New Jersey Lawyers Service, LLC v. GUARANTEED SUBPOENA SERVICE, INC.
Claim Number: FA1609001695657
Complainant is New Jersey Lawyers Service, LLC (“Complainant”), represented by Gabriel H. Halpern of PinilisHalpern, LLP, New Jersey, USA. Respondent is GUARANTEED SUBPOENA SERVICE, INC. (“Respondent”), represented by Mark P. Stone, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lawyersservice.com>, registered with Network Solutions, 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.
Jaime Delgado as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 27, 2016; the Forum received payment on September 27, 2016.
On September 27, 2016, Network Solutions, LLC confirmed by e-mail to the Forum that the <lawyersservice.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 October 4, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 2016 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@lawyersservice.com. Also on October 4, 2016, 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 October 24, 2016.
On November 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jaime Delgado 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
Complainant was founded in 1929, and has engaged in the business of same day and overnight delivery of correspondence and packages for the New Jersey legal community since its inception. In 2005, New Jersey Lawyers Service, LLC was formed. See Compl., at Attached Annex 1. Complainant has spent millions in advertising its name and services, directed at New Jersey attorneys. Complainant has common law protection in the tradenames NEW JERSEY LAWYERS SERVICE and LAWYERS SERVICE. Most attorneys in the region refer to Complainant as “lawyers service.”
Respondent is a direct competitor of Complainant. After registering the domain name, Respondent placed an ad in the New Jersey Law Journal advertising the domain name. See Compl., at Attached Annex 3.
The domain name lawyersservice.com is confusingly similar, if not identical, to New Jersey Lawyers Service.
B. Respondent
Respondent registered the domain name <lawyersservice.com> on or about October 15, 2015.
Respondent denies the allegations made by Complainant. Respondent admits that both parties render legal services to attorneys, but Respondent’s services under the <lawyersservice.com> domain name are different than those offered by Complainant.
Complainant has failed to provide evidence of any common law rights through use of the name LAWYERS SERVICE in connection with its business; rather, the only evidence goes to NEW JERSEY LAWYERS SERVICE, LLC or NJLS. Further, no likelihood of confusion exists with the marks in which Complainant may have rights.
<lawyersservice.com> relates directly to the nature of Respondent’s business. Prior to the filing of the Complaint, effective October 30, 2015, Respondent’s principal formed a New Jersey limited liability company, “Lawyers Service LLC,” for the purpose licensing the LLC to do business under <lawyersservice.com>. On November 30, 2015, “Lawyers Service LLC” applied for a federal service mark registration for the mark THE ATTORNEY SUPERMARKET for services of providing an online directory and providing online attorney referral services, namely under <lawyersservice.com>. See Resp., at Attached Annex 2. See also Annex 3 as Attached to the Response for a print advertisement for the services offered by “Lawyers Service LLC” under THE ATTORNEY SUPERMARKET mark and <lawyersservice.com>. Respondent intends on engaging in a legitimate business through <lawyersservice.com>.
The Complainant claims Common Law ownership to the tradenames NEW JERSEY LAWYERS SERVICE and LAWYERS SERVICE.
Respondent registered the domain name <lawyersservice.com> on or about October 15, 2015.
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.
If the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), , the Panel may decline to analyze the other two elements 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)).
The Panel agrees with Respondent that Complainant
has failed to provide evidence of any common law rights through use of the tradename
LAWYERS SERVICE in connection with its business; rather, the only evidence is advertising
that goes to the NEW JERSEY LAWYERS SERVICE, LLC or NJLS trade names. Panels
have agreed that evidence is crucial in supporting common law rights, and where
little to no evidence is adduced, then a complainant must fail Policy ¶ 4(a) (i).
See Copper
Wire Stripper Limited v. Joe Williams / BLUEDOGINTERNATIONALINC, FA 1604460 (Forum Apr. 4, 2015) (finding that
Complainant failed to establish secondary meaning where no evidence was
provided with respect to sales under the mark and money spent promoting the
mark.). Furthermore, evidence of use of a trade name is insufficient to prove
that Complainant has Common Law rights on a trademark and that such trademark
has acquired secondary meaning through the use of a trade name. Previous panels
have held that usage as a trade name does not serve to establish common law
rights in a mark.
Quality Craft
Industries, Inc. v. Domain Admin / Ashantiplc Limited, FA 1684372 (Forum Sept.
13, 2016) (finding Complainant failed to establish common law rights in the
MONTEZUMA mark because its usage as a trade name did not serve any distinctive
purpose so as to acquire a secondary meaning) (Claim Denied).
Jay S. Cohen d/b/a Elite Cruises v. Smoking Domains, LLC, FA 1155799 (Forum May 7, 2008) (stating, “Use of a term in a trade name is not proof that it was used as a trademark.’”) (citing Business Architecture Group, Inc. v. Reflex Publ’g, Inc., FA 97051 (Forum June 5, 2001)) (Claim Denied).
Accordingly, the Panel agrees that Complainant has failed to establish rights in a trademark or a service mark under Policy ¶ 4(a)(i).
The Panel declines to analyze this element as Complainant has not satisfied
Policy ¶ 4(a)(i),
The Panel declines to analyze this element as Complainant has not satisfied
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 <lawyersservice.com> domain name REMAIN with Respondent.
Dated: November 10, 2016
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