LegalZoom.com, Inc. v.
Claim Number: FA1003001312819
Complainant is LegalZoom.com, Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <legaldoom.com>, <legalzomm.com>, and <ligalzoom.com>, registered with Compana, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 10, 2010.
On March 12, 2010, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <legaldoom.com>, <legalzomm.com>, and <ligalzoom.com> domain names are registered with Compana, LLC and that Respondent is the current registrant of the names. Compana, LLC verified that Respondent is bound by the Compana, LLC registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2010, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@legaldoom.com, postmaster@legalzomm.com, and postmaster@ligalzoom.com. Also on March 10, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 13, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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. The domain names that Respondent registered, <legaldoom.com>, <legalzomm.com>, and <ligalzoom.com>, are confusingly similar to Complainant’s LEGALZOOM mark.
2. Respondent has no rights to or legitimate interests in the <legaldoom.com>, <legalzomm.com>, and <ligalzoom.com> domain names.
3. Respondent registered and used the <legaldoom.com>, <legalzomm.com>, and <ligalzoom.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, LegalZoom.com, Inc., is an online provider of legal news and low cost self-help legal forms for the general public. Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its LEGALZOOM mark (e.g., Reg. No. 2,540,549 issued on February 19, 2002).
Respondent, Texas International Property Associates, registered the <legaldoom.com>, <legalzomm.com>, and <ligalzoom.com> domain names between May 7, 2005, and November 15, 2005. Respondent’s disputed domain names do not resolve to active websites.
Complainant
offers evidence that Respondent has a history of registering domain names that
infringe upon the trademark rights of others and has been ordered by previous
UDRP panels to transfer the disputed domain names to the respective
complainants. See Travelocity.com LP v.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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.
The Panel finds that Complainant established rights in its LEGALZOOM mark pursuant to Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 2,540,549 issued on February 19, 2002). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <legaldoom.com>, <legalzomm.com>, and <ligalzoom.com> domain names all contain a misspelled version of Complainant’s LEGALZOOM mark. Complainant contends that using common misspellings of Complainant’s mark does not create a distinct domain name from Complainant’s mark. Complainant also argues that the addition of the generic top-level domain (“gTLD”) “.com” should not be considered in determining whether the disputed domain names are confusingly similar. The Panel finds that Respondent’s <legaldoom.com>, <legalzomm.com>, and <ligalzoom.com> domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). Domain names containing misspellings of the words of a mark are not sufficient to distinguish the disputed domain names from the mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also The Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that the disputed domain names are confusingly similar to a mark in which Complainant has exclusive rights. The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights or legitimate interests in the <legaldoom.com>, <legalzomm.com>, and <ligalzoom.com> domain names. Complainant is required to make a prima facie case in support of these allegations. Once Complainant makes a prima facie case to supports its allegations, the burden of proof shifts to Respondent to show that it does have such rights or legitimate interests in the disputed domain names. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that Complainant made a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume that Respondent does not have any rights or legitimate interests in the disputed domain names. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Complainant reasons that Respondent does not have rights or legitimate interests in the disputed domain names because Complainant has not granted Respondent permission to use its mark and because Respondent is not commonly known by the disputed domain names. The WHOIS information for the disputed domain names list “Texas International Property Associates” as the registrant of the domain names. Respondent has not offered any evidence to counter this information. The Panel finds that under Policy ¶ 4(c)(ii), Respondent does not have rights or legitimate interests in the <legaldoom.com>, <legalzomm.com>, and <ligalzoom.com> domain names. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant also urges that Respondent does not have rights in the disputed domain names because it has failed to make an active use of the disputed domain names. Evidence submitted by Complainant shows that the disputed domain names are not connected with an active website. The Panel finds that Respondent’s failure to make an active use of the disputed domain names is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), and is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Lastly, Complainant contends that Respondent is taking
advantage of Internet users that are trying to reach Complainant’s website by
using common misspellings of the Complainant’s LEGALZOOM mark. The Panel finds that Respondent’s engagement
in what is commonly referred to as typosquatting is evidence that Respondent
lacks any rights or legitimate interests in the disputed domain names under
Policy ¶ 4(a)(ii).
See Microsoft Corp. v. Domain Registration
The Panel finds that Respondent has no rights or legitimate
interests in the disputed domain names.
The Panel finds that Complainant satisfied the elements of ICANN Policy
¶ 4(a)(ii).
Complainant maintains that Respondent’s repeated engagement
in cybersquatting also constitutes evidence of bad faith registration and use. Complainant references past WIPO and NAF
decisions against Respondent as evidence of a pattern of bad faith registration
of domain names of well-known parties. See Travelocity.com LP v.
Complainant further argues that Respondent’s failure to make an active use of the dispute domain names is further evidence of bad faith registration and use. The Panel finds that Respondent’s failure to make an active use of the <legaldoom.com>, <legalzomm.com>, and <ligalzoom.com> domain names since registering them in 2005 is further evidence that the disputed domain names were registered and passively held in bad faith under Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
The Panel has already determined that Respondent has engaged
in typosquatting through its misspelling of Complainant’s LEGALZOOM mark in the
disputed domain names. This practice,
standing alone, has been found to constitute evidence of bad faith registration
and use under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc.
v. Geer, FA 477183 (Nat.
Arb. Forum July 15, 2005)
(finding that the respondent’s registration and use of the <nextell.com>
domain name was in bad faith because the domain name epitomized typosquatting
in its purest form); see also Microsoft
Corp. v. Domain Registration
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <legaldoom.com>, <legalzomm.com>, and <ligalzoom.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 27, 2010.
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