The Complainant is LegalZ, Inc. of Glendale, California, United States of America ("United States") represented by Bryan Cave, LLP, United States.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, Bahamas / Maddisyn Fernandes of La Paz of Bolivia (Plurinational State of). 2. The Domain Name and Registrar
The disputed domain name is registered with Internet Domain Service BS Corp (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 28, 2017. On September 28, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 4, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on October 6, 2017.
The Center verified that the Complaint together with the amendment to the Complaint (hereafter referred to as 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 the Respondent of the Complaint, and the proceedings commenced on October 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 31, 2017.
The Center appointed Alfred Meijboom as the sole panelist in this matter on November 3, 2017. 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
The Complainant is a provider of online legal services for small businesses and consumers, providing legal document services, attorney listings, and general legal information. The Complainant owns the domain name and operates its business through the website hosted thereon. The Complainant owns several United States ("U.S.") trademark registrations for its LEGALZOOM mark, as well as 28 trademark registrations elsewhere, including:
1. U.S. Registration No. 3,210,861 LEGALZOOM, registered on February 20, 2007 for "attorney referral services" in International class 35;
2. U.S. Registration No. 3,210,728 LEGALZOOM, registered on February 20, 2007 for "legal document preparation services and providing general legal information via a website on global computer" in International class 42;
3. U.S. Registration No. 3,211,009 LEGALZOOM, registered on February 20, 2007 for "providing online directory information on attorney listings; attorney referral and matching services" in International class 35; and
4. U.S. Registration No. 3,569,400 LEGALZOOM.COM, registered on February 3, 2009 for "providing online directory information on attorney listings and attorney referral and matching services" in International class 35, and for "legal services; legal document preparation services and providing general legal information via a website on global computer networks" in International class 45.
The disputed domain name was registered by the Respondent and automatically attempted to install malware on computers of Internet users who visited the website to which the disputed domain name resolved. When the Panel checked the disputed domain name shortly before and on the date of the decision it resolved to a website which offers legal forms, information on legal domains and attorney search facilities. 5. Parties' Contentions A. Complainant
The Complainant considers the disputed domain name to being confusingly similar to the Complainant's trademarks, which the Complainant claims to enjoy substantial fame and recognition in the media and popular culture, in that it merely reverses the two words in the Complainant's trademark.
The Complainant further alleges that the Respondent lacks legitimate interests or rights in the disputed domain name as he is not associated with the Complainant and has never sought nor received authorization or a license to use the Complainant's trademarks in any way or manner. In fact, the Respondent has chosen to conceal his identity via the use of a privacy service. Further, the Respondent has no means to establish that he is or ever has been commonly known under the disputed domain name or a similar name, nor has the Respondent sought or procured any registrations for any tradenames, corporations, or trademarks with any governmental or business authority for the disputed domain name or a similar name. The Complainant also contends that the Respondent is not making any legitimate non-commercial use of the disputed domain name as the Complainant's trademarks are an invented word, and as such, third parties would not legitimately choose this name or a variation of it, unless seeking to create an impression of an association with the Complainant. Moreover, the Complainant refers to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.13.1 which reads "Panels have categorically held that the use of a domain name for illegal activity (e.g.,…distributing malware…) can never confer rights or legitimate interests on a respondent," and claims that the Respondent in this case used the disputed domain name to attempt to distribute malware, which is not a legitimate use of the disputed domain name.
According to the Complainant the Respondent's complete lack of intellectual property rights in the domain name, combined with the fact that he has chosen to conceal his identity, further demonstrates bad faith in adopting and using the disputed domain name. Further, the Complainant contends that the Respondent plainly knew of the Complainant's long and continuous use of its trademarks as meant in paragraph 4 above at the time of registration and that he had no right, title or interest, whatsoever, in these trademarks or the disputed domain name. The Complainant also considers the circumstance that the website to which the disputed domain name directs automatically attempts to install malware on visitors' computers, combined with the disputed domain name, to being evidence of bad faith. Moreover, the Complainant identified the Respondent as a serial cyber squatter who was named as respondent in eight different UDRP proceedings brought before the Center, concerning ten different domain names in 2017. Each of the eight panels found that the Respondent violated the UDRP, and all ten domain names were ordered transferred to the complainants. According to the Complainant the Respondent's pervasive and continual violation of third party trademark rights in the registration of domain names is further indication that he has and continues to operate in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Respondent did not file a response. However, as set out in section 4.3 of WIPO Overview 3.0, the consensus view of UDRP panels is that the respondent's default does not automatically result in a decision in favor of the complainant. The complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the panel may draw appropriate inferences from the respondent's default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
(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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks identified in paragraph 4 above as the Complainant's trademarks are included in the disputed domain name in their entirety, while only reversing the order of terms in said trademarks. This reversal of two terms does not change the overall impression of the disputed domain name as compared to the Complainant's trademarks taking into consideration that it is possible that Internet users unintentionally type in the disputed domain name instead of the Complainant's trademarks. The Panel agrees with the panel in Leaseweb BV Keep v. ,WIPO Case No. D2009-0794 who considered that "[i]n these circumstances a finding of confusing similarity in line with the 'typosquatting' cases is appropriate".
Consequently, the first element of paragraph 4(a) of the Policy is met. B. Rights or Legitimate Interests
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel takes note of the various undisputed allegations of the Complaint and in particular that no authorization has been given by the Complainant to the Respondent to use or register the disputed domain name, that the Respondent has not been commonly known by the disputed domain name, and that the disputed domain name was used to install malware on Internet users' computers. Installing malware on Internet users' computers can never qualify as a bona fide offering of goods or services or as a legitimate noncommercial or fair use. The Panel adds that the present use of the disputed domain name to direct Internet users to a website with legal information which directly competes with the services for which the Complainant registered and uses its trademarks can also not constitute a bona fide offering of goods or services.
The Panel is satisfied that the Complainant has undisputedly shown that the Respondent has no rights or legitimate interests in the disputed domain name so that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service offered on the Respondent's website or location.
In the Panel's view, it is obvious that at the time the Respondent registered the disputed domain name it must have had the Complainant's trademarks in mind as they had already been registered for many years and have actually been used by the Complainant internationally. Moreover, the Panel agrees with the Complainant that its trademarks are an invented word, and as such, third parties would not legitimately choose this name or a variation of it, unless seeking to create an impression of an association with the Complainant.
The Complainant further undisputedly asserted that the disputed domain name resolved to a website that attempted to install malware or Internet users' computers. As such this constitutes use of the disputed domain name in bad faith (e.g., Wikimedia Foundation, Inc. v. Domain Administrator, Domain Enterprises, Attn: WILKIPEDIA.COM,WIPO Case No. D2015-1442).
Consequently, the third and last element of paragraph 4(a) of the Policy is also met. 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.
Alfred Meijboom
Sole Panelist
Date: November 14, 2017
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