Parker Waichman Alonso LLP v. zany technology.com
Claim Number: FA0904001255465
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.
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.
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 email@example.com 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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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.
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.
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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