WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Legal Rights Defenders, Inc. v. Texas International Property Associates Case No. D2009-0284 1. The Parties
Complainant is Legal Rights Defenders, Inc., South Pedro, California, United States of America, represented by Willenken Wilson Loh & Lieb, LLP, United States of America.
Respondent is Texas International Property Associates, Dallas, Texas, United States of America, represented by Law Office of Gary Wayne Tucker, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Compana LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2009. On March 5, 2009, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the Domain Name. On March 9, 2009 Compana LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2009. The Response was filed with the Center on April 1, 2009. Complainant submitted a Supplemental Filing on April 6, 2009, and Respondent filed an objection to this filing on April 14, 2009. The Panel determines in accordance with Rules, paragragh 12 that it will accept and consider Complainant's Supplemental Filing in this case, as well as Respondent's reply thereto.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on April 14, 2009. The Panel finds that it was properly constituted. 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
Complainant, Legal Rights Defenders, Inc., is a California company, which operates a service for attorney joint advertising. Complainant first used its trademark, 1-800-THE LAW 2, in commerce on June 15, 1985 and received a registration from the United States. Patent and Trademark Office (USPTO) for this mark some ten years later on November 21, 1995 (registration no. 1936860). Declaration of Mary Ann Walker, at Annex 4, Complaint. Due to inadvertent failure to pay appropriate renewal fees, this trademark registration was canceled in August 2006. In October 2006, Complainant filed for the registration of the trademark, 1-800-THE-LAW2, which sets forth an alternative spelling of its prior mark, and this registration was issued by the USPTO on January 15, 2008. Complainant maintains its website at www.1800. Complainant has spent nearly US $36 million on advertising and promotion in television, radio, newspaper and other promotions. Complainant currently advertises its services under the 1-800-THE-LAW2 mark on radio, television and cable at least 675 times per week. Since 1985, over 388,680 consumers have been placed in contact with attorneys to assist them with their legal problems. Declaration of Mary Ann Walker, at Annex 4, Complaint.
Respondent is in the business of registering and utilizing domain names. According to the registrar's verification response, Respondent is registrant of the Domain Name . According to a WHOIS database report submitted by Complainant, the record of registration for the Domain Name was created on February 19, 2005. The Domain Name links to a landing page or “link farm,” which links to third-party sites.
The Registration Agreement in effect between Respondent and Compana, LLC subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
Respondent has been the respondent party in more than 100 cases filed with the Center or with the National Arbitration Forum. In certain cases Respondent, unlike in this case, has consented to the transfer of the domain name in dispute. The Panel observes that in the vast majority of the other cases, Respondent has been determined to have engaged in abusive domain name registration and use under the Policy for conduct similar to that alleged against it by Complainant in this case. See, e.g., The Diller Corporation c/o Formica Corporation v. Texas International Property Associates,WIPO Case No. D2008-0628, and Brownells, Inc. v. Texas International Property Associates,WIPO Case No. D2007-1211. Other panels have stated that such determinations should provide a sufficient basis for determinations whether Respondent has engaged in a pattern of bad faith registration of domain names. See National Osteoporosis Foundation v. Texas International Property Associates,WIPO Case No. D2008-0913, at note 1; Legacy Health System v. Texas International Property Associates,WIPO Case No. D2008-1709 (“A search of UDRP precedent reveals over 80 cases in 2007 and 2008 where Texas International Property Associates was the Respondent, that collectively resulted in a transfer of more than 150 disputed domain names to the complainants. Earlier cases have noted this trend, and condemned Respondent for numerous bad faith registrations.”). 5. Parties' Contentions A. Complainant
Complainant contends that the Domain Name is confusingly similar to a mark in which Complainant has rights. Respondent, a well-known cyber-squatter, has registered the Domain Name that is confusingly similar to Complainant's nearly twenty-four year old mark. The Domain Name is similar to Complainant's mark in appearance, sound, and spelling. The Domain Name incorporates the entire substantive portion of Complainant's mark on which the typical consumer focuses. As a result, it looks primarily the same, sounds primarily the same, and connotes exactly the same meaning. The mere subtraction of the “1-800” - a common toll-free designation that a consumer is not likely to focus upon - does nothing to alleviate the confusion.
Complainant maintains that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant has never licensed or otherwise authorized or permitted Respondent to utilize the marks 1-800-THE LAW 2 or 1-800-THE-LAW2 or the Domain Name or any other mark or domain name similar to Complainant's mark. Declaration of Mary Ann Walker, 8, at Annex 4, Complaint. Complainant has found no evidence to support the idea that Respondent is using the Domain Name in connection with bona fide offering of goods or services. Respondent is a well-known cybersquatter, not a law firm, lawyer, lawyer referral service, or attorney joint advertising service. Respondent is not (nor has it ever been) commonly known by the Domain Name.
Complainant contends that Respondent is not making a legitimate, non-commercial or fair use of the Domain Name without intent for commercial gain. To the contrary, the WHOIS printout demonstrates that Respondent has submitted the Domain Name to the domain name monetization company, Hit Farm, and is using it to host a “link farm” for commercial gain. Particularly egregious is the fact that Respondent's “link farm” provides links to sites that are in competition with Complainant. Annex 9, Complaint. At the same time that Respondent is generating “click through” and “pop up ad” revenue for itself, it is simultaneously generating confusion for the Internet user who is looking for 1-800-THE-LAW2 and is redirected to any number of different sites that are not supported or affiliated with Complainant but are actually competing with Complainant. Time and again, UDRP panels have held that providing links to competitor sites does not constitute a bona fide offering of services. Rather, it is indicative of bad faith.
Complainant anticipates that Respondent may advance its typical argument that the use of a link farm in connection with a generic name can be bona fide offering of services. Complainant urges, however, that as in previous cases, Respondent's argument must fail. Any argument that the Domain Name was registered because of its generic quality must be rejected. Respondent's argument fails because neither 1-800-THE-LAW2 nor is generic and Complainant's mark is entitled to a presumption of validity by virtue of its registration with the USPTO. Given the sheer number of Respondent's registrations, it is obvious that Respondent is using an automated or quasi-automated system to register domain names. However, while that system may register generic domain names from time to time, it is equally obvious that, given the numerous UDRP cases filed against Respondent, its system also habitually registers “typos” and variations of the trademarks of others. Respondent is simply not screening its domain names for registrations of trademarked terms despite numerous decisions from UDRP panels imposing this requirement on professional domainers. For Respondent to argue that it registered the Domain Name because of its generic quality is simply untrue. Respondent is now simply trying to advance a post-hoc excuse for its conduct.
Complainant also contends that Respondent would be hard-pressed to show why it would register the Domain Name in the first instance absent the existence of Complainant's mark. There is no anticipated sequel for the 1974 movie “The Law.” “Law 2” is not a statement or phrase that is common in day-to-day conversations. One does find many registrations for other amalgamations of “thelaw” and some random number such as , , or . Essentially, there is no good reason why Respondent would add the number “2” after the phrase “the law.”
Complainant also anticipates that Respondent may argue that it cannot be held responsible for the sponsored links that appear on its website because it has no control over how Hit Farm populates its website or how Google and Yahoo! operate their sponsored advertising. But, given that Respondent is profiting from the sponsored advertising that appears on its website, this argument must be rejected in this case as it has been in the past.
With regard to registration and use in bad faith, Complainant states that Respondent's business practices are well-known: it registers domain names incorporating the trademarks of others in order to attract Internet users to Respondent's web sites for commercial gain by creating a likelihood of confusion with Complainant's mark and suggesting a false sponsorship between Complainant and the goods/services that appear in Respondent's “link farm.” When the user clicks on a link or pop ad at Respondent's web site, Respondent makes money. This practice has been consistently condemned by UDRP panels and considered to be indicative of bad faith.
This case is nearly identical to E.J. McKernan Co. v. Texas International Property Associates,WIPO Case No. D2007-1499, in which the panel concluded that respondent had acted in bad faith. In that case, to successfully make out a showing of bad faith, complainant pointed out that: (1) respondent registered a domain name incorporating complainant's mark despite having no connection to complainant; (2) there was no question that respondent had actual knowledge of complainant's prior rights in the MCKERNAN mark; (3) the only “use” of the disputed domain name had been to divert unsuspecting viewers seeking information regarding complainant and its services to an unrelated web site containing links to goods/services not authorized by complainant; and (4) respondent is a well-known cybersquatter, having been involved in numerous UDRP proceedings, resulting in the transfer of approximately 33 domain names as of that time. B. Respondent
Respondent contends that the case should be dismissed because Complainant does not have rights necessary to bring an action under the Policy. Complainant's lapsed trademark should play no role in this case and any discussion must focus on the trademark registration attained recently on January 15, 2008. While Complainant has certain trademark rights based on this registration, it does not automatically provide rights necessary under the Policy because placement on the USPTO Principal Register does not absolutely protect marks on the weaker end of the spectrum.
Respondent also maintains that the Domain Name is not identical to the Complainant's trademark and, as such, Complainant has made the absurd argument that the “1-800” portion of its mark is irrelevant for purposes of considering whether the Domain Name is confusingly similar to Complainant's 1-800-THE LAW2 mark. This argument fails for two reasons. First, trademarks should be taken as a whole and not in a piecemeal fashion. Second, the mark consists of a merely descriptive term with numerals in the form of an alphanumeric phone number. The Domain Name, like the non-numeric portion of the trademark, is merely descriptive. Last, Respondent contends that Complainant cannot, on the basis of its compound mark, claim an interest in the mark apart from the combination with the area code designator. The absence of the toll free identifier (i.e., “1-800”) precludes relief. See Dial-A-Mattress Operating Corp. v. Ultimate Search,WIPO Case No. D2001-0764 (faced with a claim to by the holder of a mark for “1-800-MATTRES, AND LEAVE OFF THE LAST S THAT'S THE S FOR SAVINGS,” the panel found that complainant cannot, on the basis of its compound mark, claim an interest in the misspelling “MATTRES” apart from the combination with an area code designator, and that complainant does not have a protectable interest in the underlying generic term “mattress” or misspellings thereof).
Respondent also contends that Complainant has failed to prove Respondent has no rights or legitimate interest in the Domain Name. Respondent maintains that click-through services are now common and can be considered a bona fide offering of services unless the bona fides of the offering is tainted by evidence of bad faith. Here, there is no bad faith because the Domain Name consists of a commonly used acronym combined with a descriptive phrase to which no one party has exclusive rights. Thus, if a respondent is using a generic word to describe his product or business or to profit from the generic value of the word without intending to take advantage of a complainant's rights in that word, then it has a legitimate interest. Common words and generic terms are legitimately subject to registration as a domain name on a first-come-first served basis. The mere ownership of a common-term domain name should, in and of itself, establish the owner's rights and legitimate interest. The fact that advertising revenues may be generated by Respondent's activity also demonstrates legitimate interest. Moreover, other UDRP panels have recognized that the domain name holder is not responsible for potentially offending content where they have contracts with third parties such as HitFarm.
Respondent argues that there has been no bad faith registration and use. Respondent states that Complainant's allegations of user confusion are unsubstantiated. There is no evidence that Respondent has specifically intended to confuse consumers seeking Complainant. Respondent has had no actual knowledge of Complainant's business and mere registration without actual knowledge does not impute a finding of bad faith. Respondent points out that while it has been on the losing end of a number of UDRP decisions, it has also prevailed in at least 15 decisions. The overall picture is more nuanced than Complainant has portrayed it. Respondent is the registrant of thousands of domain names which consist of electronically registered generic words. Registering such terms to which no other party can claim exclusive use is a legitimate business and done in good faith. Respondent registered the Domain Name because of it is a common education related acronym combined with a descriptive education related phrase. C. Complainants Supplemental Filing
Complainant makes three submissions in its supplemental filing. First, Complainant argues that Respondent's position that the absence of the toll free identifier here (i.e., “1-800”) precludes relief is erroneous. By citing to Dial-A-Mattress Operating Corp. v. Ultimate Search,WIPO Case No. D2001-0764, Respondent ignores the predecessor case of Dial-A-Mattress Operating Corp. v. N, Inc.,WIPO Case No. D2001-0240. In contrast to the decision in Ultimate Search, in Noname the panel found that the domain name was confusingly similar to Complainant's mark despite the fact that it, too, lacked the toll free identifier “1-800”. Of these two cases, Noname is the more applicable case to apply here. Here, as in Noname, the registrant is a U.S. company who is presumed to have knowledge of Complainant's trademark by virtue of its federal registration in the United States (in Ultimate Search the registrant was a Hong Kong company). Second, as in Noname, the registrant here is trading off Complainant's goodwill and using the Domain Name to resolve to a web site where a variety of hyperlinks to a variety of products including legal services are offered. Respondent is not a company that is, in fact, solely offering attorney joint advertising, legal services, or legal referrals.
Second, with regard to Respondent's position that it had no actual knowledge of Complainant's business, Complainant maintains that the overriding number of UDRP panels in cases where the registrant is a professional domainer who registers domain names in bulk, as Respondent did here, apply a different test: whether the domainer took any actions in the first instance to avoid the registration of an infringing domain name. Panels have formulated a different test for professional domainers with automated processes. Otherwise, professional domainers could always escape liability by claiming lack of knowledge because they closed their eyes to how the automated process was running. Here, Respondent has made no showing that it exercised “reasonable efforts” to meet this “higher burden” which is imposed on professional domainers.
Last, Respondent's submission is predominantly silent as to why Respondent registered the Domain Name in the first instance. The only explanation given is that it “registered the disputed domain name because it is common education related acronym combined with a descriptive education related phrase.” Respondent makes absolutely no attempt to explain what that means, and no explanation is readily ascertainable from the face of the Domain Name. The domain name is neither a well-known education related acronym nor is it an education related phrase. Simply put, Respondent cannot provide a single credible reason why it registered the Domain Name. Indeed, there is no basis for combining the number “2” with the phrase “thelaw” other than to hearken to Complainant's mark 1-800-THE-LAW2. As Complainant's exhibits show, when one enters the phrase “the law 2” into the Yahoo! search engine, Yahoo!'s first suggestion is to try “1 800 the law 2.” Clearly, the phrase “the law 2” is associated with Complainant's mark and only Complainant's mark. D. Complainants Supplemental Filing
Respondent submitted a reply to Complainant's Supplemental filing, which strongly objects to the filing and suggests that the standards under the UDRP are different from those of a court of law in the United States. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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 directs that Complainant must prove each of the following:
(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) that Respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has demonstrated that it has common law and had registered trademark rights in its 1-800-THE LAW 2 trademark, which it used from 1985 until 2006, and rights in a very close variation of that mark, 1-800-THE LAW2, from October 2006 through the present. Complainant has continuously used one or the other of these virtually identical marks (differing by only a space between the word “law” and the digit “2”) for approximately 24 years to promote its company, which operates a service for attorney joint advertising. While the term “law” might be a generic reference to statutes, cases and regulations, neither 1-800 THE LAW2 nor “thelaw2” is a generic descriptive for a company offering attorney joint advertising services. Complainant has submitted evidence, without challenge, that it has spent nearly $36 million on advertising and promotion in television, radio, newspaper and other promotions, and that, since 1985, it has assisted over 388,680 consumers to place them with attorneys. Complainant maintains its website at “www.1800”, having registered the corresponding domain name in 1996. Respondent contends that Complainant's lapsed trademark should play no role in this case. However, given the long and continuous use of the two almost identical marks by Complainant, and the registration of Respondent's Domain Name in February 2005, approximately 20 years after Complainant first started using its mark, the Panel disagrees. Complainant has had continuous trademark rights on which it can rely throughout the relevant period in this case.
The Panel also finds that the Domain Name is confusingly similar to Complainant's trademark. The Domain Name incorporates the substantive portion of Complainant's mark and as a result, it looks primarily the same, sounds primarily the same, and connotes the same meaning as Complainant's mark. The omission of the “1-800”, which is a common toll-free designation in the United States, does little to alleviate the confusion in this case. See St. Martins Victoria Pty Ltd., et al. v. Texas International Property Associates,WIPO Case No. D2008-1464 (“[T]he omission of the word ‘observation' from the Domain Name is not sufficient to alleviate the confusing similarity between the Domain Name and at least the first of Complainant's marks.”); Dial-A-Mattress Operating Corp. v. N, Inc.,WIPO Case No. D2001-0240 (Panel found that the domain name was confusingly similar to Complainant's mark despite the fact that it lacked the toll free identifier “1-800”). Moreover, in contrast to Respondent's argument that Complainant's trademark consists merely of descriptive term with numerals in the form of an alphanumeric phone number (i.e., 1-800), the addition of the digit “2” after the term “the law” provides distinctiveness to Complainant's mark, as this is not a usual combination. As Complainant has observed, Respondent has provided no good reason as to why it chose to add the number “2” after the phrase “the law” in the Domain Name , which makes the Domain Name confusingly similar to Complainant's mark. See Darden Corporation v. Texas International Property Associates,WIPO Case No. D2008-0374 (“Respondent has not provided any reason for selecting this particular combination of words which have no apparent meaning apart from identifying Complainant's business”); Conwood Company, LLC, et al. v. Texas International Property Associates,WIPO Case No. D2008-0376 (finding that even if “grizzly” was a generic word, Respondent had no reason to combine grizzly with the words “chew” and “snuff”).
The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights, and that Complainant has thus established the first element of its claim under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel is reminded that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy paragragh 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.
Complainant has shown that Respondent is not commonly known by the Domain Name, nor has Respondent ever been licensed or otherwise authorized or permitted to use Complainant's marks. Respondent is using the Domain Name as a “link farm” through the domain name monetization company, Hit Farm, which populates the website with links to third party vendors of services, including some in competition with Complainant, for the purpose of commercial gain from click-through revenues. See Legacy Health System v. Texas International Property Associates,WIPO Case No. D2008-1709 (“Hitfarm's own marketing and prior UDRP decisions establish that Hitfarm is ‘a pay-for-traffic web engine that pays compensation to domain name owners for pop-ads.'“). Respondent has neither denied this use of the Domain Name, nor provided any evidence of any other possible right or legitimate interest in the Domain Name. Respondent has argued there is no bad faith because the Domain Name consists merely of a commonly used acronym combined with a descriptive phrase to which no one party has exclusive rights. As noted above, however, Complainant's trademark is not merely made up of a descriptive phrase and a phone number area-code prefix. It is the combination of the term “thelaw” (with no space) with the digit “2” that creates more distinctiveness.
The Panel agrees with previous panels that have found that Respondent's use of a domain name, which incorporates a third party's trademark in connection with an Internet web site that merely lists links to third party web sites, including those offering goods and services in direct competition with a complainant's products, is not a bona fide offering of services and is not a legitimate non-commercial or fair use of the disputed domain name.” This is particularly the case when there is other evidence of bad faith, as noted below. See e.g., E.J. McKernan Co. v. Texas International Property Associates,WIPO Case No. D2007-1499 (“Previous panels have found that the use of a domain name that incorporates a third party's trademark in connection with an Internet web site that merely lists hyperlinks to third party web sites, including those offering goods and services that are in direct competition with a complainant's products, is not a bona fide offering of services and is not a legitimate non-commercial or fair use of the disputed domain name.”); United Consumers Club, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0987 (finding that, despite operating a link farm, Respondent had no right or legitimate interest in the domain name); Asian World of Martial Arts, Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 (“Respondent's websites offers links to and advertisements for Complainant's competitors. That does not constitute a nominative fair use; rather, it appears to constitute deceptive bait and switch advertising practices.”).
The Panel finds that Complainant has demonstrated sufficiently that Respondent has no rights or legitimate interests in the Domain Name and therefore established the second element of its claim under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
With regard to bad faith, the Panel agrees with the decision in Grundfos A/S v. Texas International Property Associates,WIPO Case No. D2007-1448, which explained in pertinent part:
“Those who register domain names, and particularly those who register domain names in large numbers using automated programs and processes are not allowed to simply turn a blind eye to the possibility that the names they are registering will infringe or violate the rights of trademark owners.
It seems to the Panel that the developing consensus is that the domainer must make reasonable good faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others.
If such a domainer paid no attention whatsoever to whether its registrations might be identical to third party marks, the domainer's practice might well support a finding that it has been engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks.”
See also The Fragrance Foundation, Inc. v. Texas International Property Associates,WIPO Case No. D2008-0982 (stating that “[e]specially when the trademark is already publicly registered in the country where the parties are located prior to the domain name registration, and the respondent is involved in the business of registering thousands of domain names, panels consider a higher standard of diligence on the part of domainers to be appropriate” and “[i]t seems to this Panel and others that people who make a living from registering vast numbers of domain names must make a reasonable effort…to ensure that they are not infringing on the rights of others.”).
In keeping with these previous decisions against Respondent, it bears emphasizing here that the registration agreement which Respondent entered into (with the registrar Compana) when it registered the Domain Name provides stipulations that are relevant to Respondent's responsibilities:
“(ii) to the best of your knowledge and belief, neither the registration of the domain name…nor the manner in which you intend to use the domain name …infringes upon or otherwise violates the legal or equitable rights of any third party, and (iii) it is your responsibility to determine whether your domain name registration infringes or violates someone else's rights; (iv) you are not registering …the domain name for an unlawful purpose and you will not knowingly use the domain name in violation of any applicable law or regulations….”
(Emphasis added). The Respondent has chosen a Domain Name that is confusingly similar to the Complainant's trademark, following a pattern that has been found in so many other cases against Respondent. This Panel finds that Respondent has registered and used the Domain Name in bad faith, under paragraphs 4(b)(ii) and (iv) of the Policy. 7. 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 Domain Name, be transferred to Complainant.
Christopher S. Gibson
Sole Panelist
Dated: April 28, 2009
Full & Egal Universal Law Academy