Made E-Z
Products, Inc. v. Service Enterprises Network
Claim
Number: FA0302000145281
Complainant is
Made E-Z Products, Inc., Deerfield Beach, FL (“Complainant”) represented
by Melvin K. Silverman. Respondent is Service Enterprises Network,
McCloud, OK (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <ezeelegal.com>, registered with Tucows,
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 (the "Forum")
electronically on February 13, 2003; the Forum received a hard copy of the
Complaint on February 18, 2003.
On
February 13, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the
domain name <ezeelegal.com> is registered with Tucows, Inc. and
that Respondent is the current registrant of the name. Tucows, Inc. has
verified that Respondent is bound by the Tucows, 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
February 19, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 11, 2003 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@ezeelegal.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
March 17, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed James A. Carmody, Esq., as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 <ezeelegal.com>
domain name is confusingly similar to Complainant’s E-Z LEGAL mark.
2. Respondent does not have any rights or
legitimate interests in the <ezeelegal.com> domain name.
3. Respondent registered and used the <ezeelegal.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
established that it has rights in the E-Z LEGAL mark through registration with
the United States Patent and Trademark Office (“USPTO”), including E-Z LEGAL
(Reg. No. 1,693,742 registered June 9, 1992), E-Z LEGAL BOOKS (Reg. No.
2,548,893 registered March 19, 2002) and E-Z LEGAL FORMS (Reg. No. 2,035,044
registered February 4, 1997). Complainant is also the registrant of
several domain names related to its registered mark, including
<ezlegal.com>, <e-zlegal.com>, <e-zlegal.net>,
<ezlegal.net>, <ezlegalforms.com>, and <e-zlegalforms.com>.
Complainant uses its registered marks and domain names in relation to the sale
of self-help business forms, legal forms, software, books, kits and
certificates.
Respondent
registered the <ezeelegal.com> domain name on June 24, 2000.
Respondent’s disputed domain name resolves to a website that offers similar
products and services as Complainant’s website.
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.
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.
Complainant has
established that it has rights in the E-Z LEGAL mark through registration with
the USPTO.
Respondent’s <ezeelegal.com>
domain name is confusingly similar to Complainant’s E-Z LEGAL mark because the
disputed domain name is phonetically identical to Complainant’s mark. The
registration and use of a domain name phonetically identical to a registered
trademark is sufficient to establish the confusing similarity of the domain
name and the mark pursuant to Policy ¶ 4(a)(i). See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum
Apr. 7, 2000) (finding that a domain name which is phonetically identical to
Complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also YAHOO! Inc. v. Murray, D2000-1013 (WIPO
Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly
similar to the Complainant’s YAHOO mark).
Moreover,
Respondent is engaged in substantially the same industry as that of
Complainant. The use of a domain name confusingly similar to a registered
trademark in substantially the same industry increases the likelihood of
Internet-user confusion of the disputed domain name and Complainant’s mark. See Slep-Tone Entm't Corp. v. Sounds Choice
Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating,
“likelihood of confusion is further increased by the fact that the Respondent
and [Complainant] operate within the same industry”); see also Vivid Video,
Inc. v. Tennaro a/k/a Vivid Revolution, FA 126646 (Nat. Arb. Forum Nov. 14,
2002) (finding that any distinctiveness resulting from Respondent’s addition of
a generic word to Complainant’s mark in a domain name is less significant
because Respondent and Complainant operate in the same industry).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
not submitted a Response in this proceeding. Therefore, the Panel may accept
all reasonable inferences and allegations in the Complaint as true. See 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”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless clearly contradicted by the evidence).
Furthermore, the
Panel may presume that Respondent lacks any rights or legitimate interests in
the <ezeelegal.com> domain name because of Respondent’s failure to
respond. See Am. Online, Inc. v.
AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate
interests where 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,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name).
Respondent is
using the disputed domain name to compete with Complainant by selling self-help
legal materials and forms. The use of a confusingly similar domain name to
compete with a registered trademark holder is neither a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii). See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21,
2000) (finding that the disputed domain names were confusingly similar to
Complainant’s mark and that Respondent’s use of the domain names to sell
competing goods was illegitimate and not a bona fide offering of goods); see
also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or
legitimate interests when Respondent is using a domain name identical to
Complainant’s mark and is offering similar services).
Respondent has not come forward with any proof and there is no evidence
in the record to show that Respondent is commonly known by either EZEE LEGAL or
<ezeelegal.com>. Therefore, Respondent has failed to establish
that it has any rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish
Country Store, FA 96209
(Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights
in a domain name when Respondent is not known by the mark); see also RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail").
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use
of the <ezeelegal.com> domain name to sell self-help legal
materials and forms competes with Complainant’s business. The registration and
use of a confusingly similar domain name primarily for the purpose of
disrupting the business of a competitor is evidence of bad faith pursuant to
Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that competes with Complainant’s business); see
also General Media Communications,
Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad
faith where a competitor of Complainant registered and used a domain name
confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic web
site).
Moreover,
Respondent is using a phonetically identical domain name to Complainant’s E-Z
LEGAL mark to attract Internet traffic to Respondent’s website for its
commercial gain. The act of intentionally attempting to attract Internet users
to Respondent’s website by creating a likelihood of confusion with
Complainant’s mark, for commercial gain is evidence of bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708
(Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its
diversionary use of Complainant's mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also Am.
Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding bad faith where Respondent registered and used an infringing
domain name to attract users to a website sponsored by Respondent).
Thus, the Panel
finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <ezeelegal.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
March 24, 2003
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