West Publishing Corporation v. Korey COO
Claim Number: FA1112001420064
Complainant is West Publishing Corporation (“Complainant”), represented by Bradley J. Walz of Winthrop & Weinstine, P.A., Minnesota, USA. Respondent is Korey COO (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <superlawyers.co>, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 14, 2011; the National Arbitration Forum received payment on December 14, 2011.
On December 15, 2011, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <superlawyers.co> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 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@superlawyers.co. Also on December 19, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Respondent requested additional time to respond to the Complaint, and the National Arbitration Forum granted Respondent an extension until January 30, 2012.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 1, 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.
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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <superlawyers.co> domain name is identical to Complainant’s SUPER LAWYERS mark.
2. Respondent does not have any rights or legitimate interests in the <superlawyers.co> domain name.
3. Respondent registered and used the <superlawyers.co> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, West Publishing Corporation, publishes legal, business, and regulatory information in print and on electronic services. Complainant offers its services under its SUPER LAWYERS mark. Complainant holds two trademark registrations for its SUPER LAWYERS mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 2,433,073 registered March 6, 2001 &
Reg. No. 2,817,097 registered February 24, 2004.
Respondent, Korey COO, registered the <superlawyers.co> domain name on July 20, 2010. The disputed domain name resolves to a website stating that the disputed domain name is scheduled for auction. Respondent offered to sell the <superlawyers.co> domain name to Complainant.
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 owns two trademark registrations for its SUPER LAWYERS mark with the USPTO:
Reg. No. 2,433,073 registered March 6, 2001 &
Reg. No. 2,817,097 registered February 24, 2004.
The Panel concludes that Complainant sufficiently demonstrated its rights in its SUPER LAWYERS mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also 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).
The Panel further determines that Respondent’s <superlawyers.co> domain name differs from Complainant’s SUPER LAWYERS mark by the removal of a space and the addition of the country-code top-level domain (“ccTLD”) “.co.” The Panel holds that Respondent’s <superlawyers.co> domain name is identical to Complainant’s SUPER LAWYERS mark under Policy ¶ 4(a)(i) because spaces are not allowed in a domain name and a top-level domain is required. 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 Sensient Techs. Corp. v. Kolcak, FA 1355265 (Nat. Arb. Forum Nov. 22, 2010) (“The Panel finds that attaching the ccTLD “.co” does nothing to prevent the <sensient.co> domain name from being identical to Complainant’s SENSIENT mark.”).
The Panel deems Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <superlawyers.co> domain name. The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). 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.”). The Panel finds Complainant made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <superlawyers.co> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Respondent did not respond to this case after requesting its extension and, therefore, did not present any evidence that Respondent is commonly known by the <superlawyers.co> domain name. After examining the record, the Panel fails to find any evidence that Respondent is commonly known by the disputed domain name. To the contrary, the Panel determines that the WHOIS information, which identifies the registrant of the disputed domain name as “Korey COO,” does not indicate that Respondent is commonly known by the <superlawyers.co> domain name. Consequently, the Panel concludes that Respondent is not commonly known by the <superlawyers.co> domain name pursuant to Policy ¶ 4(c)(ii). 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).
After examining the screenshots of the resolving website, the Panel determines that the disputed domain name resolves to a website that states the disputed domain name is scheduled to be auctioned off. The Panel finds that, on October 12, 2011, Respondent contacted Complainant and offered to sell the <superlawyers.co> domain name to Complainant without specifying a price. Complainant responded to Respondent’s offer by offering $375 for the domain name. Respondent stated that the auction would start at $1,500 and Respondent would accept anything above $1,500. Complainant then offered to buy the disputed domain name for $2,500, which Respondent rejected and told Complainant that Respondent would accept an offer slightly less than $11,0000. Respondent made further offers to sell the <superlawyers.co> domain name to Complainant for $6,000 and $6,900. Based on this evidence, the Panel holds that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <superlawyers.co> domain name when Respondent offers to sell the disputed domain name to Complainant. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).
The Panel deems Policy ¶ 4(a)(ii) is satisfied.
As noted above, the Panel determines that Respondent made numerous offers to sell the <superlawyers.co> domain name to Complainant. The Panel concludes that Respondent’s willingness to sell the disputed domain name to Complainant evidences Respondent’s bad faith registration and use under Policy ¶ 4(b)(i). See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to the complainant amounts to a use of the domain name in bad faith); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith).
The Panel deems Policy ¶ 4(a)(iii) is 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 <superlawyers.co> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: February 3, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page