The Complainant is Pro Se Planning, Inc. DBA DivorceWriter of Medina, Washington, United States of America, internally represented.
The Respondent is Divorce-Writer of Sunnyvale, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2013. On August 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 2013, the Registrar transmitted its verification response to the Center by email confirming the Respondent as the registrant and provided 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 28, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 17, 2013. The Respondent did not submit a formal timely Response. Accordingly, the Center notified the Respondent’s default on September 18, 2013.
In response to the Center’s notification of default, the Respondent communicated to the Center through series of emails on September 18, 19, and 20, 2013.
The Center appointed William R. Towns as the sole panelist in this matter on September 25, 2013. 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 paragraph 7 of the Rules. 4. Factual Background
The Complainant provides online self-preparation divorce document services under the trademark DIVORCEWRITER. The Complainant obtained a United States trademark registration for DIVORCEWRITER on September 18, 2012 and has used the mark in commerce since as early 2005. The Complainant has submitted several online blogs and articles dating back as far as 2007 recognizing DIVORCEWRITER as a popular and well-known online self-preparation divorce product. In addition, the Complainant has registered and uses the domain name with its business.
The Respondent registered the disputed domain name on October 9, 2010. The disputed domain name resolves to the Respondent’s website “Divorce-Writer a Pro Per Clinic Service,” offering online pro se legal document preparation services. The Respondent also provides pro se legal document preparation services on another website -- “Pro Se Clinic” -- for which the Respondent registered domain name on March 5, 2009. The home page of the Respondent’s Pro-Se-Clinic website features text that is identical to text already in use on the Complainant’s website prior to the Respondent’s registration of the disputed domain name, as reflected in a screen capture of the Complainant’s home page on September 14, 2010. 5. Parties’ Contentions A. Complainant
The Complainant asserts that it has continuously used the mark DIVORCEWRITER in the United States in conjunction with the sale of pro se divorce-related legal products and services since 2005, and that DIVORCEWRITER has been recognized as far back as 2007 as a popular and well-known self-preparation divorce-related product. The Complainant submits that the disputed domain name is identical to the Complainant’s mark with the exception of a hyphen added by the Respondent between “divorce” and “writer”. The Complainant maintains that the likelihood for confusion is significantly increased because the Respondent uses the disputed domain name to also sell pro se divorce-related products and services.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent is not affiliated with the Complainant, is not licensed to use the Complainant’s trademark, and is not commonly known by the disputed domain name. The Complainant explains that it was actively using the domain name for more than four years before the Respondent registered the disputed domain name, and that a comparison of unique visitors to the Complainant’s website (100,000 per month) and to the Respondent’s website (not measurable), clearly illustrates that the Respondent is not commonly known by the disputed domain name. The Complainant further asserts that Google “natural” search results consistently show the Complainant’s website in the first search result position for searches of most variations of “divorce writer.” The Complainant further contends that the Respondent is using the disputed domain name with intent for commercial gain to misleadingly divert consumers and to tarnish the Complainant’s mark, and that the Respondent thus is not using the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent clearly was aware of the Complainant, a well-known provider of pro se divorce legal products and services and the Complainant’s DIVORCEWRITER mark when registering the disputed domain name, which is virtually identical to the Complainant’s mark. The Complainant further explains that the Respondent was already selling pro se divorce products and services on the “” website, on which the Respondent has copied portions of the Complainant’s website. In view of the foregoing, the Complainant submits that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark, using the domain name in bad faith to profit from the diversion of Internet users. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. After the deadline for submitting the Response had passed and the Center had notified the Respondent of its default, the Respondent submitted several emails to the Center, in which the Respondent advised that it does not accept documents online and that the Complainant should to be served through the registered agent for National Court Research Inc., a Nevada corporation.1 The Respondent further claimed to have been unaware of the Complainant when registering the disputed domain name in 2010, alleging it first became aware of the Complainant in 2012 after receiving numerous customer complaints, which according to the Respondent were in fact the Complainant’s customers. In an apparent reply to the Complaint, the Respondent averred that it has not engaged in unfair business practices or infringed any trademark rights, and is not engaged in the unauthorized practice of law. The Respondent submits that it is not in bad faith and is not using the disputed domain name to take customers from the Complainant. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar and virtually identical to the Complainant’s mark, in which the Complainant has established rights through registration and use. In considering this issue, the first element of the Policy stands essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the disputed domain name incorporates the Complainant’s DIVORCEWRITER, merely adding a hyphen between “divorce” and “writer” and is confusingly similar if not identical to the Complainant’s mark.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. The disputed domain name is confusingly similar and virtually identical to the Complainant’s mark. It is undisputed that the Respondent has not been authorized to use the Complainant’s mark. The Respondent notwithstanding has registered and is using the disputed domain name with a website offering products and services in competition with the Complainant.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent did not submit a timely formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, including the Respondent’s emails to the Center on September 18, 19 and 20, 2013 and finds nothing in the record to support a claim that the Respondent’s registration and use of the disputed domain name falls within any of the “safe harbors” of paragraph 4(c) of the Policy.
To the contrary, and based on the totality of facts and circumstances in the record of this proceeding, the Panel finds that the Respondent most likely was aware of the Complainant and the Complainant’s mark when registering the disputed domain name. The Panel further concludes that the Respondent most likely registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant’s mark through the creation of Internet user confusion. Internet users could easily expect the disputed domain name to be linked to the Complainant’s website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774. Moreover, the Respondent’s assertion that it has received numerous consumer complaints intended for the Complainant, if true, is some evidence of such confusion.
In view of the foregoing, the record does not reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Further, nothing in the record supports a claim that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. The Respondent has not been authorized to use the Complainant’s mark, and in the absence of any good faith use of the disputed domain name, the Respondent cannot rely on a claim to have been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel concludes that the Respondent most likely was aware of the Complainant and the Complainant’s mark when registering the disputed domain name. The record in this case reflects that in all likelihood the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights through the creation of Internet user confusion. The Panel finds that the Respondent registered and is using the disputed domain name in bad faith to intentionally attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: October 9, 2013
1 The Panel has reviewed the record, which clearly reflects that the Center provided notification of the Complaint to the Respondent in accordance with the Policy and Rules. Moreover, given the Respondent’s references in its untimely emails to contentions raised in the Complaint, it is evident to the Panel that the Respondent received the Complaint and had ample opportunity to submit a timely formal reply, had the Respondent elected to do so.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
Full & Egal Universal Law Academy