The State Bar of California v. None a/k/a Web Gator
Claim Number: FA0610000812283
Complainant is The State Bar of California (“Complainant”), represented by Mark Torres-Gil, of The State Bar of California, Office of General Counsel, 180 Howard Street, San Francisco, CA 94105-1639. Respondent is None a/k/a Web Gator (“Respondent”), 838 Camp Street, Fourth Floor, New Orleans, LA 70130.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <californiastatebar.com>, registered with Bulkregister, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 4, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 5, 2006.
On October 5, 2006, Bulkregister, LLC confirmed by e-mail to the National Arbitration Forum that the <californiastatebar.com> domain name is registered with Bulkregister, LLC and that Respondent is the current registrant of the name. Bulkregister, LLC has verified that Respondent is bound by the Bulkregister, LLC 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 October 11, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 31, 2006 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@californiastatebar.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 3, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant is the governing body for the legal profession in the state of California.
Since 1927, Complainant has continuously used the THE STATE BAR OF CALIFORNIA mark in promulgating rules and regulations for admission into the California bar and professional conduct of current members of the bar.
Pursuant to California law, all persons admitted and licensed to practice law in California are required to be members of Complainant’s association, and as a result, as of September 14, 2006, Complainant had over 154,653 active members.
Complainant has registered the THE STATE BAR OF CALIFORNIA service mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,676,361, issued January 21, 2003, filed November 15, 2000).
Complainant previously obtained the <californiastatebar.com> domain name registration as a result of an ICANN proceeding denominated The State Bar of Cal. v. Cayman Trademark Trust, FA 371470 (Nat. Arb. Forum Jan. 14, 2005), but Complainant inadvertently allowed that registration to lapse by virtue of an administrative oversight.
WHOIS information lists the registration date of the <californiastatebar.com> domain name as November 14, 2001, but Respondent actually registered the disputed domain name on December 21, 2005, after Complainant’s registration expired.
Respondent’s domain name resolves to a commercial web directory displaying links to third-party websites providing law-related products and services in competition with those offered by Complainant.
Respondent’s <californiastatebar.com> domain name is confusingly similar to Complainant’s THE CALIFORNIA STATE BAR mark.
Respondent does not have any rights or legitimate interests in the domain name <californiastatebar.com>.
Respondent registered and uses the <californiastatebar.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is 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.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has demonstrated its rights in the THE CALIFORNIA STATE BAR mark under Policy ¶ 4(a)(i) by submitting evidence of its valid registration of the mark with the USPTO. Even if the correct registration date of the <californiastatebar.com> domain name is November 14, 2001, as Complainant alleges, Complainant filed its trademark registration application in 2000, so that its rights in the mark predate Respondent’s registration of the disputed domain name. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of a complainant’s trademark rights date back to the application’s filing date); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a complainant established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); further see ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (holding that a complainant demonstrated its rights in a mark through its registrations with the USPTO and similar agencies worldwide).
Furthermore, Complainant’s possession of the disputed domain
name registration in 2005 provides further evidence of its rights in the
mark. See MediaBiotics Labs.,
L.L.C. v. NOLDC, Inc., FA 346252 (Nat. Arb. Forum Dec. 7, 2004):
“Complainant’s previous registration of domain names reflecting Complainant’s
CORTIBURN, CORTIZIDE and ANXIETOL 7 marks evidences Complainant’s rights in the
marks.”); see also Suburban
Ostomy Supply Co. v. Tremblay,
FA 140639 (Nat. Arb. Forum Feb. 24, 2003): “Complainant’s continuous use
in commerce and its prior registration of the [disputed] domain name provide
strong evidence that Complainant has rights in the SUBURBAN OSTAMY mark
pursuant to Policy ¶ 4(a)(i).”
Respondent has not sufficiently distinguished the <californiastatebar.com>
domain name by merely omitting the article “the” from Complainant’s THE
CALIFORNIA STATE BAR mark. In Mega
Soc. v. LoSasso, FA 215404 (Nat. Arb. Forum Jan. 30, 2004), a panel found
that the <megasociety.net> and <megasociety.com>
domain names were confusingly similar to the complainant's THE MEGA SOCIETY
mark because the only difference between the domain names and the mark was the
article “the.” Because the only
difference in this case is the omission of the article “the” from Complainant’s
mark, it is clear that the <californiastatebar.com> domain name is
confusingly similar to the THE CALIFORNIA STATE BAR mark pursuant to Policy ¶
4(a)(i). See also Buffalo News v. Barry, FA 146919 (Nat. Arb.
Forum Mar. 31, 2003) (finding a respondent's <bufalonews.com> domain name
confusingly similar to a complainant's THE BUFFALO NEWS mark).
The Panel therefore concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant must first make out a prima facie case in support of its allegations. The burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in
respect of the Domain Name requires the Complainant to prove a negative. For
the purposes of this sub paragraph, however, it is sufficient for the
Complainant to show a prima facie case and the burden of proof is then shifted
on to the shoulders of Respondent. In
those circumstances, the common approach is for respondents to seek to bring
themselves within one of the examples of paragraph 4(c) or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interests in respect of the domain name in question.
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the disputed
domain name. See CMGI, Inc. v. Reyes,
D2000-0572 (WIPO Aug. 8, 2000) (finding that a respondent’s failure to produce
requested documentation supports a finding for a complainant); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000)
(finding no rights or legitimate interests where a respondent fails to
respond). However,
the Panel will now examine the record to determine if there is any basis for
concluding that Respondent has rights or legitimate interests under Policy ¶
4(c).
In this regard, we first note that Respondent has registered
the domain name under the name “None
a/k/a Web Gator,” and that there is no other evidence in the record
suggesting that Respondent is commonly known by the disputed domain name. As a result, Respondent has not established
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a
respondent does not have rights in a domain name when it is not known by the
mark); 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").
Further, there is no dispute on this record that Respondent’s <californiastatebar.com> domain name, which is confusingly similar to Complainant’s THE CALIFORNIA STATE BAR mark, resolves to a website featuring links to third-party websites selling law-related products and services. In Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003), a panel found that a respondent’s use of a contested domain name to divert Internet users to a website selling goods and services similar to the services offered by a complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Here, Respondent is also diverting Internet users seeking Complainant’s services to a similar website. We may infer that Respondent receives click-through fees for thus redirecting Internet consumers. Therefore, Respondent is not using the disputed domain names in connection with 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 Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in a disputed domain name where a respondent used a complainant’s mark to redirect Internet users to a website offering credit card services competing with similar services offered under a complainant’s mark).
The Panel thus concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
It is uncontroverted on the record before us that Respondent
has registered and is using the domain name <californiastatebar.com>
in bad faith under Policy ¶ 4(b)(iv).
In Drs. Foster & Smith, Inc.
v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000), a panel found that a
respondent’s diversion to its own website, and for commercial gain, of Internet
users who were seeking a complainant’s website created “a likelihood of
confusion with the Complainant’s mark as to the source, sponsorship,
endorsement, or affiliation of its website[,]” which provided evidence of bad
faith registration and use within the meaning of Policy ¶ 4(b)(iv). In this instance,
Respondent does not deny that it receives pay-per-click fees from advertisers
when Internet users follow the links on its web directory. Therefore, Respondent is taking
advantage of the confusing similarity between the disputed domain name and
Complainant’s THE CALIFORNIA STATE BAR mark, and thereby profiting from the goodwill
associated with the mark, which is at odds with Policy ¶ 4(b)(iv). See
Luck's Music Library v.
Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding
that a respondent engaged in bad faith use and registration by using domain
names that were identical or confusingly similar to a complainant’s mark to
redirect users to a website offering services similar to those offered by that
complainant).
Moreover, it is evident that Respondent registered the
contested domain name with either actual or constructive knowledge of
Complainant’s rights in the mark here in issue by virtue of Complainant’s prior
registration of its mark with the USPTO.
Registration of a confusingly similar domain name despite such actual or
constructive knowledge evidences bad faith registration and use of the domain
name pursuant to Policy ¶ 4(a)(iii).
See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002); see also Orange Glo Int’l v.
Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <californiastatebar.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 16, 2006
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