Parker Waichman Alonso LLP v.
zany technology.com
Claim Number: FA0904001255465
PARTIES
Complainant is Parker Waichman Alonso LLP (“Complainant”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yourlawyer.tv>, registered with GoDaddy.com,
Inc.
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.
David E. Sorkin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 1, 2009; the
National Arbitration Forum received a hard copy of the Complaint on April 7, 2009.
On April 2, 2009, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <yourlawyer.tv> domain name is
registered with GoDaddy.com, Inc. and
that the Respondent is the current registrant of the name. GoDaddy.com,
Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 April 14, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 4, 2009 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@yourlawyer.tv by e-mail.
Respondent's Response was received in hard copy on May 6, 2009. However, in that the hard copy was received subsequent to the Response deadline, the Response is considered deficient under ICANN Rule 5. The Panel has nonetheless considered the untimely Response.
An Additional Submission was received from Complainant on May 8, 2009, and an Additional Submission was received from Respondent on May 13, 2009. Both of these submissions were made in compliance with the Forum’s Supplemental Rule 7.
On May 8, 2009, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed David E. Sorkin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner of two trademarks registered with the U.S.
Patent & Trademark Office: yourlawyer.com,
registration number 3,210,791, registered February 20, 2007, on the Principal
Register; and YourLawyer, registration number 3,510,267, registered September
30, 2008, on the Supplemental Register.
Complainant uses these marks in connection with legal services. Complainant contends that the disputed domain
name <yourlawyer.tv> is
confusingly similar to both of these marks.
Complainant further contends that Respondent lacks rights or legitimate
interests in the disputed domain name because of Complainant’s yourlawyer.com
mark. Complainant alleges that
Respondent is using the domain name in bad faith by using it to intentionally
attract, for commercial gain, Internet users to its website by creating a
likelihood of confusion with Complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of Respondent’s website or of a product or service
on the site.
B. Respondent
Respondent states that it registered the disputed domain name acting as
an agent for The Orlando Law Firm, P.C.,
C. Additional Submissions
In its Additional Submission, Complainant alleges that on April 7,
2009, The Orlando Firm agreed to transfer the disputed domain name to
Complainant, but that certain issues involved in the transfer have not yet been
resolved. Complainant further alleges
that there may be a personal or familial relationship between a member of The
Orlando Firm and Respondent, and therefore Respondent should have known of the
firm’s intention to transfer the domain name to Complainant. Finally, Complainant takes issue with the
accusation of reverse domain name hijacking, describing the allegation as
“clearly outrageous” and “a personal attack upon our firm’s reputation
throughout the internet community and the public at large to which penalties
and/or sanctions should be considered for imposition directly against
Respondent herein.”
Respondent’s Additional Submission reiterates Respondent’s request that
the Panel find reverse domain name hijacking, on the grounds that Complainant
should have known that it could not prove the second and third elements set
forth in the Policy, in part because the domain name registration predates the
existence of Complainant’s trademark. Respondent
further alleges that the parties unsuccessfully attempted to negotiate a
transfer of the disputed domain name, and that these negotiations demonstrate
Complainant’s acknowledgement of Respondent’s legitimate rights.
The Panel has reviewed the parties’ Additional Submissions, and has
determined that they should be considered only to the extent that they address
matters arising after the filing of the parties’ previous submissions.
FINDINGS
The Panel finds that the disputed domain name
is identical or confusingly similar to a mark in which Complainant has rights,
but that Complainant has failed to prove that Respondent lacks rights or
legitimate interests in respect of the disputed domain name, and has further
failed to prove that the disputed domain name was registered and is being used
in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “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 Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is
being used in bad faith.
Complainant’s YourLawyer mark is registered
only on the Supplemental Register of the USPTO.
A registration on the Supplemental Register carries no presumption as to
the validity of the mark; it serves as evidence only that the registration
issued. Foundation Source Philanthropic Services, Inc. v. Arlene B
Gibson/Foundations That Make a Difference/Domain Discreet, D2007-0875 (WIPO
Dec. 4, 2007). Complainant therefore
cannot rely upon its YourLawyer mark for purposes of paragraph 4(a)(i).
Complainant’s yourlawyer.com mark, on the
other hand, is registered on the Principal Register of the USPTO. The fact that the registration post-dates
Respondent’s registration of the disputed domain name is immaterial for
purposes of paragraph 4(a)(i), as long as the mark was registered by the time
the Complaint in this proceeding was filed.
Babytel Inc. v. Babytel.com c/o
WHois Identity Shield/CKV, Domain Admin, D2008-0588 (WIPO July 11, 2008). The question, therefore, is whether the
disputed domain name, <yourlawyer.tv>,
is confusingly similar to Complainant’s registered mark, yourlawyer.com.
Although the phrase “your lawyer” is
certainly descriptive of legal services, it does represent the more distinctive
component of Complainant’s mark, and it is incorporated in its entirety in the
disputed domain name. The addition of a
top-level domain such as “.tv,” whether it represents a country code or a
generic term such as “television,” does not sufficiently distinguish the domain
name from the corresponding trademark.
The Panel therefore finds that the disputed domain name is confusingly
similar to a mark in which Complainant has rights.
Under paragraph 4(c)(i) of the Policy, a
Respondent may demonstrate rights or legitimate interests in a domain name
through “use of, or demonstrable preparations to use, the domain name or a name
corresponding to the domain name in connection with a bona fide offering of
goods or services.” Respondent has
offered evidence that it uses the disputed domain name to promote legal
services. The domain name clearly is
descriptive of such services, and it appears to the Panel that the domain name
was selected for this use because of its descriptive nature rather than because
of any similarity to Complainant’s mark.
Such use is indicative of rights or legitimate interests under paragraph
4(c)(i). The Panel finds that
Complainant has failed to prove that Respondent lacks rights or legitimate
interests in respect of the disputed domain name.
Under paragraph 4(b) of the Policy, the Panel
shall consider the following circumstances as evidence of the registration and
use of a domain name in bad faith:
(1) circumstances
indicating that the Respondent has registered or acquired the domain name
primarily for the purpose of selling, renting, or otherwise transferring the
domain name registration to the owner of a corresponding trademark or a
competitor thereof, for valuable consideration in excess of out-of-pocket
costs;
(2) the
Respondent has registered the domain name in order to prevent the trademark owner
from reflecting the mark in a corresponding domain name, if the Respondent has
engaged in a pattern of such conduct;
(3) the
Respondent has registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
(4) by
using the domain name, the Respondent has intentionally attempted to attract,
for commercial gain, Internet users to its web site or other on-line location,
by creating a likelihood of confusion with the Complainant’s mark as to source,
sponsorship, affiliation, or endorsement.
Respondent claims that it registered the
disputed domain name because it incorporates the descriptive phrase “your
lawyer,” rather than because of any similarity to Complainant’s trademark. The Panel considers that claim to be
credible, and finds none of the bad faith circumstances set forth in paragraph
4(b) to be present. The Panel therefore
finds that Complainant has failed to prove that the disputed domain name was
registered and is being used in bad faith.
Reverse
Domain Name Hijacking
Although the Panel does not consider
Respondent’s accusation of reverse domain hijacking to be “outrageous” or a
“personal attack,” the Panel declines to make such a finding under the
circumstances of this case.
DECISION
Having considered all three elements required
under the ICANN Policy, the Panel concludes that relief shall be DENIED.
David E. Sorkin, Panelist
Dated: May 20, 2009
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