Stokes Lawrence, P.S. v. Keyword Marketing, Inc.
Claim Number: FA0701000894224
Complainant is Stokes Lawrence, P.S. (“Complainant”), represented by Kathleen
T. Petrich, of Stokes
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <stokeslawrence.com>, registered with Domaindoorman, LLC.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
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
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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.
Complainant, Stokes Lawrence, P.S., is a law firm in
Complainant holds a
Respondent’s <stokeslawrence.com>
domain name, which it registered on
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.
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
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
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
The Panel finds that Complainant has proven this element of the Policy.
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
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
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
The Panel finds that Complainant has proven this element of the Policy.
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
The Panel finds that Complainant has proven this element of the Policy.
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
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