Legal.com Inc. v. iSMER
Claim Number: FA0205000114281
Complainant is Legal.com Inc., Sunnyvale, CA, USA (“Complainant”). Respondent is iSMER, London, UK (“Respondent”).
The domain name at issue is <legal.biz>, registered with Phillipine Registry.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Estella S. Gold, Esquire as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on May 15, 2002; the Forum received a hard copy of the Complaint on May 20, 2002.
On May 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 11, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A late Response was received and determined to be complete on June 14, 2002.
Complainant’s additional submissions were received timely on June 17, 2002.
Respondent’s additional response was received June 20, 2002, and on July 11, 2002, Respondent submitted an additional e-mailed response, which was received, as well.
On July 9, 2002, pursuant to STOP Rule 6(b), the Forum appointed Estella S. Gold, Esquire as the single Panelist.
All of the above submissions have been considered by this single Panelist.
Transfer of the domain name from Respondent to Complainant.
Complainant, Legal.com, Inc. and Respondent, iSMER, each are claiming right in the mark Legal.biz. The Respondent has registered the domain name <Legal.biz> and Complainant seeks to have the domain name transferred to it.
Complainant asserts that it has common law rights in Legal.com as well as a registration on the Supplemental Register with the United States Patent and Trademark Office with a filing date of April 7, 1997, and a Supplemental Register date of October 8, 1999. Based on Complainant’s use and registration, Complainant asserts claim to <Legal.biz>.
Complainant asserts that it has operated continuously on the Internet since July 7, 1993, offering products and services of legal information for consumers, both in land-based and online businesses.
Complainant asserts that Respondent does not have any trademarks or service marks in the Legal.biz mark, or LEGAL, and has not put to use its registration with website content in <Legal.biz>, and therefore, has not demonstrated that it has rights or legitimate interest in the disputed domain name pursuant to STOP policy ¶4(c)(i).
Complainant further alleges that it has put to use the term Legal.biz on its website with intent to create a sister website in <Legal.biz>.
Respondent iSMER, asserts that Complainant has registered Legal.com as a trademark and not the term LEGAL. Further, Respondent alleges that even if Complainant has registered LEGAL, the term is generic such that Respondent has no protectable right in the name LEGAL, and therefore, no protectable right to make claim for <Legal.biz>.
Respondent asserts that Complainant is guilty of reverse domain name hijacking, in a bad faith attempt to deprive a registered domain name holder of the domain name <Legal.biz>.
Respondent alleges that Complainant did not put Legal.biz to use on its website until it was evident that there would be a domain name dispute on the registration of the mark Legal.biz. Furthermore, Respondent alleges that the Complainant has incorrectly represented the timing and use of its website contents.
Respondent further asserts that its use of <Legal.biz> will be legitimate because Respondent will be using that domain name for bonafide offering of services pursuant to STOP policy ¶4(c)(ii). Respondent notes that it has not yet had time to put the website to use before the initiation of this STOP proceeding.
Respondent denies any bad faith in relation to the registration of the disputed domain name. Respondent asserts that Complainant is guilty of reverse domain name hijacking.
C. Additional Submissions
In their additional submissions, the parties challenge the accuracy of the other’s statements, and the legitimacy of the other’s motives. Each contends superior rights in the disputed domain name.
Complainant asserts that it has put to use the name Legal.com and Legal.biz in its land-based business as well as its online business.
There are no allegations that Complainant and Respondent are competitors, nor are there allegations of name confusion.
Respondent contends that this proceeding lacks jurisdiction, has been improperly conducted, and fails to comply with arbitration agreements.
1. Complainant’s trademark/service mark at issue is “Legal.com” which was registered on the Supplemental Register of the United States Patent and Trademark Office in 1999. Complainant claims common law trademark rights to the mark as well. Complainant contends that it has used the mark “Legal.com” continuously since 1993 in connection with providing services and products to the public related to legal information as well as, more recently, Legal.biz.
2. Respondent has registered the domain name <Legal.biz> and is subject to STOP Policies and Procedures, as well as the jurisdiction of this Panel.
3. Respondent has expressed the intention to operate a website on <Legal.biz> providing various services and products related to the preparation of wills and other law-related subjects. However, at present, Respondent has never operated a business or online service under the name <Legal.biz> and contends that this STOP Proceeding has prevented it from doing so.
4. There are other companies that trade with some variant of the name “LEGAL” both online and in traditional media.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
STOP is not intended to replace any national law or other dispute resolution policies such as the UDRP or RDRP; however, no UDRP or RDRP case can be initiated on any given “.biz” domain name until any potential STOP claims have been completed for that name.
Complainant asserts that it has common law rights in the Legal.com mark because it has used the mark in commerce for many years in connection with services and products provided to the public on law-related subjects, both online and in traditional media. In STOP proceedings, the generic top-level domain (“gTLD”) such as “.biz” and “.com” is irrelevant when determining whether a domain name and a mark are identical. Since gTLD’s such as “.com” and “.net” are disregarded in UDRP cases, the Complainant’s right in the name “LEGAL” is determinative of its right to the disputed domain name herein, <Legal.biz>. See Princeton Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc., FA 102811 (Nat. Arb. Forum Feb. 8, 2001) (finding that the “.biz” gTLD in a disputed domain name is not a factor, and hence to be ignored, when determining whether the domain name is identical to a mark in which the Complainant has asserted rights). Therefore, for purposes of this proceeding, the <Legal.biz> domain name is identical to Complainant’s mark, Legal.com, because of the identity of the term “LEGAL.”
Complainant has shown proof of common law trademark rights in that it has registered the domain name, Legal.com, established a corporate name of Legal.com, Inc., and has actively used the site <legal.com> for a period of time (albeit that Respondent disputes the length of time) in providing goods and services to the public. Furthermore, the Complainant has registered with the United States Patent and Trademark Office on the Supplemental Register the name “Legal.com” in 1999.15 U.S.C. §1093 permits registration on the Supplemental Register, but such registration does not receive the advantages provided to registrants on the Principal Register of the United States Patent and Trademark Office, including, most significantly, exclusivity of use. Complainant does not have exclusive rights in the mark because it has failed to establish trademark status on the Principal Register or secondary meaning. See CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) (finding that “concierge is not so associated with just one source that only that source could claim a legitimate use of the mark in connection with a website”); see also PetWarehouse v. Pets.Com, Inc., D2000-0105 (WIPO Apr. 13, 2000) (finding that “pet” and “warehouse” are generic terms and therefore not subject to trademark protection; although it is possible for two generic terms taken together to achieve trademark or service mark status by achieving a sufficient level of secondary meaning in the relevant community, the burden is on the party making a claim to show distinctiveness or secondary meaning). LEGAL is merely a descriptive term. Therefore, Complainant has failed to sufficiently establish that it has protectable rights in the “Legal.biz” mark. See Car Toys, Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20, 2000). See Efutures.com, LLC v. Canon Trading Co., FA 103056 (Nat. Arb. Forum Feb. 27, 2002) (finding that <e-futures.com> and <efutures.com> were both identical to the mark EFUTURES, although ruling Complainant did not have rights in the mark on unrelated grounds).
Under STOP Policy ¶4(c), the Respondent may demonstrate its rights or interest by proving: (I) the Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name; or (ii) before any notice to Respondent of the dispute, its use of or demonstrable preparations to use, the domain name, or a name corresponding to the domain name in connection with the bonafide offering of goods or services; or (iii) the Respondent has been commonly known by the domain name even though it had acquired no trademark or service rights.
The Respondent has not demonstrated use of any trademark or service mark identical to the domain name, nor use of the domain name, nor substantial preparations to use the domain name, nor proof of being commonly known by the domain name. It should be noted that a Respondent’s unsupported allegations alone are insufficient to establish that the Respondent has rights or legitimate interest in respect to the domain name at issue. Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (finding the Respondent’s assertion that she registered the domain name <foxstudios.biz> in order to get a website address for her planned dance studios, without evidentiary support, was insufficient to establish that she had rights or interests in respect to the domain name at issue). See Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (“[T]o establish rights or legitimate interests in a name or a mark, the Respondent must do more than state that he considered using it in the past, along with other names he actually used”) (emphasis in original). Since the Respondent is not known as “Legal.biz,” the Respondent does not have a protectable right in the name <Legal.biz>.
Respondent alleges that Complainant is engaged in reverse domain name hijacking. Complainant has not engaged in reverse domain name hijacking.
As the Respondent has legitimate interests, but no protectable rights, in the domain name <Legal.biz>, Complainant’s Complaint is dismissed, and the Panel determines the subsequent challenges as against Respondent, under the STOP Policy shall be permitted against this domain name.
Estella S. Gold, Esquire, Panelist
Dated: July 18, 2002
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 It should be noted, however, that registration of a mark on the Supplemental Register does not preclude registration by the Registrant on the Principal Register, and shall not constitute an admission that the mark has not acquired distinctiveness, now or at some future date. 15 U.S.C. §1095.