eLegalsupply.com, LLC v. Azeras LLC
Claim Number: FA1204001438796
Complainant is eLegalsupply.com, LLC (“Complainant”), represented by Jonathan Z. Cohen of Law Offices of David G. Concannon, LLC, Pennsylvania, USA. Respondent is Azeras LLC (“Respondent”), represented by Juan Diego Rodriguez, Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <legalsupply.com>, registered with Fabulous Pty Ltd.
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.
Hugues G. Richard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 10, 2012; the National Arbitration Forum received payment on April 10, 2012.
On April 11, 2012, Fabulous Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <legalsupply.com> domain name is registered with Fabulous Pty Ltd. and that Respondent is the current registrant of the name. Fabulous Pty Ltd. has verified that Respondent is bound by the Fabulous Pty Ltd. 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 April 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2012 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@legalsupply.com. Also on April 12, 2012, 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 2, 2012.
Additional Submission of Complainant was received on May 8, 2012.
On May 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hugues G. Richard 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" 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
1. Complainant has registered its ELEGALSUPPLY.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,482,692 filed January 28, 2008; registered August 5, 2008).
2. Respondent’s <legalsupply.com> domain name is confusingly similar to Complainant’s ELEGALSUPPLY.COM mark because it differs only by a single letter.
3. Complainant never licensed or authorized Respondent to use the mark.
4. Respondent’s disputed domain name resolves to a website that features a banner stating that the website is listed for sale at <domainnamesales.com> and displays links referencing Complainant’s competitors.
5. Respondent has not been commonly known by the disputed domain name and the WHOIS information provides no indication that Respondent is associated with the disputed domain name.
6. Respondent registered the disputed domain name for the purpose of selling the disputed domain name for valuable consideration in excess of Respondent’s out-of-pocket costs.
7. Respondent uses the disputed domain name to intentionally attract Internet users, for commercial gain, to the resolving website by creating a likelihood of confusion with the mark as to the source, sponsorship, or affiliation of the disputed domain name and resolving website.
8. Respondent has demonstrated a pattern of bad faith domain name registration.
B. Respondent
1. The disputed domain name is a combination of two generic words, “legal” and “supply,” and not a typographical error of Complainant’s mark.
2. Complainant has not evidenced any rights in the mere words “legal” and/or “supply.”
3. Respondent has rights and legitimate interests in the disputed domain name based on the generic meaning of the phrase and its use to display advertisements related to those generic terms.
4. The disputed domain name was registered on January 15, 1998, a date which predates any alleged activities of Complainant as the Complainant’s mark was not registered until August 5, 2008.
5. Complainant’s first use date of 0-0-1999 not only does not give an actual date but also provides no evidence supporting a supposed use on that date.
6. Complainant’s domain name <elegalsupply.com> domain name was not even registered until May 7, 2002.
7. Respondent did not register the disputed domain name in bad faith as the disputed domain name was registered at a time when Complainant did not even exist as a business entity.
8. Complainant knew when it filed the Complaint that the registration of the disputed domain name preceded Complainant’s acquisition of rights in its mark and thus served the Complainant in bad faith and in abuse of this administrative proceeding.
9. The Panel should consider a finding of Reverse Domain Name Hijacking.
C. Additional Submissions
1. It is a misplaced argument in a UDRP proceeding for the Respondent to argue with the USPTO’s judgment in granting Complainant a registration for the mark ELEGALSUPPLY.COM.
2. Respondent has acquired the domain name in bad faith.
3. The transfer of a domain name is equivalent to a new registration under the UDRP.
4. There is no evidence of bad faith by Complainant.
5. The Panel should reject Respondent’s request for a finding of Reverse Domain Name Hijacking.
The Panel finds that Respondent was not the first person to register the domain name. As of March 1, 2007, the domain name was registered to Kevin Daste at the registrar, Network Solutions, LLC. As of April 9, 2012, the domain name was registered to Respondent at the registrar, Fabulous.com Pty Ltd. The domain name must therefore have been transferred to Respondent at some point after March 1, 2007.
Complainant has registered its ELEGALSUPPLY.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,482,692 filed January 28, 2008; registered on the Supplemental Registry on August 5, 2008).
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.
Complainant argues that it has rights in the ELEGALSUPPLY.COM mark by virtue of its trademark registration with the USPTO (Reg. No. 3,482,692 filed January 28, 2008; registered August 5, 2008). The Panel finds that this trademark registration establishes Complainant’s rights in the ELEGALSUPPLY.COM mark, dating back to the filing date of January 28, 2008, pursuant to Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). The Panel also determines that a USPTO trademark registration is sufficient under Policy ¶ 4(a)(i) even when Respondent is located outside the U.S. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant further argues that Respondent’s <legalsupply.com> domain name is confusingly similar to Complainant’s ELEGALSUPPLY.COM mark because the only difference in appearance between the domain name and the mark is that the mark begins with the letter “e,” which the disputed domain name omits. The Panel finds that omitting a single letter of the mark in a disputed domain name is insufficient to differentiate the disputed domain name from the mark, resulting in a finding that the disputed domain name is confusingly similar to the mark according to Policy ¶ 4(a)(i). See Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”).
While Respondent contends that the <legalsupply.com> domain name is comprised of common and generic/descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i) but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii)). The fact that the trademark is registered on the Supplemental Register and not on the Principal Register is not a factor to be considered under the Policy.
Considering the above, the Panel holds that Respondent’s disputed domain name is confusingly similar to Complainant’s ELEGALSUPPLY mark pursuant to Policy ¶ 4(a)(i).
Rights or Legitimate Interests: Policy ¶ 4(a)(ii).
Under Policy ¶ 4(a)(ii), 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), for the burden to shift 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 Policy ¶ 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 alleges that it never licensed or authorized Respondent to use the ELEGALSUPPLY mark. Complainant also contends that a search of the USPTO reveals no registration for “legalsupply.com”. Complainant asserts that Respondent has not been commonly known by the disputed domain name and that the WHOIS record provides no indication that Respondent is associated with the disputed domain name. Based on these allegations, the Panel concludes that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also 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).
Complainant further argues that the disputed domain name displays links referencing Complainant’s competitors, such as “Staples Supplies” and “Staples Fax Machines.” The Panel finds that using a confusingly similar disputed domain name to host links advertising Complainant’s competitors is not consistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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 also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Complainant also contends that Respondent’s disputed domain name resolves to a website featuring an orange banner on top of the screen stating that the domain name has been listed in the marketplace at <domainnamesales.com>. The Panel finds that offering the disputed domain name for sale does not indicate rights and legitimate interests under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
The Panel agrees with Complainant and finds that Respondent is guilty of typosquatting and lacks rights and legitimate interests in the <legalsupply.com> domain name under Policy ¶ 4(a)(ii).
Had the Respondent established that it was selling or otherwise dealing in legal supplies, the Panel might have decided differently, but there being no indicia of rights or legitimate interests in the disputed domain names, the Panel finds that the Complainant has met the Policy ¶ 4(a)(ii) criteria.
Respondent argues that it could not have registered the disputed domain name in bad faith because Complainant did not exist as a business entity at the time Respondent registered the disputed domain name. Respondent asserts that the disputed domain name predates any alleged activities of Complainant as the domain name was registered on January 15, 1998 and Complainant’s mark was not registered until August 5, 2008. Respondent argues that even the first use date provided by Complainant does not support a bad faith finding as the listed date of “0-0-1999” does not give an actual date or provide any evidence of the supposed use. Respondent alleges that even Complainant’s own domain name, <elegalsupply.com>, was not registered until May 7, 2002.
However, Respondent was not the first person to register the domain name. As of March 1, 2007, the domain name was registered to Kevin Daste at the registrar, Network Solutions, LLC. As of April 9, 2012, the domain name was registered to Respondent at the registrar, Fabulous.com Pty Ltd. The domain name must therefore have been transferred to Respondent at some point after March 1, 2007. Even assuming that Complainant’s first use of the mark was on May 7, 2002 – which Respondent suggests and Complainant denies – that use would still pre-date Respondent’s re-registration of the domain name by at least four years and nine months. The transfer of a domain name is equivalent to a new registration under the UDRP. See MC Enterp. V. Segal, WIPO Case No. D2005-1270 (finding that Respondent’s acquisition of the subject domain name constitutes registration even if it is not the original registrant); see also Ideenhaus Kommunikationsagentur GmbH v. Ideenhause GmbH, WIPO Case No. D2004-0016 (finding that there was no reason to differentiate between a direct registration and a registration after transfer); see also Dixons Group Plc v. Adbullaah, WIPO Case No. D2000-1406 (finding that the term "registration" extends beyond the original act of registration and covers subsequent acquisitions of the domain name).
Complainant argues that circumstances indicate that Respondent registered or acquired the disputed domain name for the purpose of selling the disputed domain name to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs. To support this allegation, Complainant notes that Respondent’s resolving website displays a banner at the top stating, “This domain has recently been listed in the marketplace at domainnamesales.com.” Complainant also alleges that, in response to its offer to buy the domain name for $2,500, Respondent replied with a counteroffer of $14,100. Based on this evidence, the Panel comes to the conclusion that Respondent’s efforts to sell the disputed domain name indicate bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name).
Complainant also contends that Respondent has a long, documented history of cybersquatting. See Joda Enters., Inc. v. Whois Privacy Servs. Pty Ltd / Azeras LLC, D2010-0655 (WIPO July 8, 2010); see also Vans, Inc. v. Azeras LLC, FA 1298528 (Nat. Arb. Forum Jan. 28, 2010); see also Carrefour v. Azeras LLC, D2008-1998 (WIPO Feb. 19, 2009); see also Stevens v. Azeras LLC, D2008-0844 (WIPO July 28, 2008); see also Nutraquest, Inc. v. Azeras LLC, D2008-0451 (WIPO May 27, 2008). In light of these prior adverse UDRP decisions involving Respondent, the Panel finds that Respondent registered and uses the disputed domain name as part of a pattern of bad faith registration and use according to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
The Panel wishes to restate that had the Respondent established that it was selling or otherwise dealing in legal supplies, the Panel might have decided differently, but there being no indicia of registration or use in good faith of the disputed domain names, the Panel finds that the Complainant has met the Policy ¶ 4(a)(iii) criteria.
Reverse Domain Name Hijacking
The Panel finds that Complainant has satisfied all three elements of Policy ¶ 4(a). The Panel therefore finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306n (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail.”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <legalsupply.com> domain name be TRANSFERRED from Respondent to Complainant.
Hugues G. Richard, Panelist
Dated: May 22, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page