WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
LegalZoom.com, Inc. v. Doug Bernacchi
Case No. D2017-1172
1. The Parties
Complainant is LegalZoom.com, Inc. of Glendale, California, United States of America (“United States”), represented by Bryan Cave, LLP, United States.
Respondent is Doug Bernacchi of Michigan City, Indiana, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <legalzoombankruptcy.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2017. On June 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 15, 2017, the Registrar 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2017. The Center received email communications from Respondent on June 24, June 25, June 28, July 4, July 5, and July 14, 2017. The Center notified the Parties of the commencement of the Panel Appointment process on July 14, 2017.
Respondent repeatedly requested that this case be suspended. The Center communicated to the Parties that in accordance with the Rules, if the Parties wish to explore settlement options Complainant should submit a request for suspension. However, Complainant confirmed by email of July 31, 2017 that it does not wish to request a suspension.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on July 18, 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
Complainant is a leading online legal destination for small businesses and consumers. Complainant offers online legal document services, attorney listings, and general legal information to small businesses and individual consumers. For more than 15 years, Complainant has used its LEGALZOOM trademark in connection with its online legal document business and related goods and services. Complainant holds numerous registrations for the LEGALZOOM mark in the United States and around the world. By way of example, Complainant owns the following United States trademark registrations:
1. LEGALZOOM (registration no. 3,210,861) registered on February 20, 2007 for “attorney referral services” in International class 35;
2. LEGALZOOM (registration no. 3,210,728) 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. LEGALZOOM (registration no. 3,211,009) registered on February 20, 2007 for “providing online directory information on attorney listings; attorney referral and matching services” in International class 35;
4. LEGALZOOM (stylized) (registration no. 2,540,549) registered on February 19, 2002 for “legal document preparation services and providing general legal information via a website on global computer” in International class 42;
5. LEGALZOOM.COM (registration no. 3,569,400) 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; and
6. LEGALZOOM.COM (stylized) (registration no. 3,748,170) registered on February 16, 2010 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.
Since as early as 2001, Complainant has maintained an active presence on the Internet, including through its website at “www.legalzoom.com”, where it offers a variety of legal document services, legal information and attorney listings.
The Domain Name was registered on September 30, 2012. The Domain Name resolves to a website for Respondent’s law firm, Godfrey & Bernacchi.
5. Parties’ Contentions
(i) Identical or Confusingly Similar: Complainant states that it has expended substantial resources, money, time and effort to promote, market and build consumer recognition and goodwill in its LEGALZOOM brand goods and services, in connection with its distinctive LEGALZOOM marks. Complainant contends that its LEGALZOOM marks are valuable and famous. For example, the LEGALZOOM name enjoys substantial recognition in the media and popular culture, and has been mentioned in numerous media outlets, including MSNBC, the Today Show, Mashable, Bloomberg Law, Fortune magazine, and Aabaco Small Business for its assistance to small businesses, startups, and individuals in need of legal services. Complainant has been recommended by well-known persons in the entertainment, sports and legal professions. Complainant provides educational seminars and support for small business owners, and partners with social media icons and other business entities to promote its services. Complainant has earned awards and has been recognized by multiple news sources for providing innovative and supportive tools for small business owners. For example, the National Law Journal named Complainant the Best Legal Forms Provider; Complainant earned the Parenting magazine Seal of Approval; articles in The Huffington Post, Forbes magazine, and The Wall Street Journal repeatedly reference the digital tools Complainant provides for entrepreneurs at reasonable prices, with great customer service. In view of this information, Complainant states that it has established strong rights in its LEGALZOOM trademarks and is entitled to broad protection.
Complainant states that the Domain Name wholly incorporates and is thus identical or confusingly similar to Complainant’s LEGALZOOM marks, which is generally sufficient to establish confusing similarity for purposes of the Policy. The Domain Name is identical to Complainant’s LEGALZOOM marks, except that it adds the descriptive word “bankruptcy.” The addition of “bankruptcy” does not reduce the likelihood of confusion and, in fact, enhances confusion because it is descriptive of the legal services and information that Complainant provides. Complainant submits it is well-established in UDRP decisions that where a domain name takes a company’s mark and then adds words descriptive of the goods or services it provides, the result is a domain name that is confusingly similar to the mark concerned.
Complainant contends that Respondent’s Domain Name is therefore identical and confusingly similar to Complainant’s valuable and well-known LEGALZOOM marks and Complainant’s principal domain name through which it conducts business. Complainant states that in transferring the domain names <legalzoom.attorney> and <legalzoom.lawyer> to Complainant, a UDRP panel recently recognized that “[b]ased on the Complainant’s Marks and long term use of the Complainant’s Marks, Internet users will clearly associate these Domain Names with the Complainant.” LegalZoom.com, Inc. v. Minh Tran, Arrow Law Group, WIPO Case No. D2015-2071. Unlike consumers in a traditional retail context, who must travel to a physical location to purchase goods and services, Internet consumers are more likely to be misled into visiting virtual locations by the use of domain names that are confusingly similar to trademarks. Complainant claims that Respondent seeks to exploit consumer confusion and Complainant’s fame and goodwill by fully incorporating Complainant’s LEGALZOOM mark in its Domain Name.
(ii) Rights or Legitimate Interests: Complainant states that a prima facie showing that Respondent does not have rights or legitimate interests in the Domain Name (within the meaning of paragraph 4(a) of the Policy) is shown by evidence that Respondent is not authorized by Complainant to use the Domain Name; Complainant’s trade and service marks are known; there is no indication that Respondent is known under the Domain Name; the Domain Name is identical or confusingly similar to Complainant’s trademark and serves as “bait” to attract customers to Respondent’s site; and the Domain Name is primarily descriptive of Complainant’s services as it incorporates Complainant’s trade and service mark.
Complainant states that all of these criteria are satisfied in the present case. First, upon information and belief, Respondent is not associated with Complainant and has never sought or received authorization to use Complainant’s LEGALZOOM marks. Respondent has no means to establish that he has been commonly known as “LegalZoom.” Upon information and belief, Respondent has not sought or procured any registrations for any tradenames, corporations, or trademarks with any governmental or business authority for “LegalZoom” or “LegalZoomBankruptcy.” Respondent does not appear to have any trademark, service mark or other intellectual property rights to any of the LEGALZOOM marks or any similar marks. Finally, Respondent is not making any legitimate noncommercial use of the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for or use a domain name incorporating any of those marks. Further, the LEGALZOOM marks derive from an invented word, and as such, third parties would not legitimately choose this name unless seeking to create an impression of an association with Complainant.
(iii) Registered and Used in Bad Faith: Complainant contends that Respondent registered and is using the Domain Name in bad faith, in violation of the Policy, paragraphs 4(b)(i), (ii), and (iv). Complainant states that Respondent’s bad faith conduct is evidenced in several ways.
Complainant states that, upon information and belief, Respondent has no legitimate trademark, service mark or other intellectual property rights in the Domain Name, or any similar marks or names. Respondent’s lack of intellectual property rights demonstrates bad faith in adopting and using the Domain Name. Complainant contends, citing UDRP precedent, that “[t]here is substantial authority that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use.” Ebay Inc. v. Wangming, WIPO Case No. D2006. Such is the case here.
Complainant also contends that Respondent knew of Complainant’s long and continuous use of its LEGALZOOM marks at the time of registration and that Respondent had no right, title or interest whatsoever in these marks or the Domain Name. Respondent registered the Domain Name more than a decade after Complainant began using the LEGALZOOM marks, and also well after Complainant became a premier online legal destination for small businesses and consumers. Complainant owns numerous United States and foreign trademark registrations, providing Respondent with constructive notice of its rights in its LEGALZOOM marks. Additionally, Respondent is an attorney and is currently employed at a law firm doing business as Godfrey & Bernacchi. Complainant argues it would stretch credibility for Respondent to claim he was unaware of Complainant and its LEGALZOOM marks at the time of registration of the Domain Name or any time thereafter.
Complainant states that the Doman Name automatically redirects to the website at “www.dougblaw.wixsite.com/ bernacchilawoffices”, which appears to be the website of Respondent’s law firm and advertises legal services offered by Respondent. The website contains content in the same field as LEGALZOOM’s core business of providing legal services and information. Complainant contends that Respondent registered the Domain Name to intentionally divert consumers looking for LEGALZOOM’s website to his own law firm’s site in an attempt to trade on Complainant’s reputation and goodwill.
Finally, Complainant submits that Respondent has failed to respond to cease-and-desist correspondences sent on behalf of Complainant. Respondent’s failure to respond is further evidence of bad faith.
In sum, Complainant claims that Respondent continues to wrongfully use Complainant’s LEGALZOOM marks to disrupt Complainant’s business and to prevent Complainant from using its trademarks in corresponding domain names. Respondent’s use of the LEGALZOOM marks is improper under the Policy, and Complainant requests that the Domain Name be transferred to Complainant.
Respondent did not submit a Response, but did send a series of emails directly to the Center (without copying Complainant). In an email dated June 24, 2017, Respondent stated:
“I have been a bankruptcy lawyer since before your firm was created. I had a national legal website before you existed. I am not baiting anyone or did I know that you did bankruptcy law in Indiana and Western Michigan. I think you only started that long after I started using the domain. You were not a referral service and frankly your leads which I have bought rarely use your referred lawyers. I am sure willing to sell you the name, but I would not want it used in Indiana. If you want money from me for some bullying reason...see you in bankruptcy court. The website is worthless and the name is no good either most people think legal zoom should be banned for ethical reasons and for aiding with the unauthorized practice of law. I really am judgment proof and could care less about the attached pleadings. Do you want the site transferred, then call me, Monday. Or know that if you lose this it is slander what you attempt to claim. I have used the site before we in Indiana ever heard of Legalzoom and I am not sure when the dates are even or do really care. I wanted nothing from you when I first heard you using it. I started in 1995 with the legalgroup.com and using the service mark ‘legalzoom-bankruptcy-same-day filing’, and before that I used ‘five-bill bankruptcy.’ My father owned a company called Kor-it sales and the hyphen was always an issue on web domains where he operated very early too. I am sure we could find that this not as you claimed in the filing. But lies carry the day in hearings often for those willing to make them. The Firm back then was Bernacchi and Pejic from 1999-2004. I had yellow page ads with that name. We can work this out. I am not married to it and you are far more seriously interested in the subject and name than I am.”
In a June 25, 2017 email sent to the Center, a representative of Respondent stated that “[w]hen we took out this web page we had advertised same day Bankruptcy filings-legal-zoom-bankruptcy for several years dating back to 1997.” The email indicated that Complainant “can give all Indiana bankruptcy referrals for 5 years and they can own [the Domain Name].” In an email on July 4, 2017, Respondent stated that “I am just interested in getting bankruptcy client leads in the 219, 574, and 269 area codes for 12 months and we have a deal. [Complainant] can have [the Domain Name] in consideration for allowing me to have leads for a term of one year and they have a need for lawyers to service the leads anyway. They can have the website for the rest of the country and I have not used it in other parts of the nation.”
In several emails Respondent requested a suspension of this case to pursue settlement discussions and complained that it had not heard from Complainant. On July 31, 2017, Complainant confirmed by email that it did not wish to suspend these UDRP proceedings.
6. Discussion and Findings
The Policy is intended to resolve disputes concerning allegations of abusive domain name registration and use. Paragraph 15(a) of the Rules provides that the Panel will decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain a decision (as it has requested) that the Domain Name be transferred to it:
(i) The Domain Name registered is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel determines that Complainant has well-established rights in its LEGALZOOM trademarks, based on the evidence of Complainant’s multiple trademark registrations as well as the continuous use and widespread promotion of the LEGALZOOM marks in the United States since their first use in commerce in 2000.
The Panel finds that the Domain Name is confusingly similar to Complainant’s LEGALZOOM marks. The addition of the word “bankruptcy” does not reduce the confusing similarity, but instead may reinforce confusion because it is descriptive of services in the legal field where Complainant operates. See GA Modefine S.A. v. Thomas Casey, WIPO Case No. D2009-0826 (“The disputed domain name incorporates entirely the Complainant’s house marks ARMANI and GIORGIO ARMANI and the generic word ‘designs’. The addition of the generic word ‘designs’ is not sufficient to prevent the risk of confusion between the Complainant’s trademarks and the disputed domain name.”); HarperCollins Publisher Ltd. v. Digi Real Estate Foundation, WIPO Case No. D2009-0565 (“The Panel finds that the disputed domain name is confusingly similar to the Complainant's widely known trademark for dictionary and related products and services. The mere addition of the generic word ‘dictionary’ to the Complainant’s mark is not sufficient to dispel confusion...”).
Accordingly, Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Regarding the second element of the Policy, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests with respect to the Domain Name, while Respondent’s emails have failed to rebut this finding. The Panel observes that Respondent (and his law firm) is not commonly known by the Domain Name, and Respondent has no intellectual property or other rights to the name “legalzoombankruptcy.” Moreover, Complainant has not authorized Respondent to use Complainant’s LEGALZOOM marks in the Domain Name. Respondent is not making any legitimate noncommercial use of the Domain Name. Complainant has submitted evidence that Respondent is using the Domain Name to link to a website for Respondent’s law firm, which operates in the legal field where Complainant also offers services. Respondent’s website does not include a disclaimer to distinguish its site from that of Complainant’s site. Instead, the Domain Name, which includes Complainant’s mark in its entirety along with the term “bankruptcy” – which term is itself related to Complainant’s field of commerce – raises an inference of potential affiliation or sponsorship. As stated in WIPO Overview 3.0, section 2.5, “a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner….”
Finally, the Panel observes that Complainant’s LEGALZOOM marks derive from an invented word and thus there is a probability that Respondent registered the Domain Name in 2012 – 12 years after Complainant had first commenced use and established rights in its LEGALZOOM marks – with knowledge of Complainant and its marks to create an impression of association with Complainant.
Respondent’s emails have not provided any evidence or explanation to suggest any rights or legitimate interests in the Domain Name. Respondent claims to have used the term “legalzoom-bankruptcy-same-day filing” in its advertising back in 1997, but provides no evidence in support of this point and no evidence that it had acquired any common law or registered rights in these terms, or that it has continued to use them in its advertising. Rather, Respondent indicated in its emails that it would transfer the Domain Name to Complainant only in exchange for legal referrals from Complainant to Respondent for a period of time, first indicated to be five years but then later stated as 12 months. This type of exchange, pressured by Respondent’s registration and holding of the Domain Name incorporating Complainant’s LEGALZOOM marks, does not reveal any rights or legitimate interests on the part of Respondent. Instead, it is suggestive of bad faith.
In sum, the Panel finds that Respondent has no rights or legitimate interests with respect to the Domain Name.
Accordingly, Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel observes that Respondent registered the Domain Name more than a decade after Complainant began using the LEGALZOOM marks, and also well after Complainant became a well-known online legal destination for small businesses and consumers. The Domain Name includes the LEGALZOOM mark in its entirety, along with the term “bankruptcy”, which relates directly to the legal field in which Complainant operates. The Panel therefore concludes, on the balance of the probabilities, that Respondent targeted Complainant’s well-established LEGALZOOM trademarks when it registered the Domain Name.
Further, the Domain Name links to the website of Respondent’s law firm, and thus has been used to take unfair advantage of Complainant’s LEGALZOOM marks. See, e.g., Dr. Ing. h.c.F. Porsche AG v. Hakan Melek, WIPO Case No. D2004-0982 (“the wide recognition of the complainant’s mark, together with the manner in which that mark is incorporated into the Domain Names and the fact that the Domain Names redirect Internet user to Respondent’s website, are sufficient to establish that Respondent is intentionally trading on the fame of the PORSCHE mark…”). The Panel determines that Respondent’s use of the LEGALZOOM marks in the Domain Name attracts Internet users to Respondent’s site by creating a likelihood of confusion with Complainant and its marks, generating the false impression that the site is somehow affiliated with or endorsed by Complainant. The Panel therefore concludes that Respondent’s registration and use of the Domain Name to misdirect users to Respondent’s law firm website constitutes bad faith under paragraph 4(b)(iv) of the Policy.
The Panel also finds that Respondent’s statements that it would transfer the Domain Name to Complainant in exchange for Complainant providing legal referrals to Respondent for a certain period (initially started as five years, then restated as 12 months), amounts to bad faith akin to the circumstances set forth in paragraph 4(b)(i) of the Policy (i.e., circumstances indicating that the respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name).
Accordingly, the Panel determines that Complainant has satisfied the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <legalzoombankruptcy.com>, be transferred to Complainant.
Christopher S. Gibson
Date: August 14, 2017