Complainant is Legal Helpers P.C. of Chicago, Illinois, United States of America, represented by Fitch, Even, Tabin & Flannery, United States of America.
Respondent is Shareha Williams of Atlanta, Georgia, United States of America.
The disputed domain name <yourlegalhelpers.com> (“Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2010. On April 27, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On April 27, 2010, GoDaddy.com, Inc. 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 17, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on June 7, 2010.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on June 16, 2010. 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 provides legal assistance services through a network of nearly100 offices in 48 states of the United States of America.
Complainant has owned and used the trade name and service mark LEGAL HELPERS, in connection with legal services, beginning at least as early as 1994.
Complainant filed for and, on March 23, 2004, obtained Registration No. 2,824,996 on the Principal Register of the United States Patent and Trademark Office (USPTO) for the Service Mark LEGAL HELPERS for “Legal services,” based on a first use in 1994 and a first use in commerce on July 15, 1997.
Complainant maintains a website at the domain name <legalhelpers.com>. Complainant registered this domain name on June 15, 1998.
Respondent registered the Domain Name some 11 years later, on September 27, 2009.
Complainant contends that as a result of Complainant's longstanding use and success in advertising, promoting and generating publicity for its LEGAL HELPERS mark in connection with legal services, LEGAL HELPERS has gained high recognition among customers and prospective customers of Complainant's services. As a result, the LEGAL HELPERS mark represents invaluable goodwill to Complainant.
Complainant contends that more than fifteen years after Complainant began using its LEGAL HELPERS mark and five years after registering the trademark, Respondent registered the confusingly similar Domain Name. Respondent's Domain Name is virtually identical to, indistinguishable from, and confusingly similar to Complainant's registered LEGAL HELPERS mark, trade name and domain name.
Complainant contends that the Domain Name incorporates the registered LEGAL HELPERS mark in its entirety with the sole, dominant feature of the Domain Name being the registered mark LEGAL HELPERS. The added introductory possessive term “your” only focuses attention on the LEGAL HELPERS mark, enhancing likely confusion with Complainant's trademark. Similarly, consumers can only view the addition of the possessive “your” term to indicate the LEGAL HELPERS mark belongs to Complainant or is associated or affiliated with, or authorized by Complainant.
Complainant contends further that Respondent relies on the likelihood of confusion to misdirect consumers seeking information about Complainant's services to a competitor's website. Respondent's Domain Name automatically redirects the Internet user to a page within the website “www.prepaidlegal.com” which offers legal services and, more particularly, solicits consumers to join a pre-paid legal services arrangement. Respondent's Domain Name copies the LEGAL HELPERS mark to compete unfairly with Complainant and misdirect consumers to a competing website.
Complainant contends that Respondent has no rights or legitimate interests in respect to the Domain Name. Complainant used and promoted its LEGAL HELPER legal services for at least 15 years before Respondent registered the Domain Name. Complainant states that it has not licensed or otherwise authorized Respondent to use Complainant's LEGAL HELPERS mark in any manner or to use or register the Domain Name.
Complainant contends that Respondent uses the confusingly similar Domain Name solely for purposes of unfair competition. An Internet user typing in the Domain Name is automatically redirected to a website offering competing legal services. Respondent's webpage at <https://www.prepaidlegal.com/memapp/EnterAssocInfo?site=hub&assoclogin=sharehawilliams> displays the page title “Membership Application” under a banner that reads “Pre-Paid Legal Services.” Complainant alleges that Respondent's use of the Domain Name constitutes unfair competition in that Complainant and Respondent's website offer competing services, Respondent has no legitimate rights in the Domain Name, and Respondent is trading off the goodwill Complainant has developed in its LEGAL HELPERS mark.
Finally, Complainant contends that Respondent registered and is using the Domain Name in bad faith in direct violation of Paragraph 4(b)(iv) of the Policy. Respondent clearly intended to cause consumer confusion as to source, sponsorship, affiliation or endorsement by registering the Domain Name. The Domain Name is substantially similar to Complainant's longstanding LEGAL HELPERS trademark and domain name. Respondent employs the confusingly similar Domain Name to redirect consumers to a website offering services that compete with those of Complainant. Thus, Respondent uses the Domain Name to misdirect traffic intended for Complainant to a competitor for commercial profit in violation of the Policy at paragraph 4(b)(iv).
Respondent did not reply to Complainant's contentions.
Respondent did not respond to the Complaint therefore the Panel will consider whether Respondent has been given adequate notice of the proceeding. The evidence indicates the Center sent the Complaint in electronic form and sent the Written Notice in hard copy by courier to Respondent at the addresses provided in Respondent's registration information available in the WhoIs and from the Registrar. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding.
Where there is no response to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under Rules, paragraph 14(b), Respondent's failure to respond entitles the Panel to “draw such inferences therefrom as it considers appropriate”.
Under the Policy, paragraph 4(a), Complainant must prove each of three elements of its case in order to obtain the requested relief:
(i) Respondent's Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) Respondent registered and is using the Domain Name in bad faith.
Complainant has legal rights in its LEGAL HELPERS service mark by reason of its long- term use of the mark in commerce and registration of the mark on the Principal Register of the United States.
Respondent's Domain Name, although not identical, is confusingly similar to Complainant's LEGAL HELPERS service mark. The Domain Name incorporates Complainant's service mark in its entirety and without variance in spelling, which prior UDRP Panels have found to be sufficient to establish confusing similarity. See Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd., WIPO Case No. D2009-0828; AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758.
The addition of a generic, nondistinctive word like “your” to Complainant's service mark does not negate otherwise confusing similarity between the Domain Name and the service mark. See Delta Air Lines, Inc. v. Ruslan Moussaev, WIPO Case No. D2009-0718, and cases cited therein; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923 (“Generally, a user of a mark may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it,” citing J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23.50 (4th edition.)).
In the present case, the possessive term “your” tends to focus attention on the LEGAL HELPERS mark, enhancing likely confusion with Complainant's trademark. See Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin, Eonmok, WIPO Case No. D2000-1007 (in ruling <mysony.com> confusingly similar to the complainant's SONY trademark, the panel found that the possessive pronoun directs and focuses the reader's attention on the SONY trademark). Similarly, consumers are likely to view the possessive term “your” as being associated or affiliated with, or authorized by Complainant. Respondent in fact appears to rely upon likelihood of confusion to misdirect consumers seeking information about Complainant's services to a competing website.
Complainant has established that the Domain Name is confusingly similar to Complainant's trademark.
Complainant makes a prima facie case that Respondent has no rights or legitimate interests in the Domain Name.
Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Policy, paragraph 4(c)(i). Respondent, without authority from Complainant, uses the Domain Name to divert Internet traffic from Complainant's website to a website falsely suggesting association with or sponsorship by Complainant but offering Respondent's own legal services in competition with those of Complainant for the purpose of Respondent's own commercial gain. See Mayflower Transit LLC v. Domains by Proxy Inc./Yariv Moshe, WIPO Case No. D2007-1695; Mastercard International, Inc. v. Daniel Kaufman, WIPO Case No. D2006-1031; Deutsche Telekom AG v. Dong Wang, WIPO Case No. D2005-0819; Ticketmaster Corporation v. DiscoverNet, Inc., WIPO Case No. D2001-0252 (no rights or legitimate interests where respondent generated commercial gain by intentionally and misleadingly diverting Internet users away from complainant's site to a competing website). Respondent's use of the Domain Name does not constitute a bona fide offering of goods or services under Policy, paragraph 4(c)(i) that would create legitimate interests in the Domain Name.
Complainant has not authorized Respondent's registration and use of a domain name incorporating the LEGAL HELPERS trademark. There is no evidence that Respondent has been commonly known by the Domain Name. Policy, paragraph 4(c)(ii). See, Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (no rights or legitimate interests where (1) respondent is not a licensee of complainant; (2) complainant's rights in the mark precede respondent's registration; (3) respondent is not commonly known by the domain name in question). Respondent is trading off the goodwill that Complainant has developed in its longstanding LEGAL HELPERS mark. See Six Continents Hotels, Inc. v. Ramada Inn, WIPO Case No. D2003-0658 (respondent had no legitimate interests in the domain name because respondent had not been commonly known by the domain name, did not receive permission to use complainant's mark, and was using the domain name to redirect customers to a competitor's website).
The evidence suggests also that Respondent is not making either a noncommercial or a fair use of the Domain Name. Policy, paragraph 4(c)(iii). The website appears clearly to offer commercial legal services.
Respondent defaulted, failing to produce evidence to rebut Complainant's prima facie case that she has no rights or legitimate interests in the Domain Name. The Panel thus concludes that Complainant has established that Respondent does not have rights or legitimate interests in the Domain Name. Policy, paragraph 4(a)(ii).
Complainant must demonstrate that Respondent both registered and is using the Domain Name in bad faith. Policy, paragraph 4(a)(iii).
Paragraph 4(b)(iv) of the Policy provides that the following, among other factors, shall be evidence of the registration and use of a domain name in bad faith:
By using the domain name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Panel finds that this is precisely what Respondent does with the Domain Name. Respondent, having registered a domain name substantially similar to Complainant's registered LEGAL HELPERS trademark, uses the Domain Name to misdirect traffic intended for Complainant to a competing website for commercial profit in violation of the Policy, paragraph 4(b)(iv). See Littleford Day Inc. v. NRM Equipment Company, WIPO Case No. D2004-0201 (use of disputed domain name that automatically redirects users to a website that sells goods similar to complainant's goods evidences bad faith); Six Continents Hotels, Inc. v. Ramada Inn, supra, (disputed domain name that redirects to competing hotel chain website evidences bad faith).
The Panel concludes that Complainant has established that Respondent registered and uses the Domain Name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <yourlegalhelpers.com> be transferred to Complainant.
John R. Keys, Jr.
Dated: June 30, 2010