LegalZoom, Inc. v. Direct Privacy / Domain Name Proxy Service, Inc
Claim Number: FA1406001565563
Complainant is LegalZoom, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Direct Privacy / Domain Name Proxy Service, Inc (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lrgalzoom.com>, registered with DNC Holdings, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 19, 2014; the National Arbitration Forum received payment on June 19, 2014.
On June 23, 2014, DNC Holdings, Inc. confirmed by e-mail to the National Arbitration Forum that the <lrgalzoom.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, 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 June 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 2014 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@lrgalzoom.com. Also on June 25, 2014, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 22, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
1. Complainant is the United States’ leading provider of personalized online legal solutions, such as self help tools for legal document preparation.
2. Complainant has rights in the LEGALZOOM mark by virtue of its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,540,549 registered on February 19, 2002) and several other registrations for LEGALZOOM (“the LEGALZOOM mark”).
3. The disputed domain name is nearly identical and confusingly similar to the LEGALZOOM trademark.
4. Respondent has no rights or legitimate interests in the disputed domain name.
5. Respondent registered and has used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company which is the United States’ leading provider of personalized online legal solutions, such as self help tools for legal document preparation.
2. Complainant has rights in the LEGALZOOM mark registered with the USPTO (Reg. No. 2,540,549 registered on February 19, 2002).
3. Respondent registered the <lrgalzoom.com> domain name on July 27, 2008 and has used it to redirect Internet users to a website featuring generic links to third-party websites, some of which compete with Complainant's business.
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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.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant contends that it is the owner of several trademark registrations with the USPTO for the LEGALZOOM mark (e.g., Reg. No. 2,540,549, registered February 19, 2002). See Complainant’s Exhibit E. The Panel finds that Complainant’s USPTO registration of the LEGALZOOM mark sufficiently shows that it has rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s LEGALZOOM mark. Complainant submits that Respondent’s <lrgalzoom.com>, domain name is nearly identical and confusingly similar to Complainant’s registered LEGALZOOM trademark.
The Panel notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to the mark in the disputed domain name. The Panel finds that Respondent’s addition of a gTLD to Complainant’s mark is irrelevant under Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Complainant also submits that this is a case of typosquatting, as Respondent has merely altered the letter ”e” in the trademark to the letter “r” in the domain name, but that otherwise the domain name is identical to the trademark. The Panel agrees with that submission. The Panel therefore holds that Respondent’s substitution of one letter for another in Complainant’s mark does not differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i). 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”). Consequently, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s LEGALZOOM mark under Policy ¶ 4(a)(i). Accordingly, the Panel finds that Respondent’s <lrgalzoom.com>, domain name is confusingly similar to Complainant’s LEGALZOOM mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations
(a) Respondent has chosen to take Complainant’s LEGALZOOM mark and to use it in its domain name and merely altered the letter ”e” in the trademark to the letter “r” in the domain name, but that otherwise the domain name is identical to the trademark;
(b) Respondent registered the disputed domain name on July 27, 2008;
(c) Complainant argues that Respondent is not commonly known by the <lrgalzoom.com > domain name. The Panel notes that the registrant of the disputed domain name is listed as “Direct Privacy” in the WHOIS record. The Panel also notes that Respondent has not provided any evidence showing that it is known by the disputed domain name. Thus, the Panel concludes that Respondent is not commonly known by the <lrgalzoom.com > domain name under Policy ¶ 4(c)(ii). See 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 domain names);
(d) Complainant also argues that it has not authorized Respondent to register a domain name containing its registered mark. The Panel accepts the evidence submitted by Complainant to that effect and so finds;
(a) Complainant claims that Respondent is using the <lrgalzoom.com > domain name to redirect unsuspecting internet users to a website featuring generic links to third party websites some of which compete directly with Complainant’s business. The Panel accepts the evidence submitted by Complainant to that effect and therefore determines that Respondent is not using the <lrgalzoom.com > domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be 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 also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that typosquatting alone is sufficient to prove bad faith. The Panel notes that Respondent has altered the letter ”e” in the trademark to the letter “r” in the domain name as it has been registered. The Panel finds typosquatting where, as in the present case, there is a disputed domain name representing a typographical error with respect to a complainant’s mark or correlation between an incorrect letter found in the disputed domain name and its placement on a computer keyboard near the correct letter as found in the complainant’s mark. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Accordingly, as the Panel finds that Respondent’s <lrgalzoom.com > domain name contains a common typographical error, the Panel also holds that Respondent has engaged in typosquatting, showing bad faith use and registration pursuant to Policy ¶ 4(a)(iii).
Secondly, Complainant argues that Respondent’s <lrgalzoom.com > domain name resolves to a website containing links to competing third-party websites and the Panel accepts the evidence submitted by Complainant to that effect.
Prior UDRP panels have determined that a respondent’s use of a domain name to provide links to competing products and services disrupts complainant’s business and shows bad faith under Policy ¶ 4(b)(iii). As the Panel finds that Respondent has linked its <lrgalzoom.com > domain name to a webpage displaying competing links, the Panel finds bad faith disruption of Complainant’s business, which demonstrates bad faith under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed
<lrgalzoom.com> domain name using the LEGALZOOM mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lrgalzoom.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 23, 2014
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