WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LegalZoom.com, Inc. v. Registration Private, Domains By Proxy, LLC / Byrlyne Van Dyke / Byrlyne Van Dyke-Dowers

Case No. D2017-2022

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 Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Byrlyne Van Dyke and Byrlyne Van Dyke-Dowers of Houston, Texas, United States.

2. The Domain Names and Registrar

The disputed domain names <legalzoomhouston.com> and <mylegalzoom.co> (the "Domain Names") are registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 18, 2017. On October 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 19, 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. Complainant filed an amended Complaint on October 27, 2017, including updated contact information for Respondent.

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 October 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 20, 2017.

The Center appointed John C McElwaine as the sole panelist in this matter on November 29, 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, Legalzoom.com, Inc., is a provider of online legal document services, attorney listings, and general legal information to small businesses and individual consumers. Complainant is the owner of the mark LEGALZOOM, including United States Registration No. 2540549, registered on February 19, 2002, as well as numerous other trademark registrations in the United States and other countries around the world. Complainant has been using its LEGALZOOM mark for more than 15 years and has maintained an active online presence since at least as early as 2001.

Respondent, Byrlyne Van Dyke / Byrlyne Van Dyke-Dowers, resides in Houston, Texas, United States. On September 20, 2011, Respondent registered the <mylegalzoom.co> Domain Name. On October 18, 2015, Respondent registered the <legalzoomhouston.com> Domain Name. As of the filing of the Complaint the Domain Names did not resolve to an active website or resolved to a parked landing page provided by the Registrar.

5. Parties' Contentions

A. Complainant

Complainant contends that the Domain Names should be transferred because each of the three elements required in paragraph 4(a) of the Policy has been established

Complainant contends that Complainant is the premier online legal destination for small businesses and consumers offering online legal document services, attorney listings, and general legal information to small businesses and individual consumers. Complainant claims to have continuously used its LEGALZOOM mark for more than 15 years in connection with online legal document services, attorney listings, and general legal information services. Since at least as early as 2001, Complainant has maintained an active presence on the Internet, including through its website "www.legalzoom.com", where it offers a variety of legal document services, legal information, and attorney listings.

Complainant claims to have expended and continues to expend a substantial amount of resources, money, time and effort promoting, marketing, advertising, and building consumer recognition and goodwill in Complainant's LEGALZOOM mark. As a result, Complainant contends that its LEGALZOOM mark has enjoyed substantial fame and recognition in the media and popular culture having been featured in numerous media outlets, including MSNBC, the Today Show, Mashable, Bloomberg Law, and Fortune magazine. In addition, Complainant contends that LEGALZOOM branded products and services have been endorsed by some of the biggest names in entertainment, sports, and legal professionals, such as Kim Kardashian, Adam Carolla, Sean Hannity, Bill Handel, Ray Lucia, Dan Patrick, and Bruce Lehman. Lastly, Complainant claims that it has earned numerous awards and has been recognized by multiple news sources for providing innovative and supportive tools for small business owners..

Complainant asserts that Complainant's LEGALZOOM mark is distinctive, well known, famous, and highly recognizable. Complainant registered its LEGALZOOM mark in the United States at least as early as 2002 for use in connection with legal document preparation services and providing legal information services and at least as early as 2007 for attorney referral and matching services. Complainant further contends that it has successfully asserted its rights in the LEGALZOOM mark in previous UDRP cases (see LegalZoom.com, Inc. v. Doug Bernacchi, WIPO Case No. D2017-1172; LegalZoom.com, Inc. v. Minh Tran, Arrow Law Group, WIPO Case No. D2015-2071).

With respect to the allegations directed toward Respondent, Complainant alleges that the Domain Names are confusingly similar to Complainant's LEGALZOOM mark, Respondent does not have a legitimate interest in the Domain Names, and Respondent registered and continues to use the Domain Names in bad faith. Complainant contends that the Domain Names should be transferred to Complainant because each of the three elements required in paragraph 4(a) of the Policy has been established.

With respect to the first element of the Policy, Complainant asserts rights in the LEGALZOOM mark dating back at least as early as 2002. Complainant alleges that Respondent wholly incorporates Complainant's LEGALZOOM mark in the registered Domain Names and the addition of the generic or geographic terms "my" and "Houston", respectively, do not obviate the likelihood of confusion, and thus, the Domain Names are confusingly similar to Complainant's LEGALZOOM mark.

With respect to the second element of the Policy, Complainant contends that there is no evidence that Respondent has rights or a legitimate interest in the Domain Names because registration of the Domain Names occurred after Complainant had made extensive use of the LEGALZOOM mark and after Complainant had registered the LEGALZOOM mark in the United States. Complainant asserts that it has not licensed or otherwise permitted Respondent to use the LEGALZOOM mark, there is no relationship between the Parties, and nothing in the record suggests that Respondent is commonly known by the Domain Names.

With respect to the third element of the Policy, Complainant alleges that Respondent's passive holding of the Domain Names is evidence of registration and use of the Domain Names in bad faith in violation of paragraph 4(a)(iii) of the Policy. Furthermore, Complainant alleges that Respondent's lack of trademark or other intellectual property rights in MYLEGALZOOM and LEGALZOOMHOUSTON is evidence of registration and use of the Domain Names in bad faith. Lastly, Complainant also contends that Respondent had, at a minimum, constructive knowledge of Complainant's LEGALZOOM mark at the time the Domain Names were registered such that the registrations were completed in bad faith.

B. Respondent

Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

Even though Respondent has defaulted, paragraph 4(a) of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:

(i) the 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 Domain Names; and

(iii) the Domain Names have been registered and are being used in bad faith.

Because of Respondent's default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited. v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules ("If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint"). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel's findings on each of the above cited elements are as follows.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires Complainant show that each Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.2. Complainant has provided evidence that it is the owner of the LEGALZOOM mark since at least as early as 2002 as evidenced by Complainant's registration of the mark with the United States Patent & Trademark Office. The Panel finds that Complainant owns trademark rights in the LEGALZOOM trademark.

It is well established, and the Panel agrees, that the addition of a descriptive word to a trademark in a domain name does not avoid a finding of confusing similarity. See Mastercard Int'l Inc. v. Dolancer Outsourcing Inc., WIPO Case No. D2012-0619; Air France v. Kitchkulture, WIPO Case No. D2002-0158; DHL Operations B.V., et al. v. Diversified Home Loans, WIPO Case No. D2010-0097.

Furthermore, the Panel also agrees with the finding of previous WIPO UDRP panels that the use of a mark in its entirety together with a geographic term in a domain name creates a domain name that is confusingly similar to the mark. See, e.g., Playboy Enterprises International Inc. v. Melancia, WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNic.com / Domain Name for Sale, WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited, WIPO Case No. D2004-0986; Six Continents Hotels, Inc., Inter-Continental Hotels Corporation. v. South East Asia Tours, WIPO Case No. D2004-038; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; Sysco Corporation v. Jose Castaneda, WIPO Case No. D2007-0197; Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437.

With respect to the <mylegalzoom.co> Domain Name, the Panel finds that Respondent's addition of "my" to "legalzoom" does not obviate a finding of confusing similarity with Complainant's LEGALZOOM mark. Furthermore, with respect to <legalzoomhouston.com>, the Panel finds that Respondent's addition of "Houston" to "legalzoom" in the Domain Name does not obviate a finding of confusing similarity. Based on the foregoing, the Panel finds that Complainant has met its burden of showing that each Domain Name is confusingly similar to the LEGALZOOM mark in which Complainant has rights.

B. Rights or Legitimate Interests

Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Names. Complainant need only make a prima facie showing on this element, at which point the burden shifts to Respondent to present evidence that it has some rights or legitimate interests in the Domain Names. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.

Here, Complainant asserts that (i) Respondent is not a licensee or affiliate of Complainant and Respondent is not authorized to use the LEGALZOOM mark for any activity; (ii) Respondent has never been commonly known as "LegalZoom" or "MyLegalZoom"; (ii) Respondent has not obtained any tradenames, corporation names, or trademark rights/registrations for "LegalZoom" or "MyLegalZoom"; (iv) Respondent is not making any legitimate noncommercial use of the Domain Names; and (v) LEGALZOOM is a coined term, and as such Respondent does not have any rights or legitimate interests in the Domain Names.

Although properly notified by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the Domain Names. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to a complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.

Under paragraph 4(c) of the Policy, a respondent's rights or legitimate interests to a domain name may be established by demonstrating any of the following three conditions: (i) before any notice to the respondent of the dispute, the respondent's 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is 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 will not be able to show rights or legitimate interests under any of the three conditions.

First, Respondent is not making any use, let alone bona fide use, of the Domain Names under paragraph 4(c)(i). When Respondent registered the Domain Names, Complainant had established rights in the LEGALZOOM mark. Second, as discussed above, Respondent is not known by the coined name "LegalZoom". Instead, the Domain Names resolve to an inactive webpage or otherwise undeveloped parked web page. Passive holding of a disputed domain name incorporating a third-party, well-known mark does not normally amount to a bona fide use. It is well established that inaction or passive holding can, in certain circumstances, constitute bad faith use. See CBS Broadcasting Inc. v. Edward Enterprises, WIPO Case No. D2000-0242.

Accordingly, Complainant has made a prima facie showing of Respondent's lack of any right or legitimate interest and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent's default as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Names and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under Paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Names in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.

Complainant contends that Respondent registered and is using the Domain Names in bad faith as evidenced by (i) Respondent knew or should have known of Complainant's trademark rights in the LEGALZOOM mark; (ii) Respondent is not actually using or is passively holding the Domain Names; and (iii) Respondent's concealment of its identity with respect to registering the Domain Name <legalzoomhouston.com>.

Bad faith registration can be found where a respondent "knew or should have known" of a complainant's trademark rights and nevertheless registered a domain name in which it had no rights or legitimate interests. See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. Based on Complainant's submissions, which were not rebutted by Respondent, Respondent must have known of Complainant's LEGALZOOM mark, when it decided to register the Domain Names, both of which fully incorporate Complainant's LEGALZOOM mark combined with a geographic term. There is no explanation or evidence of rights or legitimate interests to justify Respondent's choice to use the descriptive and geographic terms in combination with the LEGALZOOM mark other than to trade off the goodwill and reputation of Complainant's trademark or otherwise create a false association with Complainant. With no response from Respondent, this claim is undisputed.

The fact that the Domain Names do not resolve to websites and are being passively held does not obviate a finding of bad faith. When a domain name is being passively held, the question of bad faith use does not squarely fall under one of the aforementioned non-exhaustive factors set out in paragraph 4(b) of the Policy. The three member panel, in Magazine Publishers Inc. and Les Publications Conde Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615, made the following observations in its determination that the respondent was acting in bad faith:

(i) the complainant's trademark had a strong reputation and is widely known, as evidenced by its substantial use in the United States and in other countries;

(ii) the respondent provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name;

(iii) the respondent registered the domain name in 1999, and seemed not to have been using the domain name;

(iv) the respondent did not reply to the complainant's communications before the proceedings; and

(v) the respondent did not reply to the complainant's contentions.

Respondent did not respond to the Complaint and has provided no evidence of its intended use of the Domain Names. In fact, Respondent is not using the Domain Names in any manner to demonstrate a bona fide use or potential use. However, it is clear that the Domain Names were chosen to draw an association with Complainant. The term LEGALZOOM is well known in the United States and is a coined term. In light of these factors, the Panel finds that Respondent's passive holding of the Domain Names satisfies the requirement of paragraph 4(a)(iii) of the Policy that the Domain Names are being used in bad faith by Respondent.

Because the Panel finds that Respondent knew or should have known of Complainant's trademark rights and that Respondent's passive holding of the Domain Names is evidence of registration and use of the Domain Names in bad faith, the Panel need not address the issue of whether Respondent's use of a privacy proxy services is evidence of registration and use in bad faith.

For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Names in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <legalzoomhouston.com> and <mylegalzoom.co>, be transferred to Complainant.

John C McElwaine
Sole Panelist
Date: December 13, 2017