LegalZoom.com, Inc. v. G Design c/o Bin G Glu a/k/a Affordable Computer Solutions, Inc. c/o Bin G Glu
Claim Number: FA1003001312902
Complainant is LegalZoom.com, Inc. (“Complainant”), represented by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <legalzom.com> registered with Wild West Domains, Inc., and <legalzooms.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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 11, 2010.
On March 15, 2010; Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <legalzom.com> domain name is registered with Wild West Domains, Inc., and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 March 22, 2010, Communigal Communications Ltd. confirmed by e-mail to the National Arbitration Forum that the <legalzooms.com> domain name is registered with Communigal Communications Ltd., and that Respondent is the current registrant of the name. 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 March 22, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 12, 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@legalzom.com and postmaster@legalzooms.com by e-mail. Also on March 22, 2010, 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 15, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 "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. Respondent’s <legalzom.com> and <legalzooms.com> domain names are confusingly similar to Complainant’s LEGALZOOM mark.
2. Respondent does not have any rights or legitimate interests in the <legalzom.com> and <legalzooms.com> domain names.
3. Respondent registered and used the <legalzom.com> and <legalzooms.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 registered the <legalzom.com> domain name on June 24, 2003 and the <legalzooms.com> domain name on June 1, 2004. Respondent’s <legalzom.com> domain name resolves to a website that contains a commercial search engine, and third-party links to websites in competition with Complainant and unrelated to Complainant. Respondent’s <legalzooms.com> domain name resolves to a website that also features a commercial search engine and displays third-party links to Complainant’s official <legalzoom.com> website, websites in competition with Complainant, and unrelated websites.
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.
The Panel finds that Complainant has 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.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <legalzom.com> and <legalzooms.com> domain names both 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 <legalzom.com> and <legalzooms.com> domain names are confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i) because merely misspelling the words of a mark by leaving out the letter “o” or adding the letter “s” are not sufficient to distinguish the disputed domain names from the mark and a gTLD is a required element of every domain name. 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 Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <legalzom.com> and <legalzooms.com> domain names. Complainant is required to make a prima facie case in support of these allegations. Once the Complainant has produced a prima facie case the burden shifts to the Respondent to show that it does have 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 the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume 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 Respondent is not commonly known as the disputed domain names. The WHOIS information for the <legalzooms.com> and <legalzom.com> domain names do not indicate whether the registrant is commonly known by the disputed domain names. Further, Respondent has not offered any evidence to dispel these claims. The Panel finds that under Policy ¶ 4(c)(ii), Respondent does not have rights or legitimate interests in the <legalzom.com> and <legalzooms.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 further argues that Respondent lacks rights and
legitimate interests in the disputed domain names because the disputed domain
names are not being used in connection with a bona fide offering of goods or services or a legitimate
noncommercial or fair use. Complainant
contends that Respondent is using the confusingly similar disputed domain names
to divert Internet users to Respondent’s website’s where various third-party
links are displayed, and where Respondent is presumably collecting
click-through fees for those links. The
Panel finds that Respondent’s 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) nor a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Jerry Damson, Inc. v.
Lastly, Complainant asserts that Respondent is taking
advantage of Internet users that are trying to reach Complainant’s official
<legalzoom.com> website by using common misspellings of the Complainant’s
LEGALZOOM mark. The Panel finds that
Respondent’s engagement in 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 Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s use of the confusingly
similar disputed domain names to display third-party links to businesses that
offer competing legal software and forms creates a loss in business for
Complainant. The Panel finds that
Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii) where it is using the confusingly similar domain
names to divert Internet users to the competitors of Complainant. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii)); see
also Persohn
v. Lim, FA 874447 (Nat. Arb. Forum
Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶
4(b)(iii) where a respondent used the disputed domain name to operate a
commercial search engine with links to the complainant’s competitors).
Respondent’s <legalzom.com> and <legalzooms.com>
domain names resolve to websites that display third-party links, at least one
of which is for Complainant’s business, as well as websites in competition with
Complainant, and other websites that are unrelated to Complainant. Complainant alleges that Internet users’
confusion as to the affiliation of the disputed domain names will lead some to
purchase competing products of Complainant. The Panel finds that Respondent is
appropriating close derivations of Complainant’s mark to attract Internet users
to its websites, where it presumably collects click-through fees for the links
displayed thereon, and that this use is evidence of bad faith registration and
use under Policy ¶ 4(b)(iv). See
The Panel has already determined that Respondent has engaged
in typosquatting through its intentional misspelling of Complainant’s LEGALZOOM
mark in the disputed domain names. This
practice has been found to constitute evidence by itself of bad faith
registration and use under Policy ¶ 4(a)(iii). See Internet Movie Database,
Inc. v. Temme, FA 449837 (Nat. Arb. Forum
May 24, 2005) (“Respondent's registration of the domain names in dispute
constitutes bad faith because the domain names are merely typosquatted versions
of the [complainant’s] IMDB mark.); see also Microsoft Corp. v.
Domain Registration
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <legalzom.com> and <legalzooms.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: April 23, 2010
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