WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Goldberg & Osborne v. The Advisory Board Forum, Inc.

Case No. D2001-0711

 

1. The Parties

The Complainant in this administrative proceeding is Goldberg & Osborne whose address is 4423 E. Thomas Road, Suite 1, Phoenix, Arizona 85018-7612, USA. The Respondent in this case is The Advisory Board Forum, Inc. whose address is 328 Second Street South, Safety Harbor, Florida 34695, USA.

 

2. The Domain Name and Registrar

The domain name at issue is <theinjurylawyers.com> which is registered with BulkRegister.com.

 

3. Procedural History

A Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on May 29, 2001.

On June 12, 2001, a Verification Response was received from BulkRegister.com which served to: (1) confirm that BulkRegister.com was in receipt of the notification of the domain name dispute; (2) confirm that BulkRegister.com is the registrar of the domain name; (3) confirm that Respondent is the current Registrant of the domain name; and (4) provide the full contact details (i.e., postal address(es), telephone number(s), e-mail address(es)) available in the registrarís WHOIS database for the Registrant of the disputed domain name, the technical contact, and the administrative contact.

On July 11, 2001, a Formal Requirements Compliance review was completed by the assigned WIPO Center Case Administrator. The initial Complaint applied to two domain names: <theinjurylawyers.com> and <the-injury-lawyers.com>. The domain name <the-injury-lawyers.com> is registered with Network Solutions and is covered by the Network Solutions 4.0 Service Agreement. The WIPO Center therefore requested that Complainant revise its Complaint so that the provision regarding Mutual Jurisdiction complied with the appropriate Network Solutions Service Agreement. The Complainant revised its Complaint to remove the request for transfer of the domain name <the-injury-lawyers.com>.

The WIPO Center determined that the revised Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules").

A Notification of Complaint and Commencement of Administrative Proceeding was sent by the WIPO Center to the Complainant (email) and Respondent (post/courier, facsimile, and email), dated July 11, 2001. The Notification set a deadline of July 30, 2001, by which the Respondent could make a Response to the Complaint. Respondent submitted a Response dated July 30, 2001, which was apparently received at WIPO Center on July 31, 2001, and was considered timely filed.

On August 31, 2001, the WIPO Center sent to the parties a Notification of Appointment of Administrative Panel. Taking into consideration the panelist nominations made by the parties, the WIPO Center appointed M. Scott Donahey and A. Michael Froomkin to serve as Panelists. The originally appointed Presiding Panelist was unable to continue with the case. On September 20, 2001, the WIPO Center sent the parties a second Notification of Appointment of Administrative Panel in which Roderick M. Thompson was appointed to serve as Presiding Panelist. All three Panelists submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the WIPO Center. The Projected Decision Date, as determined by the WIPO Center and transmitted to the parties on September 20, 2001, was October 4, 2001.

 

4. Factual Background

Goldberg & Osborne, Complainant, is composed of Mark H. Goldberg and John E. Osborne and is an Arizona Partnership. Complainant has provided evidence that it is the owner of a U.S. trademark registration for the mark THE INJURY LAWYERS.

Respondent, The Advisory Board Forum, Inc., is the current Registrant of the domain name <theinjurylawyers.com>. Lee Abrahamson, President of the Advisory Board Forum, Inc., acts as a consultant for the law firm of Abrahamson & Uiterwyk, in which his son Erik Abrahamson is a named partner. Respondent registered the domain name <theinjurylawyers.com> on October 31, 2000 for use by the Abrahamson & Uiterwyk law firm.

 

5. Partiesí Contentions

A. Complainant

Complainant asserts that the domain name <theinjurylawyers.com> is confusingly similar to Complainantís trademark for THE INJURY LAWYERS.

Complainant alleges that Respondent does not have a legitimate interest in the domain name because 1) Respondent registered the name after Complainant's trademark received incontestable status; 2) Respondent can sell its services without using the domain name; 3) Respondent intended to entice Complainant's clients for commercial gain; 4) Respondent has shown a pattern of registering domain names; and 5) Respondent is not using the domain name in connection with a non-commercial use.

Complainant alleges that Respondent has registered and used the domain name in bad faith because 1) the name was registered with an intent to transfer it to a competitor of Complainant's; 2) use of the domain name by Respondent disrupts the business of Complainant by preventing Complainant from using its trademark as a domain name; 3) Respondent intentionally attempted to attract users for financial gain by creating a likelihood of confusion; and 4) use of the domain name dilutes Complainant's mark.

B. Respondent

Respondent disputes Complainantís assertions. Respondent asserts that Complainantís mark is a common term put to a generic use by Complainant to describe its services. Accordingly, Respondent claims that Complainant has no enforceable trademark rights under the UDRP.

Further, Respondent contends that it has a legitimate interest in the disputed domain name because it incorporates a common generic term. Respondent also claims a legitimate interest in the name based on its use in connection with the bona fide provision of legal services before notice of this dispute.

Additionally, Respondent asserts that it did not register, and has not used, the disputed domain name in bad faith. According to Respondent, the domain name incorporates a common term that is appropriate for use in connection with legal services, and that is the only reason it was registered. Further, Respondent claims that Complainant has not proffered any evidence that the domain name was acquired primarily for the purpose of selling, renting or transferring it to Complainant; to prevent Complainant from reflecting its trademark in a domain name; or to disrupt Complainantís business or attract customers seeking to purchase its products.

 

6. Discussion and Findings

A. Applicable Rules and Principles of Law

Paragraph 15(a) of the Rules sets out the principles the Panel is to use in rendering its decision: "A Panelist 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 the Complainant must prove each of the following:

(i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark in which the Complainant has rights; and,

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and,

(iii) the domain name has been registered and used in bad faith.

B. Application of Paragraph 4(a) to the Facts

1. Registration and use in bad faith

Paragraph 4(a)(iii) of the Policy requires the Complainant to show that the domain name has been registered and used in bad faith. To satisfy this requirement, Complainant alleges that 1) the name was registered with an intent to transfer it to a competitor of Complainant's; 2) use of the domain name by Respondent disrupts the business of Complainant by preventing Complainant from using its trademark as a domain name; 3) Respondent intentionally attempted to attract users for financial gain by creating a likelihood of confusion; and 4) use of the domain name dilutes Complainant's mark. Each allegation is addressed below.

1. Transfer to a Competitor

According to the Response, Respondent acts as a consultant for the law firm of Abrahamson & Uiterwyk and registered the domain name for use by the law firm. It is clear from the facts of this case that Respondentís intent was for the domain name to be used by the law firm in connection with the firm's services. Under the circumstances, the fact that the firm itself did not register the name and the possibility that Respondent may subsequently transfer the domain name to the law firm, are not relevant to bad faith.

2. Disruption of Complainantís Business

Mere use of a Complainant's trademark as a domain name does not constitute disruption of Complainant's business. While Respondentís registration prevents Complainant from using its exact mark as a domain name within the .com TLD, Complainant may use its mark as a domain name in the .net and .org TLDs. Even if Complainant were prevented from using its mark as a domain name in all gTLDs, such a result does not necessarily constitute bad faith by Respondent. Trademark rights are not coextensive with rights to a domain name and thus trademark holders do not have the absolute right to reflect their mark in a domain name.

3. Likelihood of Confusion

There is no likelihood of confusion regarding Complainant's sponsorship or affiliation of Respondent's web site. The web page to which the domain name resolves clearly states the name of Respondent's law firm, Abrahamson & Uiterwyk. The web site states that the firm is composed of Florida lawyers representing Florida clients who suffer personal injury. Users will not mistakenly believe that they have arrived at a web site that is sponsored, affiliated with, or endorsed by Complainant, Goldberg & Osborne, an Arizona law firm. Further, there is no evidence that Respondent intended to derive benefits from the goodwill of the Complainant or to attract users seeking Complainant's site.

4. Dilution

Any potentially valid claim for dilution would require a finding that the mark is famous, which is not supported by the facts in this case.

Although Complainant has alleged bad faith, Complainant has not provided proof that Respondent has registered and used the domain name in bad faith. The Panel therefore finds that Complainant has not fulfilled its burden of proving bad faith registration and use of the domain name.

2. Respondentís rights and legitimate interests in the domain name

Under the Policy, Complainant bears the burden of proving that Respondent does not have a legitimate interest in the domain name. Complainant alleges that Respondent does not have a legitimate interest in the domain name because 1) Respondent registered the name after Complainant's trademark received incontestable status; 2) Respondent can sell its services without using the domain name; 3) Respondent intended to entice Complainant's clients for commercial gain; 4) Respondent has shown a pattern of registering domain names; and 5) Respondent is not using the domain name in connection with a non-commercial use. Each ground is addressed separately below.

1. Registration of Domain Name after Trademark Achieved Incontestable Status

It is not clear how this assertion relates to Respondentís legitimate interest. The only relevance seems to relate to Respondent's constructive notice of the mark. However, constructive notice is not sufficient to attribute bad faith to Respondent or to negate Respondent's legitimate interest in the domain name, especially when there is a serious question as to whether the mark is enforceable. By the same token, as the mark appears to be descriptive, if not generic, it is reasonable to accept Respondent's assertion that Respondent registered the mark solely as a descriptive means of identifying Respondent's services.

2. Respondentís Ability to Sell Services Without Use of the Domain Name

The fact that Respondent can sell its services without using the domain name is irrelevant for purposes of determining Respondent's legitimate interest. In almost any situation, a domain name registrant could use an alternative domain name to sell its goods or services.

3. Respondent Intended to Entice Complainant's Clients for Commercial Gain

There is no evidence that Respondent intended to entice Complainant's clients. The web site is connected with a Florida law firm serving plaintiffs in Florida not Arizona. While Complainant, an Arizona firm, apparently has a referral network of attorneys throughout the country, this is not sufficient evidence of Respondent's intent to entice clients away from Complainant or its referral network.

4. Pattern of Domain Name Registration

Although Complainant points to a pattern of domain name registrations by Respondent as evidence of Respondent's lack of legitimate interest, this pattern does not lead to the conclusion that Respondent's behavior is illegitimate. Examples of the domain names registered by Respondent include: <floridainjurylawcenter.com>; <auto-injury-lawyer.com>; <theautoaccidentlawyers.com>; <injury-law-center.com>; <floridalawcenter.com>; <floridalegalcenter.com>; <theinjurylawcenter.com>; and <nursing-home-injury.com>. The pattern demonstrates that Respondent has registered multiple domain names constituting descriptive/generic phrases regarding injury law and Florida law firms, not that Respondent has attempted to register third party trademarks.

5. Commercial Use

Finally, Complainant asserts that Respondentís use of the domain name in connection with a commercial enterprise negates Respondentís legitimate interest. However, use of the domain name in connection with a bona fide offering of goods or services is specifically listed as an example of a legitimate interest under paragraph 4(c)(i) of the policy. Prior to notice of the dispute, Respondent was using the domain name in connection with a web page that offered bona fide legal services. Further, the domain name is used by Respondent in its generic or descriptive sense to identify Respondent's services. Thus, Respondent has shown a legitimate interest in the name.

Respondent has shown a legitimate interest in the name and Complainant has failed to present sufficient evidence to demonstrate Respondentís lack of legitimate interest. This Panel therefore finds that Complainant has not met its burden of proving that Respondent does not have a legitimate interest in the domain name.

3. Identical or Confusingly Similar to Trademark

Given the Panelís conclusion that Complainant has not met its burden in relation to showing the existence of bad faith and an absence of legitimate interests under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, it is not necessary for the Panel to determine whether the domain name is confusingly similar to a trademark in which the Complainant has rights.

 

7. Decision

This Panel decides that Complainant has not shown that the Respondent has no legitimate interests in the domain name. Additionally, Complainant has not shown that the domain name was registered and used in bad faith. Accordingly, this Panel requires that the registration of the domain name <theinjurylawyers.com> remain with the Respondent.

 


 

Roderick M. Thompson
Presiding Panelist

M. Scott Donahey
Panelist

A. Michael Froomkin
Panelist

Dated: October 4, 2001