The Complainant is Legal Rights Defenders, Inc., San Pedro, California, United States of America represented by Willenken Wilson Loh & Lieb, LLP, United States.
The Respondent is Universal Group, Inc., of Woodland Hills, California, United States.
The disputed domain name is <800thelaw2.com> (the “Domain Name”), and is registered with GoDaddy.com, Inc. (“GoDaddy.com”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2009. On April 3, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 3, 2009, GoDaddy.com transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent's contact information. 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 proceeding commenced on April 14, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 4, 2009. Respondent did not submit a Response. Accordingly, the Center notified Respondent's default on May 8, 2009.
The Center appointed David M. Kelly as the sole panelist in this matter on May 22, 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.
Complainant owns the trademark 1-800-THE-LAW2 that it uses in connection with its attorney joint-advertising services, and it operates a website at the domain name <1800thelaw2.com>. In addition to its common-law rights in the 1-800-THE-LAW2 mark that date back to 1985, Complainant owns U.S. Trademark Registration No. 3,367,679 for the mark 1-800-THE-LAW2, issued January 15, 2008. Complainant has spent nearly USD36 million in the advertising and promotion of its mark since 1985, and advertises its services under the 1-800-THE-LAW2 mark on radio, television, and cable at least 675 times per week. Since 1985, Complainant has placed more than 388,680 consumers in contact with attorneys. Complainant is registered with the California State Bar, and worked with the California State Bar and the California legislature in regulating the attorney-advertising industry.
Respondent registered the Domain Name in July 2008, and uses the Domain Name for a commercial website advertising pool and spa-related services.
Complainant and Respondent are both located in southern California.
Complainant alleges that the Domain Name is confusingly similar to its mark 1-800-THE-LAW2.
Complainant alleges that Respondent does not have any rights or legitimate interests in the Domain Name under the UDRP.
Complainant alleges that Respondent registered and uses the Domain Name in bad faith to intentionally attract Internet users to its commercial website by its unauthorized use of Complainant's 1-800-THE-LAW2 mark. Complainant further alleges that Respondent's registration of the Domain Name constitutes typosquatting in bad faith.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the UDRP 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 or service mark 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.
The Panel finds the Domain Name confusingly similar to Complainant's registered mark 1-800-THE-LAW2 because it is virtually identical to that mark. Specifically, the omission of the numeral 1 and the hyphens from Complainant's mark in the Domain Name are minor differences that do not distinguish the Domain Name from Complainant's mark. See, e.g., WeddingChannel.com, Inc. v. Andrey Vasiliev a/k/a NA and Free Domains Parking, NAF Claim No.156716 (“Respondent's <weddingchanel.com> domain name is confusingly similar to Complainant's WEDDING CHANNEL mark. [R]espondent's domain name would be an exact duplicate of [c]omplainant's mark if not for the misspelling of the word CHANNEL by omitting the letter ‘n'. This slight alteration of Complainant's mark is not enough to defeat a finding of confusing similarity under Policy ¶ 4(a)(i).”); Singapore Airlines Ltd. v. Hotel Price and Patricia de la Toree, WIPO Case No. D2001-0595 (“The use or absence of punctuation marks, such as hyphens and spaces, does not alter the fact that a domain name is confusingly similar to a mark: [citations omitted].”)
Under the UDRP, the respondent's rights or legitimate interests to the domain name are may be established by demonstrating any of the following three conditions: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel finds that Respondent's use of the confusingly similar Domain Name to direct Internet users to its own commercial website does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the Domain Name. See, e.g., Center for Democracy and Technology v. XXX, NAF Claim No. 1075377 (finding no legitimate interest in respondent's use of the disputed domain name for a commercial website because “Respondent is attempting to commercially benefit from the goodwill associated with complainant's ANTI-SPYWARE COALITION mark, and such use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). It is noted here that the website at the Domain Name appears identical to the site at the domain name <universalpoolandspa.com>, which Respondent uses for its e-mail addresses.
The Panel further finds no evidence that Respondent has been commonly known as the Domain Name.
The Panel finds that Respondent's activities constitute bad faith pursuant to paragraph 4(b)(iv) of the UDRP because Respondent registered and uses the Domain Name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its 1-800-THE-LAW2 mark as to the source, sponsorship, and/or affiliation with Respondent's website. See, e.g., H-D Michigan, Inc. v. Registrant, NAF Claim No. 1109413 (holding respondent's use of the confusingly similar domain names for respondent's commercial benefit constitutes bad faith pursuant to Section 4(b)(iv)); Center for Democracy and Technology, supra (holding respondent's activities constitute bad faith pursuant to Section 4(b)(iv) because the dispute domain name is likely to cause confusion as to complainant's affiliation, endorsement, or sponsorship of respondent's website, and respondent is commercially benefitting from such confusion).
The Panel further finds that Respondent's registration and use of the Domain Name constitutes typosquatting in bad faith because it is clearly designed to take advantage of Internet users who mistype Complainant's mark 1-800-THE-LAW2 and/or Complainant's domain name <1800thelaw2.com> when attempting to locate Complainant's website. See, e.g., Yahoo! Inc. v. WWW Enterprise et al., NAF Claim No. 535381 (“the fact that many of Respondent's domain names are typosquatted versions of Complainant's YAHOO! mark is evidence that Respondent registered and used the disputed domain names in bad faith pursuant to Policy 4(a)(iii)”); IndyMac Bank F.S.B. v. Lee Gil-young, NAF Claim No. 637925 (finding bad faith in respondent's use of a typosquatted version of complainant's mark in the domain name to capitalize on typographical errors of Internet users seeking complainant's website).
For all the foregoing reasons, in accordance with paragraphs 4(i) of the UDRP and 15 of the Rules, the Panel orders that the domain name <800thelaw2.com> be transferred to Complainant.
David M. Kelly
Dated: June 9, 2009