Legal.com Inc. v. iSMER
Claim Number: FA0205000114281
PARTIES
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.
A.
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>.
B.
Respondent
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).[1]
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.
DECISION
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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[1]
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.