LegalZoom.com, Inc. v. Chin-Hui Wu c/o Chin-Hui Wu a/k/a Elarson & Associates Pty Ltd c/o Eric Larson a/k/a Domain Administrator a/k/a Julian Greenberg a/k/a Marcelos Vainez c/o Marcelos Vainez a/k/a Vlad Obchikov c/o Vlad Obchikov a/k/a Volchar Pty Ltd c/o Domain Administrator a/k/a Web Pescados LLC c/o Augustine Rivera a/k/a Webatopia Marketing Limited c/o Michael Short a/k/a Alex Ovechkin a/k/a ZincFusion Limited c/o Vivian Cox
Claim Number: FA1007001337667
Complainant is LegalZoom.com,
Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <kegalzoom.com>, <oegalzoom.com>, <legalaoom.com>, <letalzoom.com>, <legalzopm.com>, <legalzoim.com>, <legalzo0m.com>, <lsgalzoom.com>, <lejalzoom.com>, <lebalzoom.com>, and <lehalzoom.com>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 27, 2010.
On July 29, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <kegalzoom.com>, <oegalzoom.com>, <legalaoom.com>, <letalzoom.com>, <legalzopm.com>, <legalzoim.com>, <legalzo0m.com>, <lsgalzoom.com>, <lejalzoom.com>, <lebalzoom.com>, and <lehalzoom.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 August 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 29, 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@kegalzoom.com, postmaster@oegalzoom.com, postmaster@legalaoom.com, postmaster@letalzoom.com, postmaster@legalzopm.com, postmaster@legalzoim.com, postmaster@legalzo0m.com, postmaster@lsgalzoom.com, postmaster@lejalzoom.com, postmaster@lebalzoom.com, and postmaster@lehalzoom.com by e-mail. Also on August 2, 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 September 1, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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" 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 <kegalzoom.com>, <oegalzoom.com>, <legalaoom.com>, <letalzoom.com>, <legalzopm.com>, <legalzoim.com>, <legalzo0m.com>, <lsgalzoom.com>, <lejalzoom.com>, <lebalzoom.com>, and <lehalzoom.com> domain names are confusingly similar to Complainant’s LEGALZOOM mark.
2. Respondent does not have any rights or legitimate interests in the <kegalzoom.com>, <oegalzoom.com>, <legalaoom.com>, <letalzoom.com>, <legalzopm.com>, <legalzoim.com>, <legalzo0m.com>, <lsgalzoom.com>, <lejalzoom.com>, <lebalzoom.com>, and <lehalzoom.com> domain names.
3. Respondent registered and used the <kegalzoom.com>, <oegalzoom.com>, <legalaoom.com>, <letalzoom.com>, <legalzopm.com>, <legalzoim.com>, <legalzo0m.com>, <lsgalzoom.com>, <lejalzoom.com>, <lebalzoom.com>, and <lehalzoom.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 document preparation services, legal information, attorney referral services, and attorney directory listings. 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 February 19, 2002).
Respondent registered the <kegalzoom.com>, <oegalzoom.com>, <legalaoom.com>, <letalzoom.com>, <legalzopm.com>, <legalzoim.com>, <legalzo0m.com>, <lsgalzoom.com>, <lejalzoom.com>, <lebalzoom.com>, and <lehalzoom.com> domain names on June 13, 2007 or June 18, 2007. Respondent’s disputed domain names resolve to websites that display various third-party links to competing 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.
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
In the instant proceedings, Complainant has alleged that the
entities which control the domain names at issue are effectively controlled by
the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) 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.” The Panel finds that Complainant has
submitted sufficient evidence to indicate that the multiple entities identified
in the WHOIS information for the disputed domain names are controlling the
disputed domain names as one entity.
Therefore, the Panel will proceed with the instant proceedings as if the
named entities are operating as one which controls the disputed domain names.
The Panel finds that Complainant has established rights in its LEGALZOOM mark under Policy ¶ 4(a)(i) through its multiple trademark registrations with the USPTO (e.g., Reg. No. 2,540,549 issued February 19, 2002). See 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 Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant contends that the <kegalzoom.com>, <oegalzoom.com>, <legalaoom.com>, <letalzoom.com>, <legalzopm.com>, <legalzoim.com>, <legalzo0m.com>, <lsgalzoom.com>, <lejalzoom.com>, <lebalzoom.com>, and <lehalzoom.com> domain names are confusingly similar to Complainant’s LEGALZOOM mark. Complainant asserts that each domain name contains a misspelled version of its mark and the addition of the generic top-level domain (“gTLD”) “.com,” and that the changes and additions to its mark are not sufficient to render the disputed domain names distinct from Complainant’s mark. The Panel agrees and finds that Respondent’s disputed domain names containing misspelled versions of Complainant’s mark are confusingly similar to Complainant’s LEGALZOOM mark under Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i).); see also Neuberger Berman Inc. v. Jacobsen, D2000-0323 (WIPO June 12, 2000) (finding that the respondent’s <newbergerberman.com> domain name was confusingly similar to the complainant’s NEUBERGER BERMAN mark despite the slight difference in spelling); Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights and legitimate interests in the <kegalzoom.com>, <oegalzoom.com>, <legalaoom.com>, <letalzoom.com>, <legalzopm.com>, <legalzoim.com>, <legalzo0m.com>, <lsgalzoom.com>, <lejalzoom.com>, <lebalzoom.com>, and <lehalzoom.com> domain names pursuant to Policy ¶ 4(a)(ii). Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to show that it possesses rights or legitimate interests in the disputed domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also 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.”). The Panel finds that Complainant has produced a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have rights and legitimate interests in the disputed domain names. See American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also America Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel, however, will examine the record to determine whether Respondent possesses rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
Complainant contends that Respondent is neither commonly
known by the disputed domain names nor has Complainant granted
Respondent permission to use Complainant’s LEGALZOOM mark. The WHOIS information for the disputed domain
names does not indicate that Respondent is commonly known by the domain names
or the LEGALZOOM mark. The Panel finds
that there is no evidence in the record indicating that Respondent is commonly
known by the disputed domain names. Therefore,
the Panel finds that Respondent is not commonly known by the disputed domain
names under Policy ¶ 4(c)(ii) and therefore lacks
rights and legitimate interests in the disputed 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 Braun Corp. v. Loney, FA 699652
(Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly
known by the disputed domain names where the WHOIS information, as well as all
other information in the record, gave no indication that the respondent was
commonly known by the disputed domain names, and the complainant had not
authorized the respondent to register a domain name containing its registered
mark).
Complainant contends that Respondent is using the disputed domain names to advertise and display third-party links to both competing and unrelated businesses and websites. Complainant alleges that Respondent receives click-through fees from the companies and websites advertised on its website and that such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel agrees and finds that Respondent’s use of the disputed domain names to operate a commercial links page that advertises both competing and unrelated websites, presumably for financial gain, is not 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 Bank of Am. Corp. v. Northwest Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Complainant argues that Respondent is taking advantage of
Internet users who are trying to reach Complainant’s official
<legalzoom.com> website by using common misspellings of Complainant’s
LEGALZOOM mark in the disputed domain names and redirecting those Internet
users to competing services. The Panel
finds that Respondent’s engagement in typosquatting is evidence that Respondent
lacks rights and 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 argues that Respondent is using the disputed domain names to redirect Internet users to websites and businesses of Complainant’s competitors in the self-help legal document and attorney directory fields. The Panel finds that Respondent’s use of the disputed domain names to divert Internet users to the websites and businesses of its competitors is evidence that Respondent registered and uses the domain names in bad faith pursuant to Policy ¶ 4(b)(iii). 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).
Further, Complainant contends that Respondent receives click-through fees from the businesses and websites that are advertised on Respondent’s website. Complainant contends that Respondent’s presumed practice of receiving click-through fees from the competing and unrelated businesses advertised on Respondent’s website is further evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). The Panel agrees and finds that Respondent’s use of the disputed domain names to intentionally attract Internet users to its websites that display various third-party links to competing and unrelated businesses, presumably for financial gain, is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
The Panel further finds that Respondent’s typosquatting behavior is further evidence of Respondent’s bad faith registration and use of the disputed domain names 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
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 <kegalzoom.com>, <oegalzoom.com>, <legalaoom.com>, <letalzoom.com>, <legalzopm.com>, <legalzoim.com>, <legalzo0m.com>, <lsgalzoom.com>, <lejalzoom.com>, <lebalzoom.com>, and <lehalzoom.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 2, 2010
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