DECISION

 

OnlineDivorce.com LLC v. Oleksandr Kucherenko / Boosters Lab Inc.

Claim Number: FA2310002068963

 

PARTIES

Complainant is OnlineDivorce.com LLC ("Complainant"), represented by Michael S. Denniston of Bradley Arant Boult Cummings LLP, Alabama, USA. Respondent is Oleksandr Kucherenko / Boosters Lab Inc. ("Respondent"), represented by Jason Schaeffer of ESQwire.com, P.C., New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <onlinedivorcer.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

 

Ho-Hyun Nahm as Panelist, Alan Limbury as Panelist, and Dennis A. Foster as Panelist and Chair.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 31, 2023; Forum received payment on October 31, 2023.

 

On October 31, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <onlinedivorcer.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 November 2, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 27, 2023 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@onlinedivorcer.com. Also on November 2, 2023, 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 November 27, 2023.

 

On December 5, 2023, pursuant to Respondent's request to have the dispute decided by a three-member Panel, Forum appointed Ho-Hyun Nahm, Alan Limbury and Dennis A. Foster as Panelists.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

         The <onlinedivorcer.com> domain name is substantially identical and confusingly similar to the mark in which Complainant has rights, specifically the ONLINEDIVORCE mark, its legal name OnlineDivorce.com LLC, its trade name OnlineDivorce, and the <onlinedivorce.com> domain name.

 

         As a result of its substantial and continuous use of the ONLINEDIVORCE mark and the <onlinedivorce.com> domain name, Complainant owns substantial common law rights in the mark.  The ONLINEDIVORCE mark and <onlinedivorce.com> domain name have become associated with Complainant and its services, and operate in the minds of consumers as a reliable indicator of the source of the services offered under that mark.

 

         Complainant has never licensed or otherwise authorized Respondent to use its mark ONLINEDIVORCE or any derivative of or variation on that mark, either in domain names or otherwise.

 

         Respondent wrongfully registered the domain name <onlinedivorcer.com>. On information and belief, the disputed domain name has been registered since May 6, 2019.

          

The disputed domain name is confusingly similar to Complainant's mark because it consists of Complainant's mark with the additional letter "r". Respondent's intent to use a confusingly similar domain name is corroborated by the fact that Complainant owns the domain name <onlinedivorce.com>, from which it provides online divorce document preparation and related services. Respondent uses the disputed domain name <onlinedivorcer.com> to provide services identical to Complainant's services.

 

         Respondent has no rights or legitimate interest in the disputed domain name. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶ 4(a)(ii).

 

Upon information and belief, Respondent registered and is using the disputed domain name <onlinedivorcer.com> to suggest an affiliation with Complainant as well as to misleadingly divert to Respondent internet users searching for Complainant's domain name <onlinedivorce.com>. Previous panels have consistently held that such use is 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).

 

         The disputed domain name has been registered and is being used in bad faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶¶ 4(a)(iii), (b)(iv).

          

         Upon information and belief, Respondent was aware of the existence of Complainant's mark before Respondent's registration of <onlinedivorcer.com>.  As further evidence that Respondent registered <onlinedivorcer.com> with actual knowledge of Complainant's rights in the ONLINEDIVORCE mark, it is apparent that Respondent had knowledge of Complainant's rights in its ONLINEDIVORCE mark and <onlinedivorce.com> domain name when it registered the disputed domain name, given the similarity between the content of Respondent's and Complainant's respective websites.  

 

Respondent is a competitor of Complainant. Respondent intentionally chose the disputed domain name because it is confusingly similar to Complainant's mark and then registered the disputed domain name with the intent to divert internet users away from Complainant's competing business for the primary purpose of disrupting Complainant's competing business.

 

Respondent registered and is using the disputed domain name primarily to profit from and exploit the goodwill associated with Complainant's mark.

 

Further, Respondent registered the domain name <onlinedivorcer.com> using a privacy service to hinder anyone's ability to identify Respondent as the party responsible for the activity associated with the domain name.

 

B. Respondent

 

Complainant acknowledges in its Complaint that it has no registered trademark rights in the descriptive keywords "Online Divorce." Based on Complainant's own website and use, it is abundantly clear that Complainant's use of the highly descriptive dictionary words is not as a trademark or brand identifier, but rather is a description of the services consumers would expect to see at the website – it is a mere use of the key words that consumers use when looking to conduct an online divorce.  Accordingly, Complainant's own selection and use of a key word phrase in a descriptive sense rather than in a trademark sense makes it patently unreasonable for it to claim trademark rights or to seek to prevent others from using the same descriptive words. Therefore, this UDRP claim must fail on its face.

With respect to the legitimate interest and bad faith elements, Respondent has for many years used the disputed domain name in connection with its common descriptive meaning.

The disputed domain name was not registered and has not been used in bad faith. It is well-established that, in order to prove bad faith registration of a descriptive common word domain name, Complainant must show the disputed domain name was registered specifically to profit from Complainant's mark. There is no such evidence here. To the contrary, there is no evidence supporting a conclusion that Respondent has ever violated the Policy in any manner and there is ample third-party evidence that consumers use the descriptive key words "online divorce" to find any number of websites and competing service offerings – there simply is no brand called "online divorce." Accordingly, the Panel should issue a decision denying the Complaint.

Furthermore, it is within the Panel's right to consider whether on the facts that Complainant knew when it filed this UDRP that it was unable to succeed in establishing the basic standing requirement of having trademark rights. Given the nature of Complainant's own purely descriptive use of the generic keywords and lack of trademark rights and brand recognition, and without any proof that Respondent has acted improperly in any manner, this case warrants a finding of reverse domain name hijacking (RDNH) as an abuse of the Policy.

 

FINDINGS

Complainant, Online Divorce LLC, bought its business in 2020 from the previous owner and offers online divorce services at the domain name <onlinedivorce.com>, which Complainant also acquired in 2020. Complainant does not own a registered trademark for the name "online divorce".

 

Respondent, Oleksandr Kucherenko/Boosters Lab Inc., is in the business of Search Engine Optimization (SEO) and website creation. Respondent registered the disputed domain name, <onlinedivorcer.com>, on May 6, 2019. Respondent uses it to increase internet traffic to clients' websites that offer online divorce services.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

 Complainant contends that the disputed domain name, <onlinedivorcer.com>, is confusingly similar to its trademark "onlinedivorce". However, Complainant admits that it does not own a registered trademark for the name "onlinedivorce". Instead, Complainant contends that it has acquired common law trademark rights in the name "onlinedivorce" through its online divorce business at the <onlinedivorce.com> website which it has operated since 2020, and by way of its predecessor-in-interest, which operated the same business using the same domain name, from 2008 until the sale to Complainant.

 

Respondent counters that Complainant's alleged common law trademark "onlinedivorce" is merely a description of its services and that the general public is free to use these same words in relation to these same services. Thus, according to Respondent, this explains why Complainant does not have common law trademark rights in the name "online divorce". It also explains why Complainant, after allegedly spending over $26 million on its business since 2020, still does not have a registered trademark nor a viable claim to a common law trademark.

 

The Panel agrees with Respondent. As Respondent shows, numerous, if not innumerable, internet entities use some variation of the name "online divorce" because they must do so to describe the services they offer, and because they are confident that trademark law in jurisdictions that recognize both common law and registered trademarks allows them to do so. See WIPO UDRP Overview, 3rd Edition, Section 1.3:

 

"In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning."

 

Having failed to show trademark rights in the name "onlinedivorce", Complainant has no standing to claim that Respondent's disputed domain name, <onlinedivorcer.com> is confusingly similar to a name, viz. "onlinedivorce", in which Complainant cannot prove it has trademark rights.

 

Therefore, Complainant has failed to carry its burden of proof under Policy ¶ 4(a)(i). Since the Policy requires that Complainant prove ¶¶4(a)(i), (ii) and (iii) inclusively, the entire Complaint must fail. Hence, the Panel need not examine the issues of rights and legitimate interests or bad faith in order to reach its decision.      

 

The Panel declines to grant Respondent's request that it issue a finding of Reverse Domain Name Hijacking against Complainant. The Panel finds that Complainant brought this Complaint in good faith, not to harass Respondent.  See ¶15(e) of the Rules.

 

DECISION

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 <onlinedivorcer.com> domain name REMAIN WITH RESPONDENT.

 

 

 

 

Ho-Hyun Nahm, Alan Limbury, Panelists

Dennis A. Foster, Chair

Dated: December 19, 2023