Capitalism, Inc. v. Yury Byalik
Claim Number: FA1112001418650
Complainant is Capitalism, Inc. (“Complainant”), represented by Matthew Reischer of Reischer & Reischer, New York, USA. Respondent is Yury Byalik (“Respondent”), represented by Peri Fluger of Rhoads & Sinin LLP, Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <legaladvice.org>, registered with eNom, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 6, 2011; the National Arbitration Forum received payment on December 6, 2011.
On December 7, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <legaladvice.org> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2012 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@legaladvice.org. Also on December 13, 2011, 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.
A timely Response was received and determined to be complete on January 3, 2012.
Complainant’s Additional Submission was received on January 4, 2012 and deemed to be in compliance with Supplemental Rule 7.
On January 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <legaladvice.org> domain name at issue is identical to Complainant’s LEGAL ADVICE mark.
2. Respondent does not have any rights or legitimate interests in the <legaladvice.org> domain name.
3. Respondent registered and used the <legaladvice.org> domain name in bad faith.
B. Respondent filed a response admitting that Complainant might have rights in the LEGAL ADVICE mark but that Respondent had prior rights in the domain name at issue in connection with other similar domains which are related to the rendering of “legal advice”, all of which preceded the USPTO’s registration of the Complainant’s mark. Further, Respondent denies registration and use in bad faith. Respondent also seeks a finding of reverse domain name hijacking.
C. Additional Submissions: The Complainant filed an Additional Submission which treated some of the same issues as in the Complaint and which reacted to many of the assertions in the Response. The Panel took this Additional Submission into consideration.
Complainant has established its rights in the LEGAL ADVICE and Design mark by registering that mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,646,685 registered June 30, 2009) and has submitted documentary evidence to support its claim that the mark is registered and that it is the owner of record. The use of the mark is apparently focused on the mortgage industry and not more broadly on the rendition of advice of a more general legal nature. Respondent began law school in 2007 and began registering and acquiring domain names associated with his contemplated legal business including <lemoncarlaws.com>, <legalquestions.us>, <legalhelpforum.com> and <legalshortcuts.com>, which were later acquired by Lexis Nexis. Further, Respondent continues to buy many other legal related domain names in connection with legal services. The website associated with the domain name at issue is designed for click through revenue sending visitors to other sites including those focused on the mortgage industry in more than one instance. The domain name at issue was initially registered on March 10, 1999. Complainant’s predecessor sold mortgage related products using the LEGAL ADVICE mark as early as February of 2002 and apparently claims common law trademark rights based on secondary meaning as of that time.
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."
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.
As previously noted, Complainant has established its rights in the LEGAL ADVICE and Design mark by registering that mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,646,685 registered June 30, 2009). Registering a mark with the USPTO, even if the mark incorporates a design element, confers upon the registrant defendable rights in the mark registered. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (“The fact that Complainant’s marks incorporate distinctive design elements is irrelevant to this analysis. Since a domain name can only consist of alphanumeric text, design elements are ignored when considering this element.”). Therefore, the Panel finds that Complainant has established its rights in the LEGAL ADVICE mark under Policy ¶ 4(a)(i) by registering it with the USPTO.
Respondent’s <legaladvice.org> domain name is identical to its LEGAL ADVICE mark. The disputed domain name includes the entire mark with only two minor changes: the addition of the generic top-level domain (“gTLD”) “.org;” and the removal of the space between the terms. Such minute changes have little effect on differentiating the disputed domain name from the mark, thereby making the two confusingly similar under Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007) (“[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the <shamu.org> domain name is identical to the SHAMU mark under a Policy ¶ 4(a)(i).”).
Respondent contends that the <legaladvice.org> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark. However, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
The terms of the <legaladvice.org> domain name are common and descriptive, when applied to the use employed by Respondent—the rendering of “legal advice” to browsers. Had Complainant attempted to register LEGAL ADVICE in International Class 45, for example, which includes legal services, it seems very doubtful that it would have issued. Rather, Complainant’s use of the mark is unusual when describing mortgage and job finding related services and can therefore uniquely identify the source. In the field of legal services, Complainant’s mark has no such power. Therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. The terms of the disputed domain name are actually descriptive of the services offered at the website to which it resolves. By using the domain name at issue in connection with legal services and information, Respondent has established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
The Panel finds that Policy ¶ 4(a)(ii) has NOT been satisfied.
The domain name at issue was registered in 1999, the mark was not used to sell mortgage related products until 2002 and the first noted registration of the mark did not issue until 2009. Following registration of the domain Respondent’s use of the domain appears to be consistent with his use of similar domains related to legal services, not the mortgage industry or job finding services. Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith). Further it appears that Respondent registered the disputed domain name with the intention of offering free legal services to those in need. Respondent is a licensed attorney in the State of New York and his use of the domain at issue is entirely consistent with his professional activities and not to divert business from Complainant. Respondent has not registered or used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding no bad faith registration or use of the domain name <racegirl.com> where no evidence was presented that the respondent intended to divert business from the complainant or for any other purpose prohibited by UDRP Rules).
The Panel finds that Policy ¶ 4(a)(iii) has NOT been satisfied.
Reverse Domain Name Hijacking
In light of the facts of this case, including a finding in favor of Complainant on the first element of the Policy, Respondent’s request for a finding of reverse domain name hijacking is denied.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <legaladvice.org> domain name REMAIN WITH Respondent.
James A. Carmody, Esq., Panelist
Dated: January 16, 2012
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