Key Professional Media, Inc. v. Hong Jiang
Claim Number: FA0808001220899
Complainant is Key Professional Media, Inc. (“Complainant”), represented by Barbara
J. Grahn, of Oppenheimer Wolff & Donnelly LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mysuperlawyers.com>, registered with Enom, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 18, 2008.
On August 18, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <mysuperlawyers.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 August 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 18, 2008 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@mysuperlawyers.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 26, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mysuperlawyers.com> domain name is confusingly similar to Complainant’s SUPER LAWYERS mark.
2. Respondent does not have any rights or legitimate interests in the <mysuperlawyers.com> domain name.
3. Respondent registered and used the <mysuperlawyers.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Key Professional Media, Inc., registered the SUPER LAWYERS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,433,073 issued March 6, 2001) for advertising and promotion of “service of others in the field of law by providing advertising in a periodical and via a global computer information network.” Complainant has also registered and maintains the <superlawyers.com> domain name.
Respondent’s <mysuperlawyers.com> domain name was registered on November 2, 2006. It resolves to a website containing only a list of links, each of which when clicked upon redirect Internet users to a third-party. Many of these third-parties offer information or otherwise that is related to the legal profession.
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 sufficiently established rights in the SUPER LAWYERS mark through registration with the USPTO pursuant to Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (“Complainant has submitted evidence of its registration of the AOL mark with the USPTO. The Panel finds that such evidence establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
The <mysuperlawyers.com> domain name contains
Complainant’s SUPER LAWYERS mark in its entirety preceded by the common word
“my” and followed by the generic top-level domain (“gTLD”) “.com.” The inclusion of a gTLD is typically
considered irrelevant to a Policy ¶ 4(a)(i)
analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain name for the purpose of determining whether it is
identical or confusingly similar).
Moreover, the addition of the common term such as “my” does not
distinguish a disputed domain name. See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied). Accordingly, the Panel finds that the
disputed domain name is confusingly similar to Complainant’s mark pursuant to
Policy ¶ 4(a)(i).
See ESPN, Inc.
v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000)
(finding that the “domain name MYSPORTSCENTER.COM registered by Respondent is
confusingly similar to Complainant’s SportsCenter mark”).
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii),
Complainant must first establish a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name. 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). The Panel finds that Complainant has met this
threshold and that the burden is accordingly shifted to Respondent to prove
that it does have rights or legitimate interests in the disputed domain
name. See F. Hoffmann-La Roche AG v.
Di Salvatore, D2006-1417 (WIPO Feb. 1,
2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the
burden of proof shifts from the Complainant to the Respondent once the
Complainant has made out a prima facie case that the Respondent has no rights
or interests in the domain names.”).
Respondent has failed to reply to the Complaint. Therefore, the Panel may presume that
Respondent lacks rights and legitimate interests in the disputed domain
name. Nonetheless, the Panel will
proceed to examine the record in consideration of the elements listed under
Policy ¶ 4(c). See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO
June 20, 2000) (“By not submitting a response, Respondent has failed to invoke
any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any
rights or legitimate interests in the domain name”); see also Vanguard Group, Inc.
v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that
because Respondent failed to submit a Response, “Complainant’s submission has
gone unopposed and its arguments undisputed.
In the absence of a Response, the Panel accepts as true all reasonable
allegations . . . unless clearly contradicted by the evidence.”).
The WHOIS information for the <mysuperlawyers.com> domain name lists Respondent under the alias “Hong Jiang.” There is no other information in the record that gives any indication that Respondent is or ever was commonly known by the disputed domain name. Without any additional information, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).
The <mysuperlawyers.com> domain name resolves
to a website featuring nothing but a series of links. These links redirect Internet users to a
variety of third-parties, many of whom who offer information or services in the
legal profession. The Panel concludes
that this use is competitive and 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 Constellation Wines
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(ii).
The disputed domain name resolves to a list of third-party
links. Many of these third-parties
provide information or services related to the legal profession. The Panel finds this use to be competitive
and disruptive to Complainant’s business.
Consequently, the Panel finds that Respondent registered and is using
the <mysuperlawyers.com> domain name in bad faith pursuant to
Policy ¶ 4(b)(iii).
See St. Lawrence Univ. v. Nextnet
Tech, FA 881234 (Nat. Arb. Forum
Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users
seeking information on Complainant’s educational institution to competing
websites, Respondent has engaged in bad faith registration and use pursuant to
Policy ¶ 4(b)(iii).”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Additionally, the Panel may presume that these links provide
Respondent financial compensation through some version of referral fees. Accordingly, the Panel considers this to be
further evidence of Respondent’s bad faith registration and use of the <mysuperlawyers.com>
domain name pursuant to Policy ¶ 4(b)(iv).
See
The Panel concludes that Complainant has sufficiently established Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <mysuperlawyers.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: October 10, 2008
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