national arbitration forum

 

DECISION

 

Stokes Lawrence, P.S. v. Keyword Marketing, Inc.

Claim Number: FA0701000894224

 

PARTIES

Complainant is Stokes Lawrence, P.S. (“Complainant”), represented by Kathleen T. Petrich, of Stokes Lawrence, P.S., 800 Fifth Ave., Suite 4000, Seattle, WA 98104-3179.  Respondent is Keyword Marketing, Inc. (“Respondent”), P.O. Box 556, Main Street, Charlestown, West Indies KN.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <stokeslawrence.com>, registered with Domaindoorman, LLC.

 

PANEL

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 22, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 24, 2007.

 

On January 23, 2007, Domaindoorman, LLC confirmed by e-mail to the National Arbitration Forum that the <stokeslawrence.com> domain name is registered with Domaindoorman, LLC and that Respondent is the current registrant of the name.  Domaindoorman, LLC has verified that Respondent is bound by the Domaindoorman, LLC 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, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 13, 2007 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@stokeslawrence.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 16, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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."  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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <stokeslawrence.com> domain name is identical to Complainant’s STOKES LAWRENCE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <stokeslawrence.com> domain name.

 

3.      Respondent registered and used the <stokeslawrence.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Stokes Lawrence, P.S., is a law firm in Seattle, Washington that has been providing legal services under the STOKES LAWRENCE mark since November 1997.  Complainant’s areas of law practice include commercial litigation, employment and labor, intellectual property, corporate and business, real estate, family, and trust and estate planning law.  Complainant’s office currently employs twenty-six attorneys.  Complainant’s business cards, letterheads, firm brochures, sponsorships, and promotional products all prominently display the STOKES LAWRENCE mark.  Complainant also maintains a website at the <stokeslaw.com> domain name.

 

Complainant holds a Washington state trademark registration for the STOKES LAWRENCE mark (Reg. No. 51,306 issued November 8, 2006) in connection with legal services.

 

Respondent’s <stokeslawrence.com> domain name, which it registered on October 23, 2005, resolves to a pay-per-click website with links to law firms that compete with Complainant.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has registered the STOKES LAWRENCE mark with the Washington Secretary of State’s office.  However, this registration does not predate Respondent’s registration of the <stokeslawrence.com> domain name on October 23, 2005.  Nevertheless, the Panel finds that under Policy ¶ 4(a)(i), Complainant need not own a trademark registration if it can demonstrate common law rights that predate Respondent’s registration of the disputed domain name.  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).

 

Complainant has continuously used the STOKES LAWRENCE mark since 1997 in connection with legal services.  Complainant’s law firm under the mark is well known in the Seattle area and promotes its mark on numerous goods.  As a result, the STOKES LAWRENCE mark has acquired secondary meaning in association with Complainant’s law firm and the Panel thus holds that Complainant has established common law rights in the mark under Policy ¶ 4(a)(i).  See Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years); see also Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had common law rights in the McMULLEN COVE mark because the complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark).

 

As the <stokeslawrence.com> domain name incorporates Complainant’s STOKES LAWRENCE mark in its entirety and merely removes the space between terms and adds the generic top-level domain “.com,” Respondent has failed to adequately differentiate the domain in dispute from Complainant’s mark.  Consequently, the Panel finds that the disputed domain name is identical to the mark pursuant to Policy ¶ 4(a)(i).  See Reichert, Inc. v. Leonard, FA 672010 (Nat. Arb. Forum May 24, 2006) (“The disputed domain names are identical to Complainant’s mark, but for the addition of a generic top-level domain suffix (“.com” or “.net”).”); see also Croat. Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000)  (finding that the domain name <croatiaairlines.com> is identical to the complainant's CROATIA AIRLINES trademark). 

 

The Panel finds that Complainant has proven this element of the Policy.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the <stokeslawrence.com> domain name.  Complainant must first make a prima facie case in support of its allegations.  The burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  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 Policy ¶ 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 Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant under Policy ¶ 4(c), the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name).

 

Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <stokeslawrence.com> domain name.  See Branco do Brasil S.A. v. Sync Tech., D2000-0727 (WIPO Sept. 1, 2000) (“By its default, Respondent has not contested the allegation . . . that the Respondent lacks any rights or legitimate interests in the domain name.  The Panel thus assumes that there was no other reason for the Respondent having registered <bancodobrasil.com> but the presumably known existence of the Complainant’s mark BANCO DO BRASIL”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).  However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Respondent has registered the domain name under the name “Keyword Marketing, Inc.,” and there is nothing in the record to suggest that Respondent is commonly known by the <stokeslawrence.com> domain name.  Thus, Respondent has not established rights or legitimate interests in the <stokeslawrence.com> domain name pursuant to Policy ¶ 4(c)(ii).  See The 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

Moreover, Respondent’s <stokeslawrence.com> domain name resolves to a commercial search engine with links to other law firms that compete with Complainant.  In Hale Prods., Inc. v. Hart Int’l Inc., FA 198031 (Nat. Arb. Forum Dec. 2, 2003), the panel found that the respondent had no rights or legitimate interests in the <jawsoflife.com> domain name because the respondent was diverting Internet users to the website of one of the complainant’s competitors.  Similarly, Respondent is diverting Internet users seeking Complainant’s legal services to other law firms providing competing services.  Respondent likely receives click-through fees for diverting consumers to these websites.  Therefore, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See The Royal Bank of Scot. Group plc v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).

 

The Panel finds that Complainant has proven this element of the Policy.

 

Registration and Use in Bad Faith

 

Respondent’s website at the <stokeslawrence.com> domain name displays links to competing law firms.  In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the Panel found that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using confusingly similar domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names.  Likewise, Respondent’s use of the contested domain name to promote competing law firms indicates that Respondent has registered and used the disputed domain name for the primary purpose of disrupting Complainant’s business in violation of Policy ¶ 4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

 

Respondent’s registration and use of the disputed domain name to divert Internet users to competing law firms also violates Policy ¶ 4(b)(iv), for Respondent is taking advantage of the confusing similarity between the <stokeslawrence.com> domain name and Complainant’s mark in order to potentially profit from Internet users who click on the links for competing law firms.  Such use represents bad faith pursuant to Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees); see also BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business.  The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site.  There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).

 

The Panel finds that Complainant has proven this element of the Policy.

 

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 <stokeslawrence.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  February 27, 2007

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum