Silver Law P.A. and Coollawyer Inc. v.
Allen West
Claim Number: FA0501000403146
PARTIES
Complainant
is Silver Law P.A. and Coollawyer Inc. (“Complainant”), represented by Judith A.
Silver, 1007 North Federal Hwy., #182, Fort Lauderdale, FL 33304. Respondent is Allen West (“Respondent”), 3002 Oregon Avenue, Long Beach, CA
90806.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <coolawyer.com>,
registered with Register.com.
PANEL
The
undersigned certify that they have acted independently and impartially and that
to the best of their knowledge they have no known conflicts in serving as
Panelists in this proceeding. Anne M.
Wallace, Q.C.; Kevin H. Fortin, Esq., and Hon. Carolyn Marks Johnson sit as Panelists. Former Judge Johnson writes for the Panel.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
14, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 17, 2005.
On
January 14, 2005, Register.com confirmed by e-mail to the National Arbitration
Forum that the domain name <coolawyer.com>
is registered with Register.com and that Respondent is the current registrant
of the name. Register.com verified that
Respondent is bound by the Register.com 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
January 24, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 14, 2005, 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@coolawyer.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
The
Panel received no Additional Submissions.
On March 2, 2005, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Anne M. Wallace, Q.C., Kevin H. Fortin, Esq.; and Hon. Carolyn Marks
Johnson as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following
allegations in this proceeding:
1. The domain name that Respondent
registered, <coolawyer.com>, is confusingly similar to a mark in
which Complainant has exclusive rights.
2. Respondent has no rights or legitimate
interests in the domain name containing Complainant’s protected mark.
3. Respondent registered and used the domain
name in bad faith.
B. Respondent did not controvert
Complainant’s allegations and filed no Response.
FINDINGS
Complainant established by extrinsic proof in this
proceeding that it has rights in the COOLLAWYER and COOLLAWYER.COM marks
through registrations with the United States Patent and Trademark Office (Reg.
No. 2,730,548 filed March 21, 2000, issued June 24, 2003 and Reg. No. 2,730,546
filed March 20, 2000, issued June 24, 2003).
Register.com, Inc. confirmed that it is the
registrant of the disputed <coolawyer.com> domain name.
Register.com did not establish for Respondent the date on which Respondent
registered the domain name.
However, Complainant concedes that Respondent
registered the domain name in December, 2002, and Complainant’s exhibits show
that the domain name was created December 19, 2002.
Complainant’s exhibits further establish that the
registration documents for the COOLLAWYER mark show an application filing date
of March 21, 2000, and a first use in commerce in the year 2000. The registration date was June 24, 2003.
Further, Complainant’s exhibits established that
Complainant filed to register the COOLLAWYER.COM mark on March 20, 2000, and
that the registration granted on June 24, 2003, showed a first use in commerce
date in the year 2000.
Complainant alleged thousands of contacts accessing
the domain name site for the mark and supported her allegation of secondary
identification of the mark with extrinsic proof.
Complainant further notified Respondent of the
alleged infringement of the COOLLAWYER service mark by a cease and desist
letter dated April 9, 2003.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 Complainant to 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 the Complainant has rights;
(2)
Respondent
has no rights to 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 asserts that it has established rights
in the COOLLAWYER and COOLLAWYER.COM marks through registrations with the
United States Patent and Trademark Office.
See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption.); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat.
Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently distinctive and have acquired secondary
meaning.”); see also Wal-Mart
Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the
failure of complainant to register all possible domain names that surround its
substantive mark does not hinder complainant’s rights in the mark. “Trademark
owners are not required to create ‘libraries’ of domain names in order to
protect themselves”); see also Koninklijke
KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the
Policy does not require that the mark be registered in the country in which
respondent operates. It is sufficient
that Complainant can demonstrate a mark in some jurisdiction).
Once
a mark has been registered, the date on which the registrant’s rights in the
mark are effective reverts back to the date the application was filed with the
United States Patent and Trademark Office.
See FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat.
Arb. Forum Mar. 26, 2003) (finding that complainant’s rights in the FDNY mark
relate back to the date that its successful trademark registration was filed
with the U.S. Patent and Trademark Office); see also J. C. Hall Co. v.
Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965)
(registration on the Principal Register is prima facie proof of
continual use of the mark, dating back to the filing date of the application
for registration).
Complainant
alleges that the <coolawyer.com>
domain name is confusingly similar to Complainant’s COOLLAWYER and
COOLLAWYER.COM marks because the only difference is that the domain name omits
the second letter “l,” which does not significantly distinguish the domain name
from the mark. See Elder Mfg. Co., Inc. v. Recker, FA 98414 (Nat. Arb. Forum Sept.
10, 2001) (“In the matter at bar it is beyond refute that Respondent’s domain
names are virtually identical, and thus confusingly similar to Elder’s
trademarks. Any superficial differences between the domain names and the Elder
trademarks are de minimis and of no legal consequence”); see also Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive); see
also Dow Jones & Co., Inc. v.
Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the
deliberate introduction of errors or changes, such as the addition of a fourth
“w” or the omission of periods or other such generic typos do not change
respondent’s infringement on a core trademark held by complainant).
The
Panel has considered the substantive proof offered by Complainant to determine
that Complainant made a prima facie showing and should prevail in a case
where Respondent filed no response offering proof to the contrary. Once Complainant makes a prima facie
showing, the burden of proof shifts to Respondent to controvert that
showing. Respondent had notice of the
Complaint and at least constructive notice of Complainant’s rights. Respondent
had ample opportunity to respond to the Complaint, but failed to do so.
Complainant
established a prima facie case by showing that Respondent does not
qualify for any of the three “safe harbors” provided under Policy ¶¶
4(c)(i)-(iii). Such a showing shifts Complainant’s burden to Respondent, who
must come forward with evidence rebutting Complainant’s allegations in order to
prevail on this element. In this case, Complainant has made a prima facie showing
that Respondent does not have any rights or legitimate interests in the
disputed domain name. See Compagnie Generale des Matieres Nucleaires v.
Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the
Respondent has no rights or legitimate interests in respect of the Domain Name
requires the Complainant to prove a negative. . . . [I]t is sufficient for the
Complainant to show a prima facie case and the burden of proof is then shifted
[to the] Respondent.”); see also G.D. Searle v. Martin Mktg., FA 118277
(Nat. Arb. Forum Oct. 1, 2002) (holding that where a complainant has asserted
that a respondent has no rights or legitimate interests with respect to the
domain name it is incumbent on the respondent to come forward with concrete
evidence rebutting this assertion because this information is “uniquely within
the knowledge and control of the respondent”).
Complainant
made a prima facie showing that Respondent does not have any rights or
legitimate interests in the disputed domain name and the burden shifts to
Respondent to demonstrate rights or legitimate interests in the domain name. In
this proceeding, Respondent has not submitted a response. Thus, Respondent has
failed to present any circumstances under which it could substantiate rights or
legitimate interests in the disputed domain name. Furthermore, because
Respondent failed to submit a response in this proceeding, the Panel may accept
as true all reasonable allegations submitted by Complainant in the Complaint. See
Geocities v. Geociites.com,
D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or
legitimate interests in the domain name because it never submitted a response
or provided the panel with evidence to suggest otherwise); see also
Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb.
Forum June 17, 2002) (finding that in the absence of a response the panel is
free to make inferences from the very failure to respond and assign greater
weight to certain circumstances than it might otherwise do).
Nevertheless,
the Panel reviewed the several arguments that Respondent could have raised had
he bothered to file a response.
Respondent could have argued that Complainant failed to establish common
law rights in the COOLLAWYER and COOLLAWYER.COM marks prior to the filing of
the disputed domain name because some discrepancy exists between Respondent’s
date of registration of the domain name and Complainant’s date of registration
of legal rights in the mark. See Weatherford Int’l, Inc. v. Wells, FA 153626
(Nat. Arb. Forum May 19, 2003) (“Although
Complainant asserts common law rights in the WELLSERV mark, it failed to submit
any evidence indicating extensive use or that its claimed mark has achieved
secondary source identity . . . [a]lthough Complainant’s WELLSERV product and
related services may be well-known among relevant consumers, that is a finding
that must be supported by evidence and not self-serving assertions); see
also Molecular Nutrition, Inc. v. Network News and Publ’ns., FA 156715
(Nat. Arb. Forum June 24, 2003) (approving of and applying the principals
outlined in prior decisions that recognized “common law” trademark rights as
appropriate for protection under the Policy “if the complainant can establish
that it has done business using the name in question in a sufficient manner to
cause a secondary meaning identifiable to Complainant's goods or services”).
Here,
however, Complainant showed ultimate legal rights in the mark, a date for use
in commerce that preceded Respondent’s presumed filing of the domain name and
Complainant should prevail where Complainant’s rights date back to the
application and first use and Respondent did nothing to refute Complainant’s
allegations. See FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235
(Nat. Arb. Forum Mar. 26, 2003) (finding that Complainant’s rights in the FDNY
mark relate back to the date that its successful trademark registration was
filed with the U.S. Patent and Trademark Office).
The
Panel also considered that the disputed domain name and Complainant’s mark
consists of words that Respondent could have argued were generic terms had he
filed a response. Again, where the allegations
meet the required prima facie showing and Respondent does not controvert
them, the Panel should not sua sponte address an issue of whether or not
the domain name here, which contains in its entirety a mark registered by the
appropriate authorities, actually consists of two generic words “cool” and “lawyer.” The issue of genericness does not
prevent Complainant from prevailing here. See Zero
Int'l Holding v. Beyonet Servs.,
D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are
legitimately subject to registration as domain names on a 'first-come,
first-served' basis"); see also SportSoft Golf, Inc. v. Sites to Behold Ltd., FA 94976 (Nat. Arb.
Forum July 27, 2000) (finding that the disputed domain name is neither
identical to nor confusingly similar to complainant’s trademark because the
trademark links together two generic words – golf and society -- with a
geographic entity, the United States); see also CRS Tech. Corp. v. Condenet, Inc., FA 93547 (Nat. Arb. Forum Mar.
28, 2000) (finding that “concierge is not so associated with just one source
that only that source could claim a legitimate use of the mark in connection
with a website”).
Furthermore,
despite Respondent’s available argument, had he filed a response, that deletion
of the letter “l” should not confuse experienced Internet users who are aware
that very small differences in domain names matter when accessing information
on the Internet, that will not defeat Complainant’s claim here. But see Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1147 (9th
Cir. 2002) ("Similarity of marks or lack thereof are context-specific
concepts. In the Internet context, consumers are aware that domain names for
different Web sites are quite often similar, because of the need for language
economy, and that very small differences matter"); see also Dollar Fin. Group, Inc. v. Oakridge, FA
94977 (Nat. Arb. Forum July 17, 2000) (finding that the domain names,
<tillpaydayloan.com>, <tillpaydayloans.com>,
<untilpaydayloan.com>, and <untilpaydayloans.com> are not identical
or confusingly similar to Complainant’s CASH ‘TIL PAYDAY and CASH ‘TIL PAYDAY
LOANS trademarks and service marks); see also Copart, Inc. v. SalvageNow, D2000-0417 (WIPO June 28, 2000)
(finding that the domain name at issue <copart.net> is not identical to
nor substantially similar to the mark registered and used by Complainant,
"CI Copart Inc. Salvage Auto Auctions").
In
this case, Complainant made the necessary showing of confusing similarity and
Respondent did noting to refute Complainant’s evidence. ICANN Policy ¶ 4(a)(i).
Complainant
asserts that Respondent lacks rights and legitimate interests in the domain
name because the domain name has been used to provide services that are similar
to Complainant’s services in attempted competition with Complainant’s
business. Moreover, Complainant argues
that Respondent’s use does not constitute 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). See Ziegenfelder
Co. v. VMH Enter., Inc. D2000-0039 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interests based on the fact that the domain
names bear no relationship to the business of respondent and that respondent
would only legitimately choose to use complainant’s mark in a domain name if
respondent was seeking to create an impression that the two businesses were
affiliated); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321
(Nat. Arb. Forum June 23, 2003) (holding that respondent’s appropriation of
complainant’s mark to market products that compete with complainant’s goods
does not constitute a bona fide offering of goods and services); see also
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11,
2002) (finding that respondent’s use of the disputed domain name to redirect
Internet users to a financial services website, which competed with
complainant, was not a bona fide offering of goods or services).
The Panel finds that Respondent’s domain
name is confusingly similar to Complainant’s protected mark and that
Complainant has shown that Respondent’s use of the domain name has caused
actual confusion. Respondent has not
shown legitimate rights or interests in the domain name. Therefore, the Panel
finds that Respondent lacks rights and legitimate interests in the domain
name. See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding
that, because respondent's sole purpose in selecting the domain names was to
cause confusion with complainant's website and marks, its use of the names was
not in connection with the offering of goods or services or any other fair
use); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27,
2000) (“[U]nauthorized providing of information and services under a mark owned
by a third party cannot be said to be the bona fide offering of goods or
services”); see Clear Channel Communications, Inc. v. Beaty Enters., FA
135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that respondent, as a competitor
of complainant, had no rights or legitimate interests in a domain name that
utilized complainant’s mark for its competing website).
Complainant contends that Respondent was
not authorized or licensed to register or use a domain name that is confusingly
similar to the COOLLAWYER or COOLLAWYER.COM marks. The Panel finds that Respondent is not commonly known by the
domain name and Respondent has brought no evidence to the Panel to suggest that
he is. The Panel concludes that
Respondent lacks rights and legitimate interests in the domain name pursuant to
Policy ¶ 4(c)(ii). See
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"); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
respondent was not commonly known by the mark and never applied for a license
or permission from complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) respondent is not a licensee of
complainant; (2) complainant’s rights in the mark precede respondent’s
registration; (3) respondent is not commonly known by the domain name in
question).
The Panel addressed
above the possible generic argument that Respondent might have raised with
regard to the <coolawyer.com> domain name
that he registered, had he chosen to file a response, and will not revisit that
issue except to note that the Panel is aware that other panels have found rights or
legitimate interests in the domain name in similar cases. See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12,
2000) ("Common words and descriptive terms are legitimately subject to
registration as domain names on a 'first-come, first-served' basis"); see
also Choice Courier
Sys. Inc. v. Kirkendale,
D2002-0483 (WIPO July 23, 2002) (“[T]here is no requirement that the user of a
domain name must offer goods or services bearing a mark which matches the
domain name. This is particularly so when the mark is a generic word.”); see
also Capt’n Snooze Mgmt. v. Domains 4
Sale, D2000-0488 (WIPO July 10, 2000) (stating that while “Snooze is an
integral part of Complainant’s trademark registrations…this does not entitle
the Complainant to protection for that word alone”). However, here Complainant has shown legal rights to the mark and
use in commerce prior to Respondent’s registration of the domain name and
Complainant should prevail.
However, the Panel must address under
this section whether or not Respondent’s use of the disputed domain name
constitutes a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i). If that were so, Respondent could prevail on that issue and defeat
Complainant’s claim. See Modern Props, Inc. v. Wallis, FA
152458 (Nat. Arb. Forum June 2, 2003) (finding that respondent’s operation of a
bona fide business of online prop rentals for over two years was evidence that
respondent had rights or legitimate interests in the disputed domain name); see
also Scholastic Inc. v. Master Games Int’l, Inc., D2001-1208 (WIPO Jan. 3,
2002) (finding that respondent’s use of the disputed domain name for a website
regarding chess tournaments, particularly because the domain name appropriately
described both the target users of respondent’s services and the nature of
respondent’s services, was a bona fide use of the domain name); see also
Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13,
2001) (“Respondent is using the domain <groceryoutlet.com> for a website
that links to online resources for groceries and similar goods. The domain is
therefore being used to describe the content of the site,” as evidence that
respondent was making a bona fide offering of goods or services with the
disputed domain name.). Here, the best
evidence before the Panel is Complainant’s allegations that Respondent knew of
Complainant’s rights and legitimate interests in the legal mark contained
within the disputed domain name.
Respondent has done nothing to provide the Panel with any proof to the
contrary. On the face of the documents,
Respondent’s careful misspelling contained within the domain name permits the
inference that Respondent knew of Complainant’s interest in the service mark
used in the disputed domain name.
The Panel takes as true Complainant’s
allegations and proof, which is appropriate where Respondent fails to come
forward to establish rights and legitimate interests in the disputed domain
name prior to Respondent’s registration and use of the disputed domain name
that contained Complainant’s protected COOLLAWYER and COOLLAWYER.COM marks,
with one deleted letter. But see Warm Things, Inc., Inc. v. Weiss, D2002-0085 (WIPO Apr.18,
2002) (finding that respondent had rights or legitimate interests in a domain
name when its registration of that domain name occurred before complainant had
established rights in its alleged mark); see also Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum
Feb. 19, 2001) (finding that respondent has rights and legitimate interests in
the domain name where “Respondent has persuasively shown that the domain name
is comprised of generic and/or descriptive terms, and, in any event, is not
exclusively associated with Complainant’s business”).
Complainant made the necessary showing of rights and
legitimate interests pursuant to ICANN
Policy ¶ 4(a)(ii) and Respondent did not controvert it.
Complainant
argues that Respondent registered the disputed domain name <coolawyer.com> in
bad faith and that the domain name causes Internet users to mistakenly believe
that the domain name is affiliated with Complainant. Complainant asserts that the initial user confusion that the
domain name causes is evidence that Respondent registered and used the domain
name in bad faith purusant to Policy ¶ 4(a)(iii). See Reuters
Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding
that a domain name which differs by only one letter from a trademark has a
greater tendency to be confusingly similar to the trademark where the trademark
is highly distinctive); see also Red
Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that
respondent’s expected use of the domain name <redbull.org> would lead
people to believe that the domain name was connected with complainant, and thus
is the equivalent to bad faith use); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum
Nov. 7, 2000) (“Just as the employment of a well-known business name for no
particularly good reason undermines any claim to legitimate interest, so it may
also support an inference of a bad-faith attempt to use the name to harass or
exploit its legitimate owner…Respondent, if he ever was serious in the
registration of this domain name, must have relied on the good chance he would
attract [Complainant’s] customers”).
Furthermore,
Complainant contends that Respondent registered and used the domain name in bad
faith pursuant to Policy ¶ (b)(iii)
because the domain name offers legal services similar to those offered by
Complainant. See Surface Prot. Indus., Inc. v. Webposters,
D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive
relationship between complainant and respondent, respondent likely registered
the contested domain name with the intent to disrupt complainant's business and
create user confusion); see also Lubbock
Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23,
2000) (concluding that domain names were registered and used in bad faith where
respondent and complainant were in the same line of business in the same market
area); see also 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).
Complainant
also alleges that Respondent’s registration of the disputed domain name, a
domain name that incorporates Complainant’s mark and deviates only with the
deletion of the letter “l,” suggests that Respondent knew of Complainant’s
rights in the COOLLAWYER and COOLLAWYER.COM marks.
The
Panel finds that the proof before the Panel permits the inference that
Respondent chose the disputed domain name based on the distinctive qualities of
Complainant’s mark and therefore registered the domain name in bad faith
pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb.
Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when
Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively”); see also Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed
on the Principal Register of the USPTO, a status that confers constructive
notice on those seeking to register or use the mark or any confusingly similar
variation thereof”).
Complainant
met the burden of proving bad faith registration and use by setting out facts
and circumstances that permit inferences in support of Complainant’s
allegations. The Panel is aware that other Panels have found that general
allegations and a failure to show intent defeat a claim of bad faith. See 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 respondent
acted in bad faith); see also 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 respondent intended to divert business from complainant or
for any other purpose prohibited by UDRP Rules); see also White Pine Software, Inc. v. Desktop
Consulting, Inc., D2000-0539 (WIPO Aug. 31, 2000) (declining to transfer
the domain name where a full factual record has not been presented to the Panel
such that a conclusive determination can be made regarding the parties’
respective claims to the contested domain name). However, here, Complainant made the necessary prima facie
showing that Respondent, a lawyer, knew of Complainant’s service mark and
purposefully filed a domain name carefully misspelled to opportunistically
capitalize on Complainant’s mark.
Further, Respondent knew of the Complaint and had earlier notice by the
cease and desist letter that Complainant was challenging the legitimacy of the
disputed domain name. Yet, Respondent
offered no proof to controvert Complainant’s prima facie showing.
Complainant made the necessary showing of bad faith
registration and use pursuant to ICANN Policy ¶ 4(a)(iii).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly,
it is Ordered that the <coolawyer.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panel Chair
Anne M. Wallace,
Q.C., Kevin H. Fortin, Esq., Panelists
Dated: March 15,
2005
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