Complainant is LegalZ, Inc. of Glendale, California, United States of America (“United States”), represented by Bryan Cave, LLP, United States.
Respondent is John Goldstein, BBT Services of St. Marys, Georgia, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2016. On July 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2016, the Registrar 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 11, 2016.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on August 17, 2016. 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 is a provider of online legal services for small businesses and consumers, providing legal document services, attorney listings, and general legal information. Complainant owns the domain name and operates its business through the website hosted thereon.
Complainant owns numerous United States Trademark Registrations for its LEGALZOOM mark, with its first use dating back at least as early as July 15, 2000.
The disputed domain name was registered on November 16, 2012, and redirects to Respondent’s website, where Respondent advertises its JFK Land Trust business. 5. Parties’ Contentions A. Complainant
Complainant states that the LEGALZOOM mark has become extremely valuable and famous as a result of the money, time, effort and substantial resources that it has spent to market, advertise and build consumer recognition of and goodwill associated with the LEGALZOOM mark. Complainant asserts that the disputed domain name is identical and confusingly similar to its LEGALZOOM mark because it wholly incorporates the mark, with only the addition of the generic Top-Level Domain “.info.”
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not associated with Complainant, has never sought or received authorization or a license to use Complainant’s LEGALZOOM mark, is not commonly known by the LEGALZOOM mark, has not made a legitimate offering of goods or services under the LEGALZOOM mark, and is not making any legitimate, noncommercial use of the disputed domain name.
Regarding bad faith, Complainant contends that Respondent clearly knew of Complainant’s LEGALZOOM mark because Complainant had been using the mark for over ten years before Respondent registered the disputed domain name, and that the mark had become famous long before Respondent registered the disputed domain name. Complainant alleges that Respondent is using the disputed domain name in bad faith because it redirects to , which hosts a website that advertises services it claims will help consumers legally hide their real estate assets and avoid lawsuits. Complainant states that because these services are similar to those offered by Complainant, Respondent is intentionally diverting consumers for commercial gain. Finally, Complainant states that Respondent has failed to respond to numerous cease-and-desist letters concerning the disputed domain name. B. Respondent
Respondent did not file a response to the Complaint. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the LEGALZOOM mark in view of its numerous United States Trademark Registrations. The Panel further finds that the disputed domain name is confusingly similar to the LEGALZOOM mark because it incorporates the entirety of the trademark. The addition of the generic Top-Level Domain “.info” does not differentiate the disputed domain name from Complainant’s mark.
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The evidence of record supports Complainant’s unrebutted allegations that Respondent is not authorized to use the LEGALZOOM mark, is not affiliated with Complainant and is not known by the disputed domain name. Respondent is using the disputed domain name to redirect to its own website where it offers legal related services; Respondent presumably profits from its services, such that this use cannot be considered a legitimate noncommercial or fair use. Further, “[i]t is well-settled under the Policy that a knowingly infringing use of a trademark to offer goods and services is not a bona fide offering of goods and services under the Policy.” Van Gogh Museum Enterprises BV and Stichting Van Gogh Museum v. M. Ohannessian,WIPO Case No. D2001-0879. Complainant has therefore made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has failed to rebut that showing.
The Panel finds that Complainant has carried its burden and satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that Complainant’s LEGALZOOM mark was in use for over twelve years before Respondent registered the disputed domain name, and that the LEGALZOOM mark has garnered substantial public recognition, such that it is highly unlikely that Respondent was unaware of Complainant’s rights when it registered the disputed domain name. The Panel therefore finds that Respondent registered the disputed domain name in bad faith.
Respondent is using the disputed domain name to redirect to Respondent’s website, where Respondent advertises its JFK Land Trust business. Respondent is therefore using Complainant’s LEGALZOOM mark in the disputed domain name to attract Internet users for its commercial benefit based on confusion with Complainant’s LEGALZOOM mark. The Panel finds that this use constitutes bad faith under the Policy, paragraph 4(b)(iv). Chanel, Inc. v. Estco Technology Group,WIPO Case No. D2000-0413.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied. 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.
Lawrence K. Nodine
Sole Panelist
Date: August 31, 2016
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