WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LegalZoom.com, Inc. v. Robert Sloan

Case No. D2019-0359

1. The Parties

The Complainant is LegalZoom.com, Inc. of Glendale, California, United States of America (“United States”), represented by Bryan Cave Leighton Paisner LLP, United States.

The Respondent is Robert Sloan of New York, New York, United States, represented by O’Brien LLP, United States.

2. The Domain Name and Registrar

The disputed domain name <legalzoomipo.com> (the “Disputed 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 February 15, 2019. On February 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 19, 2019, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on February 19, 2019. The Response was due on March 11, 2019. In accordance with the Rules, paragraph 5, the Center granted an automatic four-day extension to the Respondent, with the Response due on March 15, 2019. On March 14, 2019, the Respondent requested an additional week extension. The Complainant opposed such additional extension. The Respondent submitted the Response on March 16, 2019.

The Center appointed Lynda M. Braun as the sole panelist in this matter on March 29, 2019. 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

The Complainant is an online legal company that offers online legal document services, attorney listings, and general legal information to small businesses and individual consumers. For more than fifteen years, the Complainant has continuously used the LEGALZOOM trademark in connection with its online legal document business and related goods and services. The Complainant holds numerous registrations for the trademark LEGALZOOM in the United States and worldwide (collectively, the “LEGALZOOM Mark”). For example, the Complainant owns all right, title and interest in the following United States trademark registrations:

- LEGALZOOM, United States Registration No. 3210861, registered on February 20, 2007 for “attorney referral services” in International Class 35;

- LEGALZOOM, United States Registration No. 3210728, 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;

- LEGALZOOM, United States Registration No. 3211009, registered on February 20, 2007 for “providing online directory information on attorney listings; attorney referral and matching services” in International Class 35;

- LEGALZOOM (stylized), United States Registration No. 2540549, 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;

- LEGALZOOM.COM, United States Registration No. 3569,400 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

- LEGALZOOM.COM (stylized), United States Registration No. 3748170, 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 at least as early as 2001, the Complainant has maintained an active presence on the Internet, including through its official website “www.legalzoom.com”, where it offers a variety of legal document services, legal information, and attorney listings. The Complainant’s business is an online business that depends on its Internet presence to acquire and service clients.

The Respondent registered the Disputed Domain Name on August 22, 2018. The Disputed Domain Name currently resolves to a parking page1 that states “Would you like to buy this domain?”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights;

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;

- The Disputed Domain Name was registered and is being used in bad faith; and

- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent submitted the Response that denied the allegations in the Complaint. The Respondent specifically denied that it was ever engaged in abusive domain name registration and stated that it never offered the Disputed Domain Name for sale. In a paragraph labeled “optional”, the Respondent consented to the remedy requested by the Complainant, agreeing to transfer the Disputed Domain Name to the Complainant and/or have the Disputed Domain Name canceled.

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) The Disputed Domain Name was registered and is being used in bad faith.

A. Preliminary issue

As indicated above, the Respondent has agreed to transfer or cancel the Disputed Domain Name. Despite such a consent, the Panel finds it appropriate to proceed to a substantive decision on the merits. See section 4.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”).

B. Identical or Confusingly Similar

The Panel determines that the Complainant has well-established rights in its LEGALZOOM Mark based on the Complainant’s numerous trademark registrations as well as the Complainant’s continuous use and widespread promotion of the LEGALZOOM Mark in the United States and worldwide. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. See CWI, Inc. v. Domain Administrator c/o Dynadot, WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has enforceable rights in the LEGALZOOM Mark.

The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s LEGALZOOM Mark. The Disputed Domain Name consists of the LEGALZOOM Mark in its entirety followed by the letters “ipo”, and followed by the generic Top-Level Domain (“gTLD”) “.com”.

First, the Disputed Domain Name incorporates the Complainant’s LEGALZOOM Mark in its entirety. Prior UDRP panels have held that “when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy.” See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

Second, the mere addition of the letters “ipo”, a commonly-known acronym for “initial public offering”, does not prevent a finding of confusing similarity. See SoftBank Group Corp., SoftBank Corp. v. WhoisGuard Protected, WhoisGuard, Inc. / Nick Fletcher, WIPO Case No. D2018-2682 (transferring <iposoftbank.com> and stating that the acronym “ipo” is non-distinctive).

Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Rights or Legitimate Interests

Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its LEGALZOOM Mark. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Nor does the Complainant have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Name (discussed below), the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

D. Registered and Used in Bad Faith

First, the registration of a domain name that is identical or confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.

Second, the Panel finds that the Respondent knew or should have known of the Complainant’s rights in its LEGALZOOM Mark when registering the Disputed Domain Name. As noted above, the Complainant’s LEGALZOOM Mark is widely known and used and the Respondent registered the Disputed Domain Name many years after the Complainant first used and obtained its numerous trademark registrations in the United States and worldwide for the LEGALZOOM Mark. It therefore strains credulity to believe that the Respondent had not known of the Complainant or its LEGALZOOM Mark when registering the Disputed Domain Name. See Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763.

Third, by using the Disputed Domain Name passively and having no content on its web page,2 the Respondent has registered and is using the Disputed Domain Name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. “The lack of use [of a domain name] by itself does not indicate anything. Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy.” See El Bebe Productions Ltd v. Rachid Zouad, WIPO Case No. D2018-0469 (citing Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decorações ME, WIPO Case No. D2009-1335).

Finally, since the Respondent’s parking page states “Would you like to buy this domain?,”, it indicates that the Disputed Domain Name was for sale and was acquired for the purpose of selling or otherwise transferring it to the Complainant or a third party for valuable consideration.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

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 Disputed Domain Name <legalzoomipo.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: March 31, 2019


1 At the writing of this decision, the Disputed Domain Name resolved to a parking page with no content other than the offer to sell the Disputed Domain Name. The Complainant, however, provided a screenshot of the parking page as an Annex to the Complaint that existed previously. The screenshot of the parking page consisted of pay-per-click sponsored third-party links offering legal documents and other legal services.

2 As described above, the Panel notes that the Disputed Domain Name no longer resolves to a parking page containing pay-per-click sponsored links as submitted in the Complaint, but instead, at the writing of this Decision, now resolves to a passive parking page. Nevertheless, when the links on pay-per-click pages are based on the trademark value of a complainant’s domain name, the trend in UDRP decisions is to recognize that such practices constitute bad faith. See, e.g., Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006 (pay-per-click landing page not legitimate where ads are keyed to the trademark value of the domain name); The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340 (same).