national arbitration forum

 

DECISION

 

Parker Waichman LLP v. N/A

Claim Number: FA1410001584806

 

PARTIES

Complainant is Parker Waichman LLP (“Complainant”), New York, USA.  Respondent is N/A (“Respondent”), represented by Sara Jane Carter, Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <yourlawyerfl.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as panelists in this proceeding.

 

The Hon. Richard D. Rosenbloom J. (ret.), the Hon.John Upchurch J. (ret.) and Debrett G. Lyons.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 14, 2014; the National Arbitration Forum received payment on October 14, 2014.

 

On October 16, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <yourlawyerfl.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 October 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 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@yourlawyerfl.com.  Also on October 21, 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.

 

A timely Response was received and determined to be complete on November 10, 2014.

 

Complainant made Additional Submissions on November 17, 2014 which the Forum found to be compliant with Supplemental Rule 7.  On November 24, 2014 Respondent also made Additional Submissions which the Forum found to be compliant with Supplemental Rule 7.

 

On November 19, 2014, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed The Hon. Richard D. Rosenbloom J. (ret.), the Hon. John Upchurch J. (ret.) and Debrett G. Lyons (chair) as the Administrative Panel (the "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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant

Complainant asserts trademark rights in YOURLAWYER and YOURLAWYER.COM and alleges that the disputed domain name is confusingly similar to its trademarks. 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

B.  Respondent

Respondent broadly denies those claims and submits that it registered a domain name consisting of descriptive terms and a geographical indicator in good faith without knowledge of Complainant’s business and trademarks for use with a business associated with the dictionary meaning and the ordinary geographical connotation of the terms. 

 

Respondent submits that Complainant’s potential clients are unlikely to confuse Respondent’s business with Complainant’s because Respondent’s firm is a small, three-attorney firm with its primary offices in North Florida nearly 300 miles away from Complainant’s nearest office.

 

Additionally, Complainant deals mainly in tort law, while Respondent’s practice is primarily commercial, criminal and family litigation.

 

Further, Respondent argues that the National Arbitration Forum has previously denied a complaint brought by Complainant for transfer the domain name <yourlawyer.tv> and suggests that the Panel here should adopt the findings in that case.[i]

 

Finally, Respondent asserts that Complainant has engaged in reverse domain name hijacking since it failed to provide any evidence of Respondent’s bad faith registration or use directed towards Complainant.  Instead, Complainant seeks to have the domain name transferred to benefit from Respondent’s goodwill and reputation in Florida.

 

C. Additional Submissions

As indicated above, both parties made Additional Submissions which the Panel has taken into account in reaching its decision and which are referred to as required in the following Discussion.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.    Complainant provides legal services under the registered trademarks YOURLAWYER and YOURLAWYER.COM;

2.    Complainant owns United States Federal Trademark Reg. No. 3,510,267 registered September 30, 2008 for YOURLAWYER and Reg. No. 3,210,791 registered February 20, 2007 for YOURLAWYER.COM;

3.    The disputed domain name was registered on February 1, 2013;

4.    The domain name resolves to a website which offers legal services;

5.    There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.

 

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."

 

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

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights.  It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.[ii]  That general statement requires qualification in this instance.  Although Complainant provides evidence of its United States Patent and Trademark Office (“USPTO”) registrations for its trademarks, it is only the trademark YOURLAWYER.COM which sits on the Principal Register and only that trademark to which Panel has further regard. [iii]  Panel is satisfied that Complainant has trademark rights in that expression.

 

Panel is also satisfied the disputed domain name is confusingly similar to that trademark.  In terms of comparing domain name with trademark, it is undisputed that the gTLD, “.com” is non-distinctive.[iv]  That logic applies to both domain name and trademark and so the comparison resolves to YOURLAWYER and “yourlawyerfl”.  The difference is inconsequential in terms of confusing similarity since a great percentage of internet users would readily perceive the letters, “fl”, as the accepted shorthand and commonly used official code for the United States state of Florida.[v]

 

Respondent argues that the domain name incorporates common dictionary terms.  Panel notes that paragraph 4(a)(i) of the Policy has been consistently read such that a claim that the trademark or the disputed domain name consists of generic terms is a matter best left for consideration under paragraph 4(a)(ii) and/or (iii). [vi]  Panel follows that practice.

 

Further, the distinctions Respondent attempts to draw in terms of the parties’ practice locations and practice areas of law are irrelevant to the determination of confusing similarity under the Policy; paragraph 4(a)(i) concerns itself only with the question of whether the domain name and the trademark are themselves so similar that confusion is likely.  Moreover, proof of actual confusion is not required (albeit that in this case there is some evidence that there has in actual fact been confusion).

 

Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[vii]

 

The publicly available WHOIS information identifies Respondent as “N/A” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name.  There is no evidence that Respondent has any registered trademark rights.  There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.

 

Panel finds that the Complaint carries sufficient information to establish a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.  In terms of paragraph 4(c) of the Policy, that would require Respondent to show either that before it had notice of the dispute it had used the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services (para 4(c)(i)) or that it is making fair use of the domain name without intending to misleadingly divert consumers for commercial gain (para 4(c)(iii)).

 

Respondent explains that the disputed domain name employs descriptive terms to inform consumers that the firm offers legal services to clients and potential clients in Florida.  Respondent states that it created the disputed domain name to ensure that their clients understood Respondent’s loyalty and heritage of being Florida attorneys.  Respondent goes on to say that it sought to portray an impression of a firm that serves individuals with personalized services - the firm would be YOUR lawyer.

 

Panel notes here that the issue is not whether Respondent has a legitimate explanation for choosing the domain name, but whether it has used the domain name or a name corresponding to the domain name in connection with a bona fide offering of services. 

 

Respondent submits that it has rights and legitimate interests in the domain name because it is comprised of ordinary words with a recognized geographical indicator.  Whilst numerous panels have found that common, generic words are available for domain name registration on a first come, first served basis, that simple statement is not a comprehensive formulation of the way in which the Policy has been applied.  In particular, it has been routinely held that there is no legitimacy where the domain name collides with the registered trademark rights of another and where use is in the same field of business.  The mere descriptiveness of a domain name does not create a legitimate interest in the domain name if it corresponds with the prior trademark rights of another. 

 

In the absence of any countervailing circumstances such as use of the domain name prior to establishment of Complainant’s trademark rights[viii], the Panel therefore finds that Respondent’s actions do not constitute use of the domain name in connection with a bona fide offering of services and so do not bring Respondent under the protection of paragraph 4(c)(i) of the Policy.

 

Nor, for similar reasons, does Panel find that Respondent is making fair use of the domain name for the purposes of paragraph 4(c)(iii).  Although the words “your lawyer” are descriptive there can barely be “fair use” when the expression is the subject of Complainant’s Federal trademark rights.[ix]

 

Panel finds that Respondent has not shown that it falls within paragraphs 4(c)(i) or (iii) of the Policy and has not otherwise shown a right or legitimate interest in the domain name.

 

Complainant has satisfied the second element of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith. 

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.

 

The four specified circumstances are:

 

‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’

 

Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv), above.  Panel has already found the domain name to be confusingly similar to the trademark, YOURLAWYER.COM.  The resolving website offers legal services and so there is likely confusion as to source.  Complainant alleges that clients in Florida can easily be confused and believe that Respondent is affiliated with Complainant. Moreover, there is actual proof of confusion.

 

In its Additional Submissions, Respondent made much of the claim that Complainant had not directly proven that Respondent intentionally acted in the manner described by paragraph 4(b)(iv).  Panel notes that the word “intentionally” in paragraph 4(b)(iv) has been consistently read so as not to require mens rea; it is enough if the actions are likely to cause the described consequences.

 

Respondent’s business exists for commercial gain and it is entirely reasonable to assume that confusion would lead in one form or another to Respondent’s enrichment.  The words, “for commercial gain”, have been understood broadly.  Non-fiscal reward is included, as is the potential for future reward.  Further, Respondent may gain through any conduct that, because it harms Complainant, eventually benefits Respondent.  In that regard, panels often cite a complainant's loss in addition to a respondent's gain, finding it significant that while Internet users may become aware that the website they reached was not the (complainant's) website they were looking for, they may be satisfied with the content or services of the website they reached and may then abandon efforts to locate the original site, thereby indirectly causing Complainant commercial harm.

 

Panel finds that Complainant has established this third aspect of the Policy.

 

Reverse Domain Name Hijacking

No findings required.[x]

 

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

 

The Hon. Richard D. Rosenbloom J. (ret.)

The Hon. John Upchurch J. (ret.)

 Debrett G. Lyons

 Panelists