Traveling Coaches, Inc. v. Arpit / FindMind Analytics Pvt Ltd
Claim Number: FA1912001873740
Complainant is Traveling Coaches, Inc. (“Complainant”), represented by Amanda K. Greenspon of Munck Wilson Mandala, LLP, Texas, United States. Respondent is Arpit / FindMind Analytics Pvt Ltd (“Respondent”), represented by Pallavi Rao, India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <legalmind.tech>, registered with DOTSERVE 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 4, 2019; the Forum received payment on December 4, 2019.
On December 18, 2019, DOTSERVE INC. confirmed by e-mail to the Forum that the <legalmind.tech> domain name is registered with DOTSERVE INC. and that Respondent is the current registrant of the name. DOTSERVE INC. has verified that Respondent is bound by the DOTSERVE 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 December 23, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 13, 2020 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@legalmind.tech. Also on December 23, 2019, 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 January 13, 2020.
On January 16, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant is a consulting firm providing business management and strategic consulting services for law firms. Complainant has rights in the LEGALMIND mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,306,992 registered Oct. 10, 2017). The disputed domain name is confusingly similar to Complainant’s LEGALMIND mark. Respondent incorporates the mark in its entirety and adds the “.tech” generic top level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the disputed domain name as Respondent uses the disputed domain name to pass off as Complainant to confuse and mislead the public.
iii) Respondent registered and used the disputed domain name in bad faith as Respondent attempts to pass off as Complainant in an attempt to create a likelihood of confusion that Respondent is affiliated with Complainant. Respondent had actual knowledge of Complainant’s rights in the LEGALMIND mark due to the long standing use of the mark in commerce.
B. Respondent
i) Respondent assists businesses in achieving growth, transformation and fulfilling their business requirements with the utmost satisfaction. Respondent adopted the LEGALMIND mark in July 2018 and has been using the mark in commerce since then in relation to AI powered litigation research. Respondent has also applied for Indian Trade Marks for the LEGALMIND mark though the mark is still pending.
ii) Respondent is commonly known by the disputed domain name. Respondent uses the disputed domain name to make a bona fide offering of goods or services for legal services. Complainant has failed to show how Respondent’s use of the disputed domain name creates confusion for Internet users. Respondent denies it had knowledge of Complainant’s trademark at the time of registration.
1. The disputed domain name was registered on July 10, 2019.
2. Complainant has established rights in the LEGALMIND mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,306,992 registered Oct. 10, 2017).
3. Respondent has been using the LEGAL MIND mark in commerce in relation to AI powered litigation research.
4. Social media pages show the number of followers who know and recognize Respondent's LEGAL MIND brand.
5. Multiple lawyers and law firms in India subscribe to Respondent for the use of the disputed domain name and Respondent's LEGAL MIND mark.
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.
Complainant claims to have rights in the LEGALMIND mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant has provided the Panel with a copy of its USPTO registration information for the LEGALMIND mark (e.g. Reg. No. 5,306,992 registered Oct. 10, 2017). Therefore, the Panel finds that Complainant has adequately shown rights in the LEGALMIND mark per Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is confusingly similar to Complainant’s LEGALMIND mark. Registration of a domain name that contains a complainant’s mark in its entirety and adds a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (“we conclude from a review of the record that Respondent’s <mellosolar.com> domain name is substantively identical and confusingly similar to Complainant’s MELLO SOLAR mark.”). Complainant argues that Respondent incorporates the mark in its entirety and adds the “.tech” gTLD. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name as fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use; instead, Respondent uses the disputed domain name to pass off as Complainant to confuse and mislead the public.
However, the Panel observes that Complainant has failed to provide any support for their contention that Respondent is passing off as Complainant. Therefore, the Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See High Adventure Ministries v. JOHN TAYLOE / VOICE OF HOPE, FA 1737678 (Forum Aug. 9, 2017) (holding that a complainant’s failure to satisfactorily meet its burden suggests respondent has rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also JJ206, LLC v. Erin Hackney, FA 1629288 (Forum Aug. 25, 2015) (finding that a respondent may defeat a complainant’s established case by showing it has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services).
On the other hand, Respondent claims to be commonly known by the disputed domain name. Doing business under a disputed domain name may be evidence that Respondent has rights and legitimate interests in the disputed domain name. See Navigant Consulting, Inc. v Bradley Shive / Navigant Technologies, FA 1587953 (Forum Dec. 17, 2014) (finding that respondent had rights and legitimate interests in the <naviganttechnologies.com> and <naviganttech.com> domain names because respondent had provided evidence of doing business as “Navigant Technologies” “before Complainant’s registration of its NAVIGANT marks and before receiving a notice of [the domain] dispute”). Respondent has provided the Panel with information showing that Respondent has been using the disputed domain name in connection with their business prior to this dispute. Respondent also provides social media pages that show the number of followers who know and recognize the brand. Therefore, the Panel finds that Respondent has shown that it is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent further argues that it is making a bona fide offering of goods or services. Evidence that a respondent has used a disputed domain name for a demonstrable use in connection with a bona fide offering of goods or services may show that respondent has legitimate rights in the disputed domain name per Policy ¶¶ 4(c)(i) or (iii). See SPS Commerce, Inc. v. Registration Private / Domains By Proxy, LLC, FA 1724583 (Forum May 24, 2017) (“Indeed, much of Respondent’s evidence goes beyond demonstrable preparation and establishes actual use of the Domain Name in connection with a bona fide offering of e-commerce services. In addition to the branding focus groups, marketing expenditure, and developing case studies and other digital content, Respondent actually offered e-commerce services via the Domain Name website… The Panel thus finds that Respondent has rights and legitimate interests in the Domain Name.”).
Respondent has listed and provided services that it offers under the disputed domain name. Respondent contends that it has been using the LEGAL MIND mark in commerce in relation to AI powered litigation research. Respondent also states that multiple lawyers and law firms in India subscribe to Respondent for the use of the disputed domain name and LEGAL MIND mark. As such, the Panel finds that Respondent has adequately shown it has made a bona fide offering of goods or services per Policy ¶¶ 4(c)(i) or (iii).
Therefore, the Panel concludes that Respondent has rights or legitimate interests in the disputed domain name.
As the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(ii), the Panel declines to analyze the other element (registration and use in bad faith) of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <legalmind.tech> domain name REMAIN WITH Respondent.
Ho Hyun Nahm, Esq., Panelist
Dated: January 23, 2020
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