West Publishing Corporation v. Robert Fritz / Fritz Law Firm
Claim Number: FA1205001444236
Complainant is West Publishing Corporation (“Complainant”), represented by Bradley J. Walz of Winthrop & Weinstine, P.A., Minnesota, USA. Respondent is Robert Fritz / Fritz Law Firm (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <superlawyers.us>, registered with GoDaddy.com.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 15, 2012; the National Arbitration Forum received a hard copy of the Complaint on May 16, 2012.
On May 16, 2012, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <superlawyers.us> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 23, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 12, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 15, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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
1. Complainant has rights in the SUPER LAWYERS mark which it uses in connection with a variety of goods and services related to legal directories;
2. Complainant owns trademark registrations for the SUPER LAWYERS mark (e.g., Reg. No. 2,433,073 registered March 6, 2001) with the United States Patent and Trademark Office (“USPTO”);
3. The <superlawyers.us> domain name is identical to the SUPER LAWYERS mark;
4. Respondent does not have rights or legitimate interests in the <superlawyers.us> domain name;
5. The <superlawyers.us> domain name resolves to a website which displays click-through, revenue-generating links to legal goods and services;
6. Respondent’s registration of the <superlawyers.us> domain name prevents Complainant from registering its SUPER LAWYERS mark in a domain name;
7. Prior to its registration and use of the <superlawyers.us> domain name, Respondent had constructive and/or actual knowledge of Complainant’s rights in the SUPER LAWYERS mark.
B. Respondent
Respondent did not submit a Response.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 or is being used in bad faith.
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.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant argues that it has rights in the SUPER LAWYERS mark which it uses in connection with goods and services related to legal directories. Complainant asserts that it owns registrations for the SUPER LAWYERS mark (e.g., Reg. No. 2,433,073 registered March 6, 2001) with the USPTO. Therefore, the Panel finds that Complainant has rights in the SUPER LAWYERS mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant contends that the <superlawyers.us> domain name is identical to the SUPER LAWYERS mark. Complainant asserts that the added country-code top-level domain (“ccTLD”) “.us” is irrelevant for the purposes of determining whether a domain name is identical to a mark under Policy ¶ 4(a)(i). The disputed domain name also removes the space between the terms of the mark. The Panel finds that the elimination of spaces in a mark to incorporate the mark into a domain name is insubstantial and does not affect a Policy ¶ 4(a)(i) analysis. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark). The Panel finds that the addition of a ccTLD is similarly minor and does not negate a finding of confusing similarity. See Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Nat. Arb. Forum Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE DI KAPPA mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”). Therefore, the Panel finds that Respondent’s <superlawyers.us> domain name is identical to Complainant’s SUPER LAWYERS mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant does not assert or submit evidence to show that Respondent does not own a trademark or service mark registration that would encompass the disputed domain name. However, Respondent has not come forward with such information either. Therefore, the Panel finds that the record does not indicate that Respondent owns a trademark or service mark for the <superlawyers.us> domain name, thereby precluding a finding for Respondent under Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant contends that Respondent lacks rights and legitimate interests in the <superlawyers.us> domain name. One way for a complainant to demonstrate a lack of rights and legitimate interests is to provide the Panel with evidence in support of a claim that the respondent is not commonly known by a disputed domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). One way of evidencing this is to provide the WHOIS record for a disputed domain name and to assess the reflective nature (or lack thereof) of the domain name registrant listing to the domain name itself. 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 UDRP ¶ 4(c)(ii) does not apply). While Complainant makes no express arguments regarding whether Respondent is commonly known by the <superlawyers.us> domain name, Complainant attaches the WHOIS record for the <superlawyers.us> domain name. The <superlawyers.us> domain name’s WHOIS record lists “Robert Fritz / Fritz Law Firm” as the domain name registrant, neither of which is shared with the <superlawyers.us> domain name. The Panel finds that Respondent is not commonly known by the <superlawyers.us> domain name pursuant to Policy ¶ 4(c)(iii).
Complainant asserts that Respondent’s use of the <superlawyers.us> domain name is further evidence of a lack of rights and legitimate interests. Complainant alleges that the <superlawyers.us> domain name resolves to a website which hosts commercial links to legal services. The screenshot of the <superlawyers.us> domain name’s resolving website shows that these links are displayed under headings such as “Screen a Potential Client” and “Patent Attorney.” Panels have found that the display of competitive links is not a use of a disputed domain name that is protected under UDRP ¶¶ 4(c)(i) and 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 UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent’s use of the <superlawyers.us> domain name is neither a Policy ¶ 4(c)(ii) bona fide offering of goods or services nor a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use.
Complainant has proven this element.
Complainant contends that Respondent registered and is using the <superlawyers.us> domain name in bad faith. Complainant asserts that Respondent’s bad faith is evident due to Respondent’s attempt to prevent Complainant from registering its SUPER LAWYERS mark in a domain name because the <superlawyers.us> domain name is identical to the SUPER LAWYERS mark. Respondent has prevented Complainant from registering its mark in a domain name, and engaged in a pattern of such conduct that the Panel finds bad faith pursuant to Policy ¶ 4(b)(ii). See Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to UDRP 4(b)(ii).”). Alternatively, the Panel finds that Complainant fails to address the fact that it has many domain names reflecting the SUPER LAWYERS mark and that based upon Complainant’s own domain name registrations that it has not been prevented from reflecting its mark in a domain name.
Complainant contends that Respondent registered and began using the <superlawyers.us> domain name with constructive and/or actual knowledge of Complainant’s rights in the SUPER LAWYERS mark. Complainant contends that Respondent’s registration of an identical domain name is evidence that Respondent had actual knowledge of Complainant’s rights in the SUPER LAWYERS mark and that Complainant’s trademark registrations give Respondent at least constructive notice. Actual knowledge of a complainant’s rights in a mark is evidence of bad faith. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the SUPER LAWYERS mark prior to its registration of the <superlawyers.us> domain name, and finds Respondent registered and is using the <superlawyers.us> domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <superlawyers.us> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: June 21, 2012
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