LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw
Claim Number: FA1304001496334
Complainant is LawyerLocate.ca Inc (“Complainant”), represented by Garry J. Wise of Wise Law Office, Ontario, Canada. Respondent is J Kirby Inwood / CanLaw (“Respondent”), Ontario, Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lawyerlocate.info> and <lawyerlocate.biz> (“the Domain Names”), registered with Name.com LLC.
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.
Alan L Limbury as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 24, 2013. The National Arbitration Forum received payment on April 29, 2013.
On April 26, 2013, Name.com LLC confirmed by e-mail to the National Arbitration Forum that the Domain Names are registered with Name.com LLC and that Respondent, J Kirby Inwood, is the current registrant of the Domain Names. Name.com LLC has verified that Respondent is bound by the Name.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 May 1, 2013 the Forum notified Complainant of certain deficiencies in the Complaint and gave Complainant 5 calendar days in which to file an Amended Complaint. On May 6, 2013 Complainant filed an Amended Complaint.
On May 7, 2013, in conformity with paragraph 2(a) of ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (“the Rules”), the Forum served the Amended Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 2013 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@lawyerlocate.info and postmaster@lawyerlocate.biz. Also on May 7, 2013, 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 May 28, 2013.
On June 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Alan L Limbury as Panelist.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
A. Complainant asserts the following:
Complainant is incorporated in Canada. On June 5, 2002, it changed its name from 4051131 Canada Inc. to LawyerLocate.ca Inc., having registered the domain name <lawyerlocate.ca> on March 3, 2002.
Since its inception, through its domain name <lawyerlocate.ca>, Complainant has provided and continues to provide a directory of Canadian lawyers, a lawyer referral service to the Canadian public and a platform for legal professionals to market and publicize their services to the online community-at-large.
Complainant has had lawful, exclusive and undisputed ownership and use of the trade name and mark LAWYERLOCATE.CA since 2002. In addition to registering the mark, Complainant has acquired common law rights and established significant recognition of its national brand through continuous, exclusive and uninterrupted use of that mark in association with its website at <www.lawyerlocate.ca> and its bricks-and-mortar enterprise, LawyerLocate.
In the context of a trademark used as the domain name of a website in Canada, use may be established through an act as simple as accessing the website. This principle was enunciated in the case of HomeAway.com, Inc. v. Hrdlicka, 2012 FC 1467. At paragraph 22 the court stated “I find, therefore, that a trade-mark which appears on a computer screen website in Canada, regardless where the information may have originated from or be stored, constitutes for Trade-Marks Act purposes, use and advertising in Canada.”
Respondent owns and operates a competing online Canadian lawyer referral service through the website <canlaw.com>. The Domain Names, which Respondent registered on March 13, 2008, have no independent content and operate solely to redirect unsuspecting visitors to the <canlaw.com> website. They exist solely to trick members of the public who seek Complainant’s services into utilizing Respondent’s competing services. Hence damaging confusion may emerge in the public mind as to whether there is a formal commercial connection between the parties, when there is no such connection.
This is of specific concern to Complainant because Respondent’s business has been subjected to numerous complaints, including allegations of fraud and illegal activity. Respondent is well-documented as a rogue organization within Canada’s legal marketing community. Respondent’s business by its nature is unsavory: Respondent routinely sends e-mail messages littered with derogatory and offensive comments to the recipient, regardless of who that recipient may be. Respondent’s business has been subject to an advisory memorandum by the Law Society of Upper Canada, informing the reader that “in order to avoid the possibility of abusive comments. . . the Law Society suggests that lawyers not reply to any e-mail or other communications from CanLaw.” Respondent and his business are especially known for targeting women and subjecting them to harassment and offensive commentary that is vulgar and abusive. Respondent and his toxic reputation are in themselves evidence that the Domain Names are being used illegitimately.
The Domain Names are virtually identical and are confusingly similar to Complainant’s mark. Respondent has no rights or legitimate interests in respect of the Domain Names, which were registered and are being used in bad faith.
As to legitimacy, Respondent has never been known by the trade name and mark LAWYERLOCATE [sic] nor by either of the Domain Names and is not authorized to use Complainant’s mark. Respondent’s use of the Domain Names is clearly commercial. Complainant has not authorized or permitted Respondent to use its mark in domain names.
There is evidence (exhibited to the Complaint) that Respondent made a solicitation for the “data mining” of the directory of lawyers on Complainant’s website. The exhibit shows that on October 22, 2007, “jki” chose a data mining programmer to:
“spider and list in a csu spreadsheet all the lawyers listed on the www.lawyerlocate.ca web site. Look under the heading Canadian Lawyers Organised by Geography on their main page. I need lawyer full name, firm name, address, phone fax email web site information.
I do not need areas of practice information.
I just need a good list of ALL the lawyers listed on this site so I can contact them by email or by fax or phone if they do not have email info posted.”
As to bad faith, Respondent’s conduct amounts to the tort of “passing off”. Respondent’s use of the Domain Names for commercial gain is likely to cause confusion among internet users as to Complainant’s endorsement of or affiliation with Respondent’s website.
In correspondence, Complainant says it sent a copy of the Complaint by email to Respondent when it was filed with the Forum.
B. Respondent asserts the following:
Complainant did not serve the complaint on Respondent. It came from the National Arbitration Forum. In correspondence prior to the filing of the Response, Respondent said this proves the Forum is biased.
The Complaint quotes from case law but the quotes cannot be counted on as accurate and must be discarded as inadmissible since no cases were supplied for reference as required by law in Canada.
Complainant does not have a trade mark or copyright registered for the term “lawyer locate.” The two words are common usage and cannot be trademarked.
CanLaw Inc and/or J Kirby Inwood are the owners of the Domain Names. Respondent’s business was founded and went online in 1996 and has become the leading lawyer referral service in Canada, with many satisfied customers. CanLaw uses the Domain Names to promote its lawyer directory to lawyers who can join free of charge and to promote CanLaw services from [sic] people who wish to locate lawyers or for lawyers who wish people can locate them. CanLaw has an excellent reputation built up over 18 years online. It deals with virtually every lawyer in Canada. “Many frequently tell us they would happily pay us much more than we charge for our services”.
Respondent has been harassed by Complainant for years. Complainant’s purpose is to steal Respondent’s domain names.
Respondent created/coined the term “lawyer locate” sometime in the 1990s as one of dozens of key word phrases Respondent invented and used to benefit from search engines. Complainant stole Respondent’s key words and used Respondent’s term “lawyer locate” for Complainant’s website.
Respondent believes Complainant goes to Respondent’s websites to steal the names of attorneys and post this information on Complainant’s own website. Because of complaints made to Respondent about Complainant, Respondent had a programmer collect the list of lawyers visible on Complainant’s website to compare the parties’ client lists. There were enough matches to prove that the similarity was not a coincidence. Respondent accuses Complainant of being a thief, liar and operator of a sleazy business operation.
As a test, Respondent offered to sell the Domain Names to Complainant after this complaint was received. Respondent had no intention of selling the Domain Names to Complainant. Respondent wanted to see if Complainant would respond. As expected it did not. Complainant would prefer to steal the Domain Names through this complaint process rather than acquire them honestly.
Respondent does not compete with Complainant “since that would mean lowering our standards and getting into their cesspool”. Respondent has plans to use the Domain Names in the United States and the United Kingdom in the near future. In the interim, Respondent either leaves them dormant (which is the case right now) or uses them to promote its directory of lawyers.
Complainant has established all the elements entitling it to transfer of the Domain Names.
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 the Domain Names should be cancelled or transferred:
(1) the Domain Names registered by Respondent are 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 Names; and
(3) the Domain Names have been registered and are being used in bad faith.
Procedural issues
As to Respondent’s submission that Complainant did not serve the Complaint on Respondent and that it came from the National Arbitration Forum, proving that the Forum is biased, paragraph 4(a) of the Rules requires the Provider (in this case the Forum) to forward the Complaint to the Respondent once the Complaint has been found by the Provider to comply with the Policy and the Rules. Accordingly, service by the Forum of the Amended Complaint on the Respondent in no way demonstrates bias.
Any failure of Complainant (which Complainant denies) to send a copy of the Complaint to Respondent, contrary to paragraph 3(b)(xii) of the Rules (which requires the Complainant to state that it has done so) is inconsequential in this case, since Respondent was able to file a full Response within the time allowed by the Rules following the commencement of the proceeding and does not appear nor does he claim to have suffered any detriment.
The corporate name of Complainant, LawyerLocate.ca Inc., registered in 2002, is not the same as a registered trademark. There is no evidence that Complainant has registered “lawyerlocate” or “lawyerlocate.ca” as a trademark.
Complainant claims common law trademark rights in <lawyerlocate.ca> but has produced no evidence to substantiate this. Instead, Complainant cites (accurately, so the Panel finds), paragraph 22 of the judgement in the Federal Court of Canada of the Honourable Mr. Justice Hughes in HomeAway.com, Inc. v. Hrdlicka, 2012 FC 1467: “I find, therefore, that a trade-mark which appears on a computer screen website in Canada, regardless where the information may have originated from or be stored, constitutes for Trade-Marks Act purposes, use and advertising in Canada.”
In Hayes v. Sim & McBurney, 2010 FC 924, cited in HomeAway.com, Inc. v. Hrdlicka, the evidence included screen shots of the relevant website at various time periods through an Internet site, <archive.org>, which holds records of how the website looked at the date indicated. Justice Boivin acknowledged [at 26] that use on a website would constitute good use of a trade-mark.
A search by this Panel at < archive.org> for the domain name <lawyerlocate.ca> confirms that Complainant has used that domain name since September 25, 2002 until the present for a website promoting its directory of Canadian lawyers. Although the words ‘lawyer’ and ‘locate’ individually are common and descriptive, their use in the combination adopted by Complainant is unusual and capable of distinguishing Complainant’s services from those of others. Having regard to Complainant’s use of those words in its domain name, leading to its website, since 2002, the Panel finds that, through such use, Complainant has acquired common law rights in the trademark LAWYERLOCATE.CA.
Identical and/or Confusingly Similar
The Domain Names are clearly virtually identical and confusingly similar to Complainant’s LAWYERLOCATE.CA mark. Neither the omission of a marginal portion of a mark such as “.ca” nor the mandatory addition of a gTLD distinguish the Domain Names from Complainant’s mark. See, e.g., Down E. Enter. Inc. v. Countywide Commc’ns, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to the complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE). See also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Complainant has established this element of its case.
Complainant’s assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in the Domain Names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that he does have rights or legitimate interests in those names. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Policy ¶ 4(c) sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate his rights to or legitimate interests in the Domain Names for purposes of Policy ¶4(a)(ii), i.e.
“(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue”.
Sub-paragraph (ii) does not apply. Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.
As to sub-paragraph (i), Respondent says he uses the Domain Names to promote the services of CanLaw. Having regard to the Panel’s finding that LAWYERLOCATE.CA is Complainant’s trademark, this is not use in connection with a bona fide offering of goods or services. Although even perfunctory preparations have been held to suffice for the purposes of this sub-paragraph (see Lumena s-ka so.o. v. Express Ventures LTD (www. Skarbiec.com), NAF Claim No. 94375), Respondent has provided no evidence of any preparations to use the Domain Names in the United States or the United Kingdom. Accordingly, this sub-paragraph does not apply.
Complainant has established this element of its case.
Policy ¶4(b) sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the Domain Names in bad faith for purposes of Policy ¶4(a)(iii), i.e.
“(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 the 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, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location”.
As to (i), Respondent’s offer to sell the Domain Names to Complainant after the Complaint was filed does not support a conclusion that this was Respondent’s primary purpose in registering the Domain Names in 2008.
As to (ii), there is no evidence Respondent has engaged in a pattern of registering domain names in order to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name.
As to (iii) and (iv), the exhibit to the Complaint already mentioned shows that on October 22, 2007, Respondent sought to ascertain the names and contact details of all the lawyers on Complainant’s website. In that exhibit, Respondent said this was “so I can contact them.” In his Response, Respondent says this was done to compare the parties’ client lists because Respondent suspected Complainant of stealing information from Respondent’s website.
There is no evidence that Respondent created/coined the term “lawyer locate” sometime in the 1990s, as he claims.
It is clear the parties are competitors and that Respondent was well aware of Complainant and its use of the <lawyerlocate.ca> domain name and website long before Respondent registered the Domain Names on March 13, 2008 and began to use them to promote Respondent’s CanLaw services. The Panel concludes that Respondent registered the Domain Names primarily for the purpose of disrupting the business of a competitor and that, by using the Domain Names to promote its CanLaw services, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a service on his website. This demonstrates both bad faith registration and bad faith use. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services to those offered by the complainant under its mark).
Complainant has established this element of its case.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the Domain Names <lawyerlocate.info> and <lawyerlocate.biz> be TRANSFERRED from Respondent to Complainant.
Alan L Limbury, Panelist
Dated: June 20, 2013
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