WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lawfinders Associates, Inc. v. Ultimate Search
Case No. D2004-0163
1. The Parties
The Complainant is Lawfinders Associates, Inc., Dallas, Texas, United States of America.
The Respondent is Ultimate Search, Hong Kong, China, represented by Dann, Dorfman, Herrell & Skillman, PC, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by e-mail on March 2, 2004, and in hardcopy on March 4, 2004. On March 3, 2004, the Center transmitted by email to Moniker Online Services, Inc., a request for registrar verification in connection with the domain name at issue. On March 12, 2004, the Center transmitted by email to Moniker Online Services, Inc., a reminder of the request for registrar verification.
On March 13, 2004, Moniker Online Services, Inc., transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact, but asserted not to have received the Complaint.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 15, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2004. On the same day, the Center wrote to the Registrar to request confirmation that the register lock would be maintained on the domain name, which was going to expire on March 27, 2004, until the conclusion of the case. On March 16, 2004, the Registrar confirmed that the domain name would remain locked until the expiration of the domain name, and would be deleted 30 days later. On March 19, 2004, the Center informed Complainant accordingly. The Respondent submitted a response by e-mail on April 6, 2004, and in hardcopy on April 13, 2004.
The Center appointed James A. Carmody, from a list provided by Complainant, David E. Sorkin, from a list provided by Respondent and Thomas H. Webster as panelists in this matter on May 17, 2004. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant, in this administrative proceeding is Lawfinders Associates, Inc, a company providing consulting services to attorneys and counselors, with its principal office in Texas, United States of America.
Lawfinders Associates owns the service mark LAWFINDERS, with a Mark Drawing Code for "design, words, letters and/or numbers". The registration number is 2038928. The trademark is associated with "legal research and litigation support services". It has first been used in 1984, and was registered in February 1997. The mark was initially registered by Lawfinders' predecessor in interest, Lawfinders Associates, LLC, and then acquired by Lawfinders Associates Inc. by assignment from Lawfinders Associates LLC. Complainant uses the domain name as its website.
Respondent has registered the disputed domain name on March 27, 2000, and alleges that it has been operating it by using the words "law finder" in connection with links for finding legal resources on the Internet. Ultimate Search alleges that it holds a portfolio of domain names which are utilized for their keyword relevance to selected search terms. Respondent indicates that "under contract to `pay-per-click' advertising consolidator, Ultimate Search provides relevant, targeted web traffic to advertisers, and shares in a commission paid by advertisers to the advertising consolidator".
5. Parties' Contentions
A. Complainant
The Complainant argues that the disputed domain name is almost identical to Complainant's service mark, since "the difference is one letter", which is a source of confusion. Complainant indicates that it has invested "an extraordinary amount of good-will in its name in the nearly twenty years it has been operating" and that it intends to "continue to provide legal services to attorneys and counselors throughout the United States under the Lawfinders name."
Complainant also argues that "a person intending to visit Complainant's website, , could easily mistype the name by leaving off the "s" and be directed to the Respondent's website".
Complainant adds that "proof of confusion is established by the electronic mail communication dated August 20, 2003, from Michael Wigton to Robert Scott and John Scott, the principals of the Complainant. In that August 20, 2003 email, Mr. Wigton complained to the Complainant's principals that when he went on the website, adhoc spyware was purposefully installed on his system, which was interfering in his work." Complainant indicates that "Mr. Wigton obviously believed that the was affiliated with the Complainant."
Complainant also contends that "several other clients, in or about August 2003, contacted the Complainant's office and informed an associate of the Complainant that they had visited the website hosted by the Respondent at the disputed domain name, and they believed that the Complainant created the website and operated it."
Moreover, Complainant alleges that Respondent has no rights or legimitate interests in respect to the domain name since "the website hosted at the disputed domain name does not provide any legitimate commercial services. Rather, the website hosted at the domain name in question is a mere portal to other websites".
Complainant argues that Respondent "has not acquired an interest in the disputed domain name through common usage" and that "Complainant had a superior interest in a nearly identical name by virtue of the fact that the complainant registered the name `Lawfinders' with the United States Patent and Trademark Office three years before the Respondent registered the disputed domain name."
Moreover, Complainant contends that the domain name should be considered as having been registered and used in bad faith by Respondent. According to the Complainant, "the Respondent does not provide any legitimate commercial interest through the website" and "the only logical conclusion is that the Respondent registered the name for the purpose of selling, renting, or otherwise transferring the domain name registration to someone, such as the Complainant or a competitor of the Complainant, for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the disputed domain name".
Complainant adds that "Respondent has placed software in its website, so that when a person enters the website , adhoc spyware is created in the user's computer" so that "reasonable inference is that the Respondent registered the domain name and created the website for the purpose of luring visitors and tracking their contact information for future use."
B. Respondent
Respondent first argues that "the criterion of identity or confusing similarity cannot be understood to confer exclusive rights in the primary meaning of common words".
According to Respondent, "while the Complainant may posses (sic) certain rights in its logo which is not being used by the Respondent", ("the mark as a whole" constituting a "stylized parthenon with the word `Lawfinders' imprinted over the parthenon"), "the Complainant cannot seriously maintain that it has rights in the term `law finder", which is a commonly used term in the field of legal research."
Respondent maintains that the term "Law finder" dates back to 1912, and is a "common descriptive term in widespread use, and is not exclusively ascociated with the Complainant, even in the general field of legal research. Similar variations on the terms are also in widespread use, such as `'".
Respondent also asserts that the "graphical and stylistic elements of the Complainant's asserted trademark cannot be ignored in determining the reasonable scope thereof".
Furthermore, Respondent argues that it has a legitimate right or interest in the domain name. Respondent indicates that "under contract to `pay-per-click' advertising consolidator, Ultimate Search provides relevant, targeted web traffic to advertisers, and shares in a commission paid by advertisers to the advertising consolidator" and contends that it holds a "legitimate expectation interest in the undisturbed use of common descriptive terms. In this instance, the Respondent is using the domain name `' keeping with the primary and widely-used term `Law finder' to provide paid advertising links relevant to the search term `Law' as seen in the Complainant's exhibit, and can be verified by visiting the page in question."
The Respondent also puts forward that "this manner is well-settled under the Policy as constituting a legitimate right or interest in the offering of bona fide services". Respondent notably refers to Career Guidance Foundation v. Ultimate Search, WIPO Case No. D2003-0323.
Finally, Respondent alleges that it does not fall under the illustrative examples of bad faith enumerated in the Policy.
According to Respondent, it "derives substantial revenue from its targeted web traffic business, and does not register domain names for resale", it is "clearly not using the domain name for the purpose of tarnishing the Complainant's alleged mark", and it "has not registered the domain name as part of a pattern to prevent the Complainant from reflecting its alleged trademark in a domain name" since "the internet domain name `' is currently unregistered and available to the Complainant for a few dollars".
Furthermore, Respondent contends that "the Complainant blamed the Respondent for Mr. Wigton's problem, even though there was no indication that Mr Wigton's complaint had anything to do with the Respondent." According to Respondent, "nowhere in this email- not a single word- does Mr Wigton say anything about the Respondent's domain name".
Respondent adds that "compounding its defamation of the Respondent, the Complainant states, in its certified Complaint, that the Respondent is engaged in installing `adhoc spyware' on the computers of visitors to the Respondent's website for `tracking their contact information for future use". Respondent alleges that it did not distribute `spyware' or any other software.
Furthermore, Respondent indicates that it has "undertaken its own investigation" concerning Mr. Wigton's enquiry, and that "it is beyond obvious that Mr. Wigton was complaining about the `Findlaw toolbar' published by `AtHoc' software, and not about anything relating to the Respondent".
Respondents further alleges that Complainant "has abused the Policy in bad faith", and refers to Rule 11 of the US Federal Rules of Civil Procedure, under which "allegations are not to be made recklessly, and due inquiry into the support of allegations is required". Respondent indicates that "under rule 15, the Panel is empowered to consider whether the Complaint has abused the Policy in bad faith" and that it is equally empowered to "resolve disputes with reference to any legal principles the Panel deems applicable".
Respondent adds that "upon receiving the surprising allegation concerning `adhoc spyware' the Respondent conducted its own investigation and informed the Complainant of the facts concerning the true origin of the Findlaw Toolbar. The Respondent requested that the Complainant amend or supplement the Complaint to remove the allegations that are so clearly demonstrated to be false (...) The Respondent received no response to this request."
According to Respondent, "parties to a proceeding under the Policy have an affirmative duty, similar under Rule 11, to make enquiry into the factual allegations which are brought before the Panel (...) It is clear that the Complainant's allegations under the heading of `bad faith' were recklessly made, and that the Complainant further neglected to cure the reckless allegations". Respondent concludes that "the maintenance of false, reckless and defamatory allegations (..) rises to the level of abuse of the Policy under Rule 15."
6. Discussion and Findings
Under the Policy, paragraph 4(a) Complainant must prove that each of the following three elements are present:
(i) the Domain Name is identical with or confusingly similar to a trademark in which the Complainant has rights; and
(ii) the Respondent has no right or legitimate interest in respect of the Domain Name;
and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Respondent's domain name is confusingly similar to Complainant's LAWFINDERS mark since it is only one letter different from Complainant's mark. The deletion or addition of one letter is an insignificant change for the purposes of Policy, paragraph 4(a)(i) (see Universal City Studios, Inc. v. HarperStephens, WIPO Case No. D2000-0716 (September 5, 2000) finding that deleting the letter "s" from Complainant's UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it.)
Therefore, according to the Policy, paragraph 4(a)(i), the disputed domain name is confusingly similar to a trademark in which Complainant has rights.
B. Rights or Legitimate Interests
The Complainant argues that Respondent does not provide any legitimate commercial services on its website since the domain name in question is a "mere portal to other websites".
Under the Policy, paragraph 4(c), legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
The Respondent appears to have registered the domain name on March 27, 2000. Unfortunately, there appears to be no evidence as to when Respondent actually began to use the domain name.
When it did begin using the domain name, Respondent used it basically to provide a list of links to other sites that appear to contain material with a legal content. Therefore, Respondent did not and does not use the domain to offer its goods or services but rather to offer access to other links. The Respondent earns its income from this activity through payments by advertisers.
As described by Respondent and examined by other Panels, namely in PwC Business Trust v. Ultimate Search, WIPO Case No. D2002-0087: "Respondent has registered a portfolio of domain names incorporating common words, generic terms, short terms, and useful phrases. These domain names are employed in conjunction with an advertising subscription database, operated by a third party advertising consolidator, to return search results from the database on the basis of correspondence between terms in the domain names and search terms for which advertisers have paid subscriptions on a performance basis."
In the latter case, the panel found that "although the manner in which the Respondent provides these services may be open to criticism(...), there is nothing in the Policy or in current ICANN registrar registration agreements which prohibits this type of domain name use by a domain name holder".
Furthermore, in Career Guidance Foundation v. Ultimate Search, WIPO Case No. D2003-0323 concerning the same Respondent, the panel found that "it seems clear that the Respondent is in the business of obtaining lapsed domain names and putting them to use in this manner. On balance, the Panel is inclined to think that such activities, where carried out in relation to a domain name which is generic or which is not clearly associated with a single entity (..) does constitute rights or legitimate interests within the meaning of the Policy. The Panel notes that other panels have apparently agreed with this view in relation to the activities of the Respondent."
As discussed in Part C, Respondent uses two descriptive words to provide links to legal sites. The Respondent is paid for this service by advertisers. This is a commercial activity and therefore according to Paragraph 4(a)(ii) and Paragraph 14(b) of the Rules, it appears that Respondent has rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
In many instances, it is not necessary to review the allegation of bad faith once there has been a finding that Respondent has rights or a legitimate interest in respect of the domain name. However, this case is somewhat distinct in that the finding in part B is dependent on the finding that Respondent is using two descriptive words.
Complainant alleges that since Respondent "does not provide any legitimate
commercial services through the website", "the only logical conclusion is that the respondent registered the name for the purpose of selling, renting, or otherwise transferring the domain name registration to someone, such as the Complainant or a competitor of the Complainant, for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the disputed domain name."
However, Complainant does not bring any evidence that Respondent pursued this objective, nor does it bring any evidence that Respondent has used "adhoc spyware" "for the purpose of luring visitors and tracking their contact information for future use". Therefore, this ground of the Complaint is rejected.
With respect to the name itself, Complainant has obtained a trademark for what are basically descriptive words. Members of the Panel are aware of Complainant and its services, but Complainant's trademark has not become so closely associated with Complainant as to give a strong secondary meaning.
Furthermore, Complainant does not bring any evidence that Respondent was aware of Complainant or its use of the term Lawfinders or its trade mark when Respondent registered its domain name. Nor has Complainant provided evidence that Respondent sought to sell the domain name to Complainant or any of its competitors.
The Panel takes the view that this case is analogous to Career Guidance Foundation v. Ultimate Search, WIPO Case No. D2003-0323. That case concerned the domain name. The panel in that case stated that this term is "a word which derives from the combination of two ordinary English words which, by their nature, are descriptive" and therefore, "Complainant faces a heavier burden in establishing that the Respondent is acting in bad faith, in comparison with those cases where the domain name is an invented or fanciful term which corresponds to a trade mark of a complainant".
Indeed, it appears to the Panel that there is no evidence of intent on the part of Respondent to use Complainant's trade mark as such, but rather to use the word "Lawfinder" as a descriptive word enabling internet users to find links relating to online legal services.
Therefore, according to the Policy, paragraph 4 (a)(iii) and Paragraph 14(b) of the Rules, it appears that Respondent has not registered nor used the domain names in bad faith.
7. The issue of Abuse of the Policy
Respondent alleges that "the maintenance of false, reckless and defamatory allegations(..)" on the part of Complainant "rises to the level of abuse of the Policy under Rule 15."
In particular, Respondent objects to Complainant's claim that it used "spy-ware" on its site.
Paragraph 15(e) of the Rules provides that "If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."
The issue under Paragraph 15(e) of the Rules is whether the complaint has been brought in bad faith, not whether Complainant has failed to prove every factual allegation in the Complaint.
It appears to the Panel that the Complaint was filed by Complainant because of the similarity between Complainant's trade mark LAWFINDERS and Respondent's domain name .
While, in this case the Panel finds that the term "Lawfinders" has not acquired a strong enough secondary meaning to justify the Complaint, it is both reasonable and understandable that Complainant finds the use of domain name to be objectionable.
Complainant's trademark predated the registration of the domain name and it appears to be undisputed that Complainant has been active for approximately 20 years. Respondent decided to register a domain name for use with respect to access to legal sites. For Respondent to then complain that a trademark holder is acting in bad faith in filing a complaint when the domain name differs by only one letter from the trademark is unjustified.
Therefore, the panel does not agree that this case constitutes an abuse of the Policy.
8. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Complaint be denied and that Respondent's request for reverse domain name hijacking be denied.
Thomas Webster
Presiding Panelist
James A. Carmody
Panelist
David E. Sorkin
Panelist
Dated: May 28, 2004
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