WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Myers, Fletcher & Gordon v. Domains By Proxy, Inc., Bertrand Gachot and Khalifa Saber Case No. D2009-0790 1. The Parties
The Complainant is Myers, Fletcher & Gordon of Kingston, Jamaica, represented internally.
The Respondents are Domains By Proxy, Inc. of Scottsdale, Arizona, United States of America, Bertrand Gachot of Gibraltar, Spain, and Khalifa Saber of London, Twickenham, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2009. On June 16, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On June 16, 2009, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on June 19, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 24, 2009. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondents of the Complaint, and the proceedings commenced on June 29, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 19, 2009. None of the Respondents submitted a response. Accordingly, the Center notified the Respondents' default on July 20, 2009.
The Center appointed Andrew Frederick Christie, Lynda J. Zadra-Symes and Tony Willoughby as panelists in this matter on August 27, 2009. The Panel finds that it was properly constituted. Each member of 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 a law firm that operates in Jamaica and has an associated firm in the United Kingdom of Great Britain and Northern Ireland. It has been using the business and trade name “Myers, Fletcher & Gordon” since 1944. It is the largest law firm in Jamaica and the Caribbean Single Market. A number of reputable law firm directories or surveys list, and give high rankings to, the Complainant for its legal services in the Caribbean region.
The Complainant is the proprietor of the limited liability service company Seramco Limited. Seramco Limited is the proprietor of, and has licensed the Complainant to use in the course of its business, various registered trademarks, including MYERSFLETCHER. The MYERSFLETCHER trademark was registered in Jamaica on December 13, 2006, in classes 16, 25, 36, 41 and 42, for various goods and services, including printed matter, stationery, insurance and financial services, and educational and training services.
The First Respondent, Domains by Proxy, Inc., provides a privacy shield service for domain name registrants. On May 28, 2009, the Complainant requested GoD, Inc. to inform it of the registrant of the disputed domain name. GoD, Inc. replied on May 29, 2009, stating “that domain is registered under Domains by Proxy”.
The Second Respondent is a former client of the Complainant, now in dispute with the Complainant about legal fees allegedly owed to the Complainant. On May 28, 2009, the Second Respondent sent an email to the Complainant, wherein it was stated: “As at this stage you are only trying to inflict [sic] us damages, we will do the same to you and we have agreed with a firm that has registered the domain name and that will tell of the business experience that we have had with you. These people will make sure that as soon as you [sic] name will be searched on any of the search engines people will be able to read how you did a louzy [sic] job, over invoiced us and tried to extort money from us.”
The Third Respondent was identified as the registrant of the disputed domain name by GoD, Inc. on June 16, 2009, in response to the request for registrar verification transmitted by the Center on the same day.
The disputed domain name was registered on May 28, 2009. As of at least June 23, 2009, the disputed domain name was used in the URL for a website headed “Frauds and Overbillings Ex. Myers Fletcher Gordon”. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is an exact replica of its trademark and business name, and that reasonable persons are likely to be confused into believing that the disputed domain name originates from or is legitimately associated with the Complainant's business or undertaking.
The Complainant contends that there is no bona fide offering of goods or services by the Second Respondent under the name “myersfletchergordon” or any similar name. The content of the email from the Second Respondent of May 28, 2009 makes it clear that the Second Respondent obtained registration of the disputed domain name while specifically aware of the Complainant's trademark and with the intention to tarnish the Complainant's trademark. This email indicates that the Second Respondent procured another entity to register the disputed domain name for this purpose. All the circumstances indicate that that other entity is the Third Respondent. The purpose for which the disputed domain name has been used indicates that the Third Respondent has no right or legitimate interest in the disputed domain name.
The Complainant contends that the Respondents' sole purpose for registering the domain name is to divert users looking for the Complainant's website. The Respondents, and in particular the Second Respondent, along with the Third Respondent (as agent of the Second Respondent) have registered the domain name primarily for the purpose of disrupting the business of the Complainant. The content of the website to which the disputed domain name resolves clearly indicates bad faith on the part of the Third Respondent. This website is being used for the purpose of sullying the goodwill and reputation of the Complainant, and may lead to disruption of the Complainant's business. B. Respondent
None of the Respondents replied to the Complainant's contentions. 6. Discussion and Findings
There is a preliminary issue as to whether the amended Complaint, in naming the three Respondents, is properly filed. This Panel concludes that it is. The registrar of the disputed domain name identified to the Complainant that the domain name was “registered under” the First Respondent. The Second Respondent is the person who identified himself to the Complainant as having “agreed with a firm that has registered the domain name”. The Third Respondent is the entity that the registrar identified to the Center as being the registrant of the domain name. The evidence on the record therefore establishes the each of the three Respondents is, in some way or another, associated with the domain name in a manner that does or may give rise to a legal or equitable entitlement to the domain name. Thus, it is not inappropriate for the Complaint to be filed against each of the Respondents. A. Identical or Confusingly Similar
It is clear from numerous past decisions under the Policy that the Policy is applicable to an unregistered trademark or service mark in which common law rights subsist. Common law rights will subsist in an unregistered mark, and the unregistered mark will be a trademark for the purposes of the Policy, where the mark has become a distinctive identifier that, in the minds of consumers, associates the complainant with goods or services provided by the complainant in trade or commerce. The Complainant has used the name “Myers, Fletcher & Gordon” in connection with the provision of legal services for 65 years. The evidence of use provided by the Complainant is sufficient to establish that the name “Myers, Fletcher & Gordon” is associated with the Complainant by consumers of legal services in the Caribbean region, and hence that the name “Myers, Fletcher & Gordon” is an unregistered mark in which common law rights subsist. This Panel is, therefore, satisfied that the Complainant has trademark rights in “Myers, Fletcher & Gordon” to which the Policy applies.
But for the absence of the comma and the ampersand and the addition of the top level “.com”, the disputed domain name is identical to the Complainant's unregistered trademark. The difference between the disputed domain name and the trademark is insubstantial. This Panel concludes that for purposes of the Policy, the disputed domain name is identical to the Complainant's trademark. B. Rights or Legitimate Interests
There is an ongoing, and healthy, debate across WIPO UDRP Panel decisions on whether a domain name registrant has a right or legitimate interest in a domain name containing the complainant's trademark where the domain name is used in connection with a website that is critical of the complainant (the “cybergripe” site issue). This Panel is of the view that it is correct to draw a distinction between the situation where the domain name includes the complainant's trademark together with a pejorative term (such as “sucks”) and the situation where the domain name consists solely of the complainant's trademark. Whereas in the former situation it may be possible for the respondent to have a right or legitimate interest in the domain name, in the latter situation it is not. As was stated in Monty and Pat Roberts, Inc. v. Bill Keith,WIPO Case No. D2000-0299, “… the right to express one's views is not the same as the right to use another's name to identify one's self as the source of those views”. This case is an instance of the second situation – the disputed domain name is identical to the Complainant's trademark. Thus, this Panel is satisfied that none of the Respondents has a right or legitimate interest in the domain name. C. Registered and Used in Bad Faith
The circumstances of the case are strongly suggestive that the Third Respondent registered the disputed domain at the request of the Second Respondent, and with knowledge that it would be used to resolve to a website critical of the Complainant. It is clear that the Second Respondent was aware of the Complainant's trademark. These circumstances, when considered together with the fact that none of the Respondents has a right or legitimate interest in the disputed domain name, are sufficient to satisfy this Panel that the disputed domain name was registered and is being used in bad faith. 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.
Andrew Frederick Christie
Presiding Panelist
Lynda J. Zadra-Symes
Panelist
Tony Willoughby
Panelist
Dated: September 10, 2009
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