Despite the Respondent�s default in this case, I have reviewed the letter from the Respondent to the Complainant dated June 21, 2002, and found at Tab 8 of the Complaint (the "Respondent�s Letter"). As noted by the Panel in Preston Gates & Ellis, LLP v. DefaultD and Brian Wick, WIPO Case No. D2001-1381, "[i]t is essential to dispute resolution proceedings that fundamental due process requirements be met." Accordingly, I consider here the defenses raised by the Respondent in Respondent�s Letter.
The Respondent apparently would argue that it is engaged in a defense of free speech rights under the U.S. Constitution by acquiring domain names of public companies. The Respondent�s Letter does not, however, assert the defense of parody that was rejected by other panels, e.g. Hunton & Williams v. American Distribution Systems, Inc. et al., WIPO Case No. D2000-0501; Foley & Lardener, NAF Case No. FA0207000114758; and Baker & Daniels, NAF Case No. FA0202000104579.
However, other panels not involving the Respondent have explored the scope of free speech in the non-commercial or fair use of a domain name, e.g., Bridgestone Firestone, Inc., Bridgestone/Firestone Research, Inc., and Bridgestone Corporation v. Jack Myers, WIPO Case No. D2000-0190 (July 6, 2000), and Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859 (December 4, 2000).
One recent panel decision involving the Respondent has rejected the applicability of the test�s laid out in those cases to the Respondent�s activities with corporate names and law firm names. See, Qwest Communications International, Inc. v. DefaultD a/k/a Brian Wick, WIPO Case No. D2003-0002 (March 2, 2003).
Because of the Respondent�s default, and the meandering nature of the Respondent�s Letter, the Panel is not in a position to find that the Respondent is making a legitimate noncommercial or fair use of the contested domain name. Furthermore, on the basis of the Respondent�s Letter alone, as in Qwest Communications International, Inc. v. DefaultD a/k/a Brian Wick, WIPO Case No. D2003-0002, I would be inclined to find that "[t]he Respondent in this case does not qualify for the outcome in Ahmanson Land, even if the reasoning of that decision were persuasive, because his use of the disputed domain name is not credibly focused on criticism of Complainant".
Accordingly, for the reasons stated above, I find that the Respondent has not established any rights or legitimate interests in the contested domain name within the meaning of Paragraph 3(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Finally, I turn to the issue of whether the contested domain name was registered in "bad faith". Paragraph 4(b)(ii) of the Policy provides that a domain name is registered in bad faith if it is registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct.
If ever the Policy were to provide for per se findings of "bad faith" registrations of domain names, the Respondent�s actions here would certainly be a text book exemplar of that practice. There simply can be no dispute that the Respondent�s pattern of conduct has been proven in this regard by regarding only the litany of prior panel decisions and transfer awards against it just relating to law firm names.
Furthermore, the Respondent is in default and has offered no response to the charge of bad faith registration of the contested domain name. However, in the Respondent�s Letter, there is an admission that the Respondent, in fact, was seeking to prevent the Complainant from reflecting its mark in its domain name. The Respondent offers to permit the Complainant to use the domain name only through "a hyperlink, phone number or some other reference from my website using to a Chadbourne & Parke sponsored website or Chadbourne & Parke physical address".
For the reasons above, I find that the Respondent registered the contested domain name in bad faith in contravention of Paragraph 3(a)(iii) and 4(b) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, , be transferred to the Complainant.
Mark A. A. Warner
Sole Panelist
Dated: September 8, 2003
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