LegalZoom.com, Inc. v. Bin G Glu c/o Affordable Computer Solutions, Inc. a/k/a Domain Contact is Private
Claim Number: FA0904001258178
Complainant is LegalZoom.com, Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <egalzoom.com>, <lagalzoom.com>, <lealzoom.com>, <lefalzoom.com>, <legaalzoom.com>, <legakzoom.com>, <legalszoom.com>, <legalzoon.com>, <legelzoom.com>, <leggalzoom.com>, and <lgalzoom.com>, registered with Communigal Communications Ltd.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 17, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 20, 2009.
On April 23, 2009, Communigal Communications Ltd confirmed by e-mail to the National Arbitration Forum that the <egalzoom.com>, <lagalzoom.com>, <lealzoom.com>, <lefalzoom.com>, <legaalzoom.com>, <legakzoom.com>, <legalszoom.com>, <legalzoon.com>, <legelzoom.com>, <leggalzoom.com>, and <lgalzoom.com> domain names are registered with Communigal Communications Ltd and that Respondent is the current registrant of the names. Communigal Communications Ltd has verified that Respondent is bound by the Communigal Communications Ltd 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 May 1, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 21, 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@egalzoom.com, postmaster@lagalzoom.com, postmaster@lealzoom.com, postmaster@lefalzoom.com, postmaster@legaalzoom.com, postmaster@legakzoom.com, postmaster@legalszoom.com, postmaster@legalzoon.com, postmaster@legelzoom.com, postmaster@leggalzoom.com, and postmaster@lgalzoom.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 27, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <egalzoom.com>, <lagalzoom.com>, <lealzoom.com>, <lefalzoom.com>, <legaalzoom.com>, <legakzoom.com>, <legalszoom.com>, <legalzoon.com>, <legelzoom.com>, <leggalzoom.com>, and <lgalzoom.com> domain names are confusingly similar to Complainant’s LEGALZOOM mark.
2. Respondent does not have any rights or legitimate interests in the <egalzoom.com>, <lagalzoom.com>, <lealzoom.com>, <lefalzoom.com>, <legaalzoom.com>, <legakzoom.com>, <legalszoom.com>, <legalzoon.com>, <legelzoom.com>, <leggalzoom.com>, and <lgalzoom.com> domain names.
3. Respondent registered and used the <egalzoom.com>, <lagalzoom.com>, <lealzoom.com>, <lefalzoom.com>, <legaalzoom.com>, <legakzoom.com>, <legalszoom.com>, <legalzoon.com>, <legelzoom.com>, <leggalzoom.com>, and <lgalzoom.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LegalZoom.com, Inc., is a leading provider of online legal document preparation services and information. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the LEGALZOOM mark (Reg. No. 2,540,549 issued February 19, 2002).
Respondent registered the <lagalzoom.com>, <lealzoom.com>,
<legalzoon.com>, <legelzoom.com>, <egalzoom.com>,
and <lgalzoom.com> domain names on December 10, 2003; the <legalszoom.com>,
<legakzoom.com>, and <lefalzoom.com>domain names on
June 1, 2004; and the <leggalzoom.com> and <legaalzoom.com>
domain names on April 25, 2007.
Respondent
has a history of registering domain names infringing upon the trademark rights
of others, and has been ordered by previous UDRP panels to transfer the
disputed domain names to the respective complainants in these cases. See
Hewlett-Packard Co. & Hewlett-Packard Dev. Co., L.P. v. Bin g Glu, FA 714965
(Nat. Arb. Forum June 30, 2006); see also
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Preliminary Issue:
Multiple Respondents
The Panel must first consider whether these proceedings have been properly instituted. UDRP ¶ 3(c) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that Respondent is operating under various asserted alleged aliases. Additionally, the National Arbitration Forum’s Supplemental Rule 4(f)(ii) requires a Panel to dismiss the Complaint in relation to the domain names it deems to be insufficiently linked to Respondent.
The WHOIS information for the disputed domain names identify Respondents as “Bin G Glu c/o Affordable Computer Solutions, Inc.” and “Domain Contact is Private.” However, each of the disputed domain names were registered on either the same date, or nearly the same date, and both Respondents use the same identification number with Information.com to collect its pay-per-click fees. The Panel finds that the listed aliases are the same person or entity, or entities controlled by the same person or entity, so that the filing of this Complaint is justified and proper pursuant to Supplemental Rule 4(f)(ii). See Yahoo!, Inc. v. Soksripanich & Others., D2000-1461 (WIPO Jan. 29, 2001) (finding multiple aliases to be the same respondent when the administrative contact information of the various subject domain names was the same or quite similar); see also Yahoo! Inc. & GeoCities v. Data Art Corp., D2000-0587 (WIPO Aug. 10, 2000) (decision rendered against multiple aliases where "the addresses used and the Contacts designated [were] inter-linking and identical.").
The Panel finds that Complainant has established rights in
the LEGALZOOM mark for purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007)
(finding that a trademark registration adequately demonstrates a complainant’s
rights in a mark under Policy ¶ 4(a)(i)); see also
Complainant argues that
Respondent’s disputed domain names are confusingly similar to Complainant’s
LEGALZOOM mark pursuant to Policy ¶ 4(a)(i).
Each of Respondent’s disputed domain names contains a misspelled version
of Complainant’s LEGALZOOM mark by one letter and adds the generic top-level
domain (“gTLD”) “.com.” The Panel finds
that a disputed domain name that contains a misspelled version of a
complainant’s registered mark creates a confusing similarity between the
disputed domain name and the complainant’s mark. See State Farm Mut. Auto. Ins. Co. v. Try Harder
&
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In accord with Policy ¶ 4(a)(ii), Complainant initially bears the burden of demonstrating that Respondent lacks rights or legitimate interests with respect to the disputed domain names. However, once Complainant sufficiently demonstrates a prima facie case, the burden shifts to Respondent to establish that it has rights or legitimate interests in connection with the disputed domain names under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel finds that Complainant has demonstrated a prima facie case and will evaluate the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain names under Policy ¶ 4(c).
Complainant contends that Respondent is neither commonly
known by nor licensed to register the disputed domain names.
Respondent’s WHOIS information identifies Respondent as “Bin G
Glu c/o Affordable Computer Solutions, Inc.” and “Domain Contact is Private.” The Panel finds that Respondent is not
commonly known by the disputed domain names.
Therefore, pursuant to Policy ¶ 4(c)(ii), Respondent lacks rights and
legitimate interests in the disputed domain names. See
M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record); see also Coppertown
Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
Respondent is using the disputed domain names to display links
advertising third-party websites, some of which are in competition with
Complainant. The Panel infers that
Respondent is using the disputed domain names to earn click-through fees, and
thus finds that Respondent has not made a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin
Shun Shing, FA 205699 (Nat. Arb. Forum
Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a
website featuring pop-up advertisements and links to various third-party
websites is neither a bona fide offering of goods or services under
Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶
4(c)(iii) because the registrant presumably receives compensation for each
misdirected Internet user); see
also Coryn
Group, Inc. v. Media Insight, FA
198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not
using the domain names for a bona fide offering of goods or services nor
a legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has a long history of registering domain names
infringing upon the trademark rights of others and has been ordered by previous
UDRP panels to transfer the disputed domain names to the respective
complainants in those cases. See Hewlett-Packard Co. & Hewlett-Packard Dev. Co., L.P.
v. Bin g Glu, FA 714965 (Nat. Arb. Forum June 30, 2006); see also
The Panel finds that Respondent’s use of the disputed domain names to disrupt the business of Complainant by offering links to competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Lastly, Respondent is using the disputed domain names to intentionally divert
Internet users to the associated website, which displays third-party links to
competing websites. In cases such as
this, the Panel assumes that Respondent is collecting click-through fees and
attempting to profit by creating a likelihood of confusion between
Complainant’s mark and the disputed domain names. The Panel finds that Respondent’s use of the
disputed domain names is further evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v.
Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the
respondent engaged in bad faith registration and use by using a domain name that
was confusingly similar to the complainant’s mark to offer links to third-party
websites that offered services similar to those offered by the complainant); see also
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <egalzoom.com>, <lagalzoom.com>, <lealzoom.com>, <lefalzoom.com>, <legaalzoom.com>, <legakzoom.com>, <legalszoom.com>, <legalzoon.com>, <legelzoom.com>, <leggalzoom.com>, and <lgalzoom.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 9, 2009
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