West Publishing Corporation
v.
Claim Number: FA0709001076565
PARTIES
Complainant is West Publishing Corporation (“Complainant”), represented by Jodi
A. DeSchane, of Faegre & Benson LLP, 2200
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <westlaws.com>, registered with Compana, LLC.
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.
Jeffrey M. Samuels, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 13, 2007; the
National Arbitration Forum received a hard copy of the Complaint on September 17, 2007.
On September 24, 2007, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <westlaws.com> domain name is
registered with Compana, LLC and that the
Respondent is the current registrant of the name. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC 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 September 24, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of October 15, 2007 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@westlaws.com by e-mail.
A timely Response was received and determined to be complete on October 15, 2007.
On October 23, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Jeffrey M. Samuels as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Founded in 1872 by John B. West, Complainant West Publishing Corp. is a
leading provider of authoritative legal information. Over the last 135 years, Complainant has
extensively used the trademark WEST and other marks incorporating the word WEST
in connection with legal products and services.
Complainant owns a number of
Upon information and belief, Complainant contends that the disputed
domain name, <westlaws.com>,
was registered and is being used by Respondent to redirect Internet users to a
search portal with “Sponsored Listings” featuring links to third party web
sites and search categories related to West’s services. Upon information and belief, Respondent
receives click-through fees every time an Internet user clicks to a link to a
third-party website.
Upon discovering of Respondent’s use of the disputed domain name,
Complainant sent Respondent a “cease and desist” letter demanding immediate
transfer of the domain name. See Complaint, Attachment G. This letter followed close on the heels of
another UDRP complaint filed by Complainant in connection with Respondent’s
registration of the domain names <westllaw.com> and <westlegalcenter.com>.[1] In
response to the “cease and desist” letter in this case, Respondent indicated
that its legal representative would respond within 15-21 days and instructed
that if Complainant did not hear from Respondent’s counsel after 21 days,
Complainant should re-contact Respondent.
See Complaint, Attachment I.
Complainant maintains that the disputed domain name <westlaws.com> appropriates
Complainant’s WESTLAW and WESTLAW.COM marks.
The addition of the letter “s” at the end of the <westlaws.com> domain name does not create a distinct mark or
defeat a claim of confusing similarity, Complainant argues.
Complainant further contends that Respondent has no trademark rights in
the domain name <westlaws.com>. Upon information and belief, Complainant
indicates that Respondent is not commonly known as <westlaws.com>.
Complainant also asserts that Respondent is not using the domain name
in connection with a bona fide offering of goods and services. Misdirecting consumers through the use of
Complainant’s mark does not qualify as a bona fide offering of goods and
services, Complainant declares.
Respondent is not making a legitimate noncommercial or fair use of the
domain name <westlaws.com>,
Complainant maintains. Complainant
indicates, upon information and belief, that Respondent receives commercial
gain by featuring “sponsored” links on its search engine and that even if
Respondent receives no commercial gain from its <westlaws.com> site, such use would still not qualify as
noncommercial or fair use.
With respect to evidence of bad faith registration and use, Complainant
argues that: (1) its WEST family of marks is sufficiently distinctive or famous
to give constructive notice to Respondent that the registration of <westlaws.com> would violate
Complainant’s rights; (2) Respondent’s use of the <westlaws.com> domain name to direct users to a search portal
with ads of third parties is evidence of bad faith; (3) Respondent’s use of the
disputed domain name is likely to cause confusion as to the source or
sponsorship of the <westlaws.com>
site; and (4) Respondent has a pattern of bad faith registration of domain
names.
B. Respondent
In its Response, Respondent “agrees to the relief requested by the
Complainant and will, upon order of the Panel, do so.” Respondent adds that “[t]his is not an
admission to the three elements of 4(a) of the policy but rather an offer of ‘unilateral
consent to transfer.’”
FINDINGS
Under the particular circumstances of this case, where Respondent has
consented to transfer of the disputed domain name, there is no need for the
Panel to undergo the traditional UDRP analysis.
Instead, the Panel may order the immediate transfer of the domain
name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev.,
FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name
registration where respondent stipulated to the transfer); Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat.
Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the
domain name to be transferred to the Complainant …. Since the requests of the
parties in this case are identical, the Panel has no scope to do anything other
than to recognize the common request, and it has no mandate to make findings of
fact or of compliance (or not) with the Policy.”); Disney Enters., Inc. v. Morales, FA475191 (Nat. Arb. Forum June 24,
2005) (“[U]nder such circumstances, where Respondent has agreed to comply with
Complainant’s request, the Panel felt it to be expedient and judicial to forego
the traditional UDRP analysis and order the transfer of the domain names.”).
DISCUSSION
Consistent with the above-noted precedent, the Panel concludes that,
under the circumstances of this case, it need not engage in the traditional
UDRP analysis and may proceed directly to order the transfer of the domain
name.
DECISION
Accordingly, it is Ordered that the <westlaws.com> domain name be TRANSFERRED
from Respondent to Complainant.
Jeffrey M. Samuels, Panelist
Dated: November 5, 2007
[1] The
Panel in that case ordered the transfer of the domain names. See
West Publishing Corp. v.
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