Complainant is Cheri Lane Bowes of New York, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
Respondent is lawspeak.com of New York, New York, United States of America, represented by Steven L. Rinehart, Esq., United States of America.
The disputed domain name <lawspeak.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2010. On May 10, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On May 10, 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. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on May 17, 2010. The Center verified that the Complaint together with the amendment to 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 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2010. The Response was filed with the Center on June 7, 2010. On June 18, 2010, Complainant submitted a reply to Respondent's Response. On June 28, 2010, Respondent submitted a surreply.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on June 19, 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 is a consultant on public speaking for lawyers. Complainant is the owner of a registered United States (“U.S.”) service mark LAWSPEAK (the “Mark”) for “conducting seminars, workshops and training programs for lawyers and other professionals in the field of communication skills and professional development, and distributing educational and informational materials in connection therewith.” Complainant filed an application for the Mark on March 15, 2000 with a first use in commerce date of November 1994. The Mark was registered on March 6, 2001.
Respondent registered the Disputed Domain Name on June 19, 1998.
Complainant argues that the Disputed Domain Name is identical to the Mark. Respondent does not have a website at the Disputed Domain Name, but uses the Disputed Domain Name to redirect traffic to a different website, “www.lawcentral.com”. Complainant and Respondent are both located in New York City. Complainant is well-known in New York legal circles as a consultant on public speaking for lawyers. Respondent likely was familiar with Complainant and her services under the Mark when he registered the Disputed Domain Name. Respondent has had constructive notice of Complainant's registered trademark since 2001, when the Mark was registered.
Respondent has not been authorized to use the Mark or to register the Disputed Domain Name and Respondent has no connection or affiliation with Complainant. Complainant has made repeated efforts to contact Respondent by telephone, email and regular mail in respect of the Disputed Domain Name, but Respondent has failed to respond to any of these communications.
Respondent's unauthorized registration of the Mark with no legitimate right to use it, and no conceivable need to use it, coupled with Respondent's failure to use the Disputed Domain Name other than to offer the Disputed Domain Name for sale to the general public, is compelling evidence of bad faith.
Respondent is a d/b/a of Stan Chess, who is a New York attorney who is a lecturer in various legal subjects. Respondent registered the Disputed Domain Name in 1998 for the purpose of hosting a website offering an interactive legal dictionary for professionals seeking definitions of legal terms which Respondent had been writing for several decades. The Disputed Domain Name redirects traffic to <lawcentral.com>, a website that Respondent maintains for the purpose of offering news, links, legal outlines, commentary and information of interest to legal professionals. <lawcentral.com> contains no links to competitors of Complainant or cost-per-click links of any kind. Respondent has never offered the Disputed Domain Name to Complainant for sale.
The Mark is generic or at best descriptive and therefore should only be afforded marginal protection. The term “law speak” is merely descriptive of the future bona fide purpose for which Respondent has been saving the Disputed Domain Name: to offer definitions of legal terms. Respondent has received a letter from a publisher expressing interest in Respondent's legal dictionary.
Respondent could not have registered the Disputed Domain Name in bad faith because Complainant did not file its application for trademark registration until more than two years after Respondent registered the Disputed Domain Name. Complainant has submitted no evidence or allegations of common law trademark rights predating the registration of the Disputed Domain Name.
Complainant is engaged in reverse domain name hijacking because there is no plausible basis for the Complaint.
With respect to the reply filed by Complainant and the surreply filed by Respondent, the Policy provides that supplementary filings are only allowed at the discretion of the Panel. The Panel believes that supplemental filings should only be allowed in exceptional circumstances, for example in situations where a response raises facts that complainant could not have been expected to address in the complaint. The Panel does not believe that exceptional circumstances exist in the instant case, and therefore disregards the supplemental filings in reaching its decision. However, it should be noted that the issues raised in the supplemental filings are not relevant to the dispositive issue and would not have changed the Panel's decision had they been considered.
For Complainant to succeed, it must prove each of three elements referred to in paragraph 4(a) of the Policy:
(i) the Disputed Domain Names are 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 Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
Respondent does not dispute that the Disputed Domain Name is identical or confusingly similar to Complainant's Mark. Noting also the reproduction of the trademark LAWSPEAK in the Disputed Domain Name, the Panel finds that Complainant has met its burden under the first element.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy.
With respect to this element, it is undisputed that Respondent did not receive any approval from Complainant to use the Mark or to register the Disputed Domain Name. There is likewise no dispute that Respondent is not currently using the Disputed Domain Name in connection with a bona fide offering of goods or services. Respondent contends that it has been working on a dictionary of legal terms “for decades” and that it has intended since registration to use the Disputed Domain Name in connection with a website for offering legal terms.
Respondent has offered evidence in the form of a redacted first page of a letter dated March 24, 1998 from a book publisher expressing interest in a book referred to as the “Chess volume”. To the extent that such evidence supports Respondent's assertion that it was working on a legal dictionary in 1998, it serves as meager evidence for the assertion that Respondent remains committed to the endeavor in 2010. The 1998 letter lends even less support for Respondent's purported intended use of the Disputed Domain Name, which Respondent admits has redirected to <lawcentral.com> since its registration over 12 years ago. Nonetheless, the Panel is not prepared to dismiss Respondent's contention as clearly false, particularly in consideration of the Disputed Domain Name's apparently descriptive nature. Cf. Horn Abbot International Limited v. Ian McMillan, WIPO Case No. D2005-0198.
However, because the case can be resolved based on the dispositive issue of whether the Disputed Domain Name was registered and is being used in bad faith, it is not necessary for the Panel to decide whether this element is satisfied.
Complainant has failed to show that Respondent has registered the Disputed Domain Name in bad faith. Respondent registered the Disputed Domain Name on June 19, 1998, whereas Complainant did not apply for its Mark until March 15, 2000. Numerous decisions have held that this fact alone renders the registration incapable of being in bad faith, unless “the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights.” Paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions; see also Collective Media, Inc. v. CKV / COLLECTIVEMEDIA.COM, WIPO Case No. D2008-0641; John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074 (citing others).
Here, Complainant asserts that because Complainant is “well-known in New York legal circles” and given the fact that Respondent operates a website dealing with legal issues and is also located in New York City, Respondent “likely was familiar with Complainant and her services” when the Disputed Domain Name was registered. New York City is a large legal market with many tens of thousands of attorneys, and with due respect for Complainant, her degree of notoriety is not such that each attorney should be expected to know her and her Mark. Likewise, it is hardly surprising that a domain name containing the word “law” resolves to a website concerned with legal issues. Thus, the Panel is unconvinced that this minimal circumstantial evidence establishes Respondent's awareness of Complainant's Mark at the time of Respondent's registration of the Disputed Domain Name.
The Panel finds that the evidence does not support a finding that Respondent registered or used the Disputed Domain Names in bad faith. Therefore, Complainant has failed to establish the third element. The Policy is designed to address clear cases of cybersquatting, of which this does not appear to be one, especially where there are issues of fact which might be better served by evaluation of competing evidence through e.g., discovery and cross examination in a court proceeding. See e.g., Domisys SAS v. Wachter Consulting Inc., WIPO Case No. D2008-0767 and Eric Haddad Koenig v. All Ltd, Selena Kovalski, WIPO Case No. D2008-0322.
With respect to Respondent's allegation that Complainant has engaged in Reverse Domain Name Hijacking (“RDNH”), paragraph 1 of the Rules defines RDNH as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Paragraph 15(e) of the Rules says:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Respondent bears the burden of proving bad faith with respect to RDNH. A simple failure of the Complaint is not itself grounds to find RDNH. Deutsche Post AG v. NJDomains, WIPO Case No. D2006-0001; Avio S.p.a. v. William Obeid, WIPO Case No. D2008-0295. If, though, a complainant should have appreciated at the outset that its complaint could not succeed, a finding of RDNH may be appropriate. Yell Limited v. Ultimate Search, WIPO Case No. D2005-0091. See also Futureworld Consultancy, (Pty) Limited v. Online advice, WIPO Case No. D2003-0297; Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151). Many panels have held that the fact the asserted trademark postdates the registration of the disputed domain name is alone sufficient to constitute RDNH. See, e.g. John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074; Parallax Group International, Limited Liability Corporation v. Anything.com Ltd. (.ky), WIPO Case No. D2008-1545.
However, in this case, Complainant has offered some, albeit weak, evidence that Respondent knew about the Mark prior to registration. While the Panel finds that such evidence was insufficient for Complainant to prevail as to the issue of bad faith registration by Respondent, it is enough to save Complainant from a finding of RDNH.
For all the foregoing reasons, the Complaint is denied.
Maxim H. Waldbaum
Dated: July 13, 2010