Liberty Counsel v. Fei Zhu
Claim Number: FA1006001332473
Complainant is Liberty
Counsel (“Complainant”), represented by Anita Staver, of Liberty Counsel,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <libertycounsel.com>, registered with Rebel.com Corp.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2010.
On June 29, 2010, Rebel.com Corp. confirmed by e-mail to the National Arbitration Forum that the <libertycounsel.com> domain name is registered with Rebel.com Corp. and that Respondent is the current registrant of the name. Rebel.com Corp. has verified that Respondent is bound by the Rebel.com Corp. 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 July 1, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 2010 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@libertycounsel.com by e-mail. Also on July 1, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 26, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <libertycounsel.com> domain name is identical to Complainant’s LIBERTY COUNSEL mark.
2. Respondent does not have any rights or legitimate interests in the <libertycounsel.com> domain name.
3. Respondent registered and used the <libertycounsel.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Liberty Counsel, is a
Respondent, Fei Zhu, registered the <libertycounsel.com> domain name on October 23, 1999. Respondent’s disputed domain name resolves to a website that displays various third-party links to both competing and unrelated websites to Complainant.
Complainant submits
evidence to show that Respondent has been the respondent in prior UDRP
proceedings and has been ordered to transfer the domain names to the respective
trademark holders. See AOL,
Inc. v. Zhu, FA 1300077 (Nat. Arb. Forum Feb. 9, 2010); see also W.W. Grainger, Inc. v. Zhu, FA
1320492 (Nat. Arb. Forum June 3, 2010);
see also
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.
The Panel finds that Complainant has established rights in
its LIBERTY COUNSEL mark under Policy ¶ 4(a)(i) through its trademark
registrations with the USPTO (e.g.,
Reg. No. 2,287,617 issued October 19, 1999).
See Reebok Int’l Ltd. v.
Complainant contends that Respondent’s <libertycounsel.com>
domain name is identical to Complainant’s LIBERTY COUNSEL mark because the
domain name contains Complainant’s entire mark, absent the space between the
terms, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the disputed domain name
containing Complainant’s entire mark, while deleting the space between the
terms of the mark, in addition to the gTLD “.com” is identical to Complainant’s
LIBERTY COUNSEL mark under Policy ¶ 4(a)(i).
See
Therefore, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not hold rights and legitimate interests in the <libertycounsel.com> domain name. Complainant is required to produce a prima facie case in support of such allegations to transfer the burden of proof to Respondent to show it does have rights and legitimate interests in the domain name under Policy ¶ (c). See 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, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). The Panel finds that Complainant has produced a prima facie case sufficient to shift the burden of proof to Respondent. However, because Respondent has failed to respond to these proceedings the Panel finds that it may assume as true the allegations in the Complaint. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). Nevertheless, the Panel will continue to evaluate the evidence on record to determine whether Respondent has rights and legitimate interests in the <libertycounsel.com> domain name pursuant to Policy ¶ 4(c).
Complainant asserts that it has not granted Respondent permission or license to use its LIBERTY COUNSEL mark in the disputed domain name and that Respondent is not commonly known by the <libertycounsel.com> domain name. The WHOIS information for the <libertycounsel.com> domain name identifies “Fei Zhu” as the registrant and no further evidence has been presented showing that Respondent is commonly known by the <libertycounsel.com> domain name. Therefore, the Panel finds that under Policy ¶ 4(c)(ii) Respondent is not commonly known by the disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); 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.”).
Complainant has submitted screen shots of the website that resolves from the <libertycounsel.com> domain name. Complainant argues that the screen shots show that Respondent is maintaining a website that displays various third-party hyperlinks to both competing and unrelated websites. Complainant alleges that such use is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel agrees and finds that Respondent’s use of the disputed domain name to host a web directory of third-party links to both competing and unrelated websites is 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 under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a 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 pursuant to Policy ¶ 4(c)(iii)).
Therefore, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has
submitted evidence to show that Respondent has been the respondent in prior
UDRP proceedings and has been found to have registered the respective domain
names in bad faith and ordered to transfer the domain names to the respective
trademark holders. See AOL,
Inc. v. Zhu, FA 1300077 (Nat. Arb. Forum Feb. 9, 2010); see also W.W. Grainger, Inc. v. Zhu, FA
1320491 (Nat. Arb. Forum June 3, 2010);
see also
Complainant alleges that Respondent is using the disputed domain name to operate a hyperlink directory website that displays various third-party links to other websites. Complainant argues that some of the links displayed on Respondent’s website are for Complainant’s competitors in the public interest legal field. While Complainant did not make an argument under Policy ¶ 4(b)(iii), the Panel finds that Respondent’s redirection of Internet users to Complainant’s competitors is evidence that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also 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).”).
Lastly, Complainant argues that Respondent receives click-through fees associated with the hyperlinks and advertisements displayed on Respondent’s website. Complainant contends that Respondent is therefore attracting Internet users to its website for commercial gain, and that such use is further evidence of Respondent’s bad faith registration and use. The Panel agrees and finds that Respondent’s use of the disputed domain name to display various third-party links, presumably for financial gain, is further evidence that Respondent registered and is using the <libertycounsel.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Therefore, the Panel finds that
Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <libertycounsel.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 5, 2010
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