Hyatt Legal Plans, Inc. v. E-Promote
Claim
Number: FA0502000430635
Complainant is Hyatt Legal Plans, Inc. (“Complainant”),
represented by Leon Medzhibovsky, of Fulbright and Jaworski LLP,
666 Fifth Avenue, New York, NY 10103. Respondent is E-Promote (“Respondent”), 536 Leavenworth St., San Francisco, CA
94109.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <hyattlegal.com>, registered with Wild
West Domains, Inc.
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
23, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 24, 2005.
On
February 24, 2005, Wild West Domains, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <hyattlegal.com> is
registered with Wild West Domains, Inc. and that Respondent is the current
registrant of the name. Wild West Domains, Inc. has verified that Respondent is
bound by the Wild West Domains, 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
February 28, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of March 21,
2005 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@hyattlegal.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 25, 2005, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., 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 <hyattlegal.com>
domain name is confusingly similar to Complainant’s HYATT LEGAL PLANS mark.
2. Respondent does not have any rights or
legitimate interests in the <hyattlegal.com> domain name.
3. Respondent registered and used the <hyattlegal.com>
domain name in bad faith.
B.
Respondent failed to submit a response in this proceeding.
Complainant has
provided prepaid legal services under the HYATT LEGAL PLANS mark since December
11, 1989. A network of 4,000 independent law firms in all 50 states, the
District of Columbia, and Puerto Rico provide legal services to more than two
million participants in Complainant’s group legal plan. Participants in the
plan obtain benefits by calling an 800 number or by visiting Complainant’s
website at the <hyattlegalplans.com> and <legalplans.com> domain
names. Complainant also holds registrations for the <hyattlegal.biz>,
<hyattlegal.info>, <hyattlegal.net>, and <hyattlegal.org>
domain names. During the period from 1996 through 2003, Complainant spent
$1,620,436.00 on advertising and promotion of its services under the HYATT
LEGAL PLANS mark. All stock in Complainant was acquired by Metropolitan Life
Insurance Company in 1997.
Respondent
registered the <hyattlegal.com> domain name on January 13, 2004.
The domain name resolves to a website that provides brief generic comments on
several areas of law and links to various commercial websites. Many of the
links direct Internet users to websites offering legal services that compete
with Complainant. Other links divert users to websites that offer goods and
services that are unrelated to Complainant’s business. The website specifically
refers to Complainant and describes Complainant’s business in detail, including
the fact that Complainant is a subsidiary of Metropolitan Life Insurance
Company.
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.
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.
Registration of
a mark with a governmental authority is unnecessary for a complainant to establish
rights in a mark if a common law mark has been established. See McCarthy on
Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN
dispute resolution policy is “broad in scope” in that “the reference to a
trademark or service mark ‘in which the complainant has rights’ means that
ownership of a registered mark is not required–unregistered or common law
trademark or service mark rights will suffice” to support a domain name
complaint under the Policy); see also
Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18,
2001) (finding that the Policy does not require “that a trademark be registered
by a governmental authority for such rights to exist”).
Complainant
established by extrinsic proof in this proceeding that it has rights in the HYATT LEGAL PLANS mark through
ownership of a common law mark. A common law mark is established when a
complainant’s mark becomes distinctive and acquires secondary meaning.
Complainant established that, through Complainant’s continuous and exclusive
use of the HYATT LEGAL PLANS mark in commerce since December 1989 and through
Complainant’s expenditure of much time and money in promotion of the mark,
Complainant’s mark has acquired secondary meaning and has become distinctive.
Thus, Complainant has established secondary meaning in the HYATT LEGAL PLANS
mark through its continuous use. The Panel finds, therefore, that Complainant
has established common law rights in the HYATT LEGAL PLANS mark pursuant to
Policy ¶ 4(a)(i). See Tuxedos By
Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law
rights in a mark where its use was continuous and ongoing, and secondary
meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander
Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (finding that the
complainant established rights in the descriptive RESTORATION GLASS mark
through proof of secondary meaning associated with the mark); see also Nat’l
Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21,
2003) (finding that the complainant had provided evidence that it had valuable
goodwill in the <minorleaguebaseball.com> domain name, establishing
common law rights in the MINOR LEAGUE BASEBALL mark).
The <hyattlegal.com>
domain name is confusingly similar to the HYATT LEGAL PLANS mark because the
domain name merely omits the word “plans” from the mark, removes spaces, and
adds the “.com” generic top-level domain (“gTLD”). The addition of a gTLD, the
removal of spaces, and the omission of the word “plans” do not distinguish the
domain name from the mark. Moreover, the Panel finds that the name “Hyatt
Legal” identifies Complainant independently of the word “plans.” Therefore, the
Panel finds that the domain name is confusingly similar to the mark under
Policy ¶ 4(a)(i). 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); see also Hannover Ruckversicherungs-AG v. Ryu, FA
102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain
names”); see also Wellness Int’l
Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001)
(finding that the <wellness-international.com> domain name was
confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK mark); see
also Hammond Suddards Edge v.
Westwood Guardian Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the
<hammondsuddards.net> domain name was essentially identical to the
complainant’s HAMMOND SUDDARDS EDGE mark where the name “Hammond Suddards” identified
the complainant independently of the word “Edge”)
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a response in this proceeding. In the absence of a
response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly contradicted by the evidence. Complainant has alleged
that Respondent lacks rights and legitimate interests in the <hyattlegal.com>
domain name. Complainant’s submission is unopposed and its arguments unrefuted.
Further, because Respondent has failed to submit a response, Respondent has
failed to propose any set of circumstances that could substantiate its rights
or legitimate interests in the disputed domain name. See Vertical Solutions
Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31,
2000) (holding that a respondent’s failure to respond allows all reasonable
inferences of fact in the allegations of the complainant to be deemed true); see
also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that, by not submitting a response, the respondent failed to invoke
any circumstance which could demonstrate any rights or legitimate interests in
the domain name).
Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or making a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)
because the domain name is confusingly similar to Complainant’s mark and
redirects unsuspecting Internet users to commercial websites that offer
products and services that are either unrelated to or in competition with
Complainant’s services. Respondent makes opportunistic use of Complainant’s mark
in order to capitalize on the goodwill and fame associated with the HYATT LEGAL
PLANS moniker. Thus, Respondent fails to establish rights or legitimate
interests in the domain name under Policy ¶ 4(a)(ii). See Ticketmaster Corp.
v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or
legitimate interests where the respondent generated commercial gain by
intentionally and misleadingly diverting users away from the complainant’s site
to a competing website); see also N.
Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000)
(finding no rights or legitimate interests in a domain name that diverted
Internet users to the respondent’s competing website through the use of the
complainant’s mark).
No
evidence before the Panel suggests Respondent is commonly known by the <hyattlegal.com>
domain name under Policy ¶ 4(c)(ii). The domain name’s WHOIS information
indicates that the registrant of the disputed domain name is known as “E‑Promote”
and is not known by the confusingly similar second-level domain that infringes
on Complainant’s HYATT LEGAL PLANS mark. Moreover, Respondent is not authorized
or licensed to use Complainant’s mark for any purpose. Thus, Respondent lacks
rights and legitimate interests in the domain name under 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 RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a
showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail”).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
uses a confusingly similar variation of Complainant’s HYATT LEGAL PLANS mark to
ensnare unsuspecting Internet users. Respondent then redirects the users to a
website that provides links to various commercial websites. The Panel infers
that Respondent receives pay-per-click fees when Internet users follow the
links on its website. Respondent is profiting from the unauthorized use of
Complainant’s registered mark in its domain name. Such infringement is what the
Policy was intended to remedy and is evidence of bad faith registration and use
under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent
registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)
because the respondent was using the confusingly similar domain name to attract
Internet users to its commercial website); see also Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that, if a respondent profits
from its diversionary use of a complainant’s mark when the domain name resolves
to commercial websites and the respondent fails to contest the complaint, it
may be concluded that the respondent is using the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv)).
Respondent
registered and used a domain name that is confusingly similar to Complainant’s
mark for the purpose of directing Internet users to businesses that offer goods
and services that compete with Complainant. Respondent’s use of the <hyattlegal.com> domain name establishes that
Respondent registered and used the domain name for the purpose of disrupting
the business of a competitor pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also Puckett
v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that, the respondent
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of a domain name, additional factors
can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, a panel must look at the
“totality of circumstances”); see also Do the Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
Respondent’s
registration of the disputed domain name, a domain name that is confusingly
similar to Complainant’s mark, suggests that Respondent knew of Complainant’s
rights in the HYATT LEGAL PLANS mark. Moreover, Respondent’s description of
Complainant and its business on its website demonstrates that Respondent had
actual knowledge of Complainant’s rights in the mark. The fact that
Respondent’s website provides links to Complainant’s competitors also evidences
Respondent’s knowledge of Complainant’s rights in the mark. Thus, the Panel
finds that Respondent chose the <hyattlegal.com> domain name based
on the distinctive qualities of Complainant’s mark, which evidences bad faith
registration and use under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of
bad faith, when the respondent reasonably should have been aware of the
complainant’s trademarks, actually or constructively.”); see also Pfizer,
Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
link between the complainant’s mark and the content advertised on the
respondent’s website was obvious, the respondent “must have known about
Complainant’s mark when it registered the subject domain name”); see also
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir.
2002) (“Where an alleged infringer chooses a mark he knows to be similar to
another, one can infer an intent to confuse.”).
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 <hyattlegal.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
April 6, 2005
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