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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LegalZoom.com, Inc. v. Sharon Hershkowitz, balloon Saloon

Case No. D2020-2927

1. The Parties

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

The Respondent is Sharon Hershkowitz, balloon Saloon, United States.

2. The Domain Name and Registrar

The disputed domain name <legalzoom.nyc> (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 November 4, 2020. On November 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 6, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name, which differed from the named Respondent, and contact information in the Complaint. The Center sent an email communication to the Complainant on November 6, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 9, 2020.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2020. The Response was filed with the Center on November 25, 2020.

The Center appointed Martin Schwimmer as the sole panelist in this matter on December 7, 2020. 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. Due to unforeseen circumstances, and having apprised the Parties the Panel has had to extend the decision due date.

4. Factual Background

The Complainant, LegalZoom.com, Inc., has been providing online legal document preparation and related services in relation to the LEGALZOOM trademark since 2001.

The Complainant’s business is an online business that depends on its Internet presence. The Complainant maintains a website at “www.legalzoom.com”, where it offers a variety of legal document services, legal information, and attorney listings. As a result of its promotional, marketing, advertising efforts, the Complainant’s LEGALZOOM trademark has achieved fame and recognition in the media and in popular culture, in particular in the United States.

The Complainant holds numerous registrations for the trademark LEGALZOOM in the United States and worldwide including the:

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

- United States Registration for LEGALZOOM, No. 3210728, registered on February 20, 2007 in International Class 42;

- United States Registration for LEGALZOOM (stylized), No. 2540549, registered on February 19, 2002 in International Class 42.

The Respondent registered the Disputed Domain Name on November 14, 2014. The Disputed Domain Name redirects to a website promoting what is presumably the Respondent’s party decoration business.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

Previous UDRP panels found 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”. LegalZoom.com, Inc. v. Robert Sloan, WIPO Case No. D2019-0359. Other previous UDRP panels are in accord. See also LegalZoom.com, Inc. v. Doug Bernacchi, WIPO Case No. D2017-1172 (transferring to the Complainant and noting that the “Complainant has well-established rights in its LEGALZOOM trademarks…”); LegalZoom.com, Inc. v. Registration Private, et al., WIPO Case No. D2017-2022 (transferring and to the Complainant and noting that “the trademark LEGALZOOM is well known in the United States and is a coined term.”).

The Disputed Domain Name is identical to the Complainant’s LEGALZOOM Mark and the primary website through which the Complainant conducts its business, except that the Disputed Domain Name substitutes the generic top-level domain “.nyc” for the generic Top-Level-Domain “gTLD” “.com” found in the Complainant’s domain name.

The Respondent is not in any way associated with the Complainant and has never sought nor received authorization or a license to use the Complainant’s valuable, famous, and distinctive LEGALZOOM trademark in any way or manner.

The Respondent has no means to establish that she is or ever has been commonly known as “LegalZoom”. According to the Complainant, the Respondent has not sought or procured any registrations for any tradenames, corporations, or trademarks with any governmental or business authority for “LegalZoom”. The Respondent does not appear to have any legitimate trademark, service mark or other intellectual property rights in the LEGALZOOM Trademark.

The Respondent is not making any legitimate noncommercial use of the Disputed Domain Name. Rather, the Respondent’s use of the Disputed Domain Name is purely commercial, as it is used to automatically redirect visitors to her website at “www.balloonsaloon.com”, which website sells balloon decorations for parties.

The LEGALZOOM Trademark is an invented word, and as such, third parties would not legitimately choose this name, unless seeking to create an impression of an association with the Complainant.

The Respondent registered the Disputed Domain Name, which is identical to the Complainant’s famous trademark, and is using it to automatically direct Internet visitors to her commercial website at “www.ballonsaloon.com”, which appears to promote the Respondent’s business selling party. This is bad faith.

B. Respondent

The Respondent sent an informal response on November 25, 2020 claiming that she intends to keep the Disputed Domain Name. The Respondent’s communications contained neither evidence nor arguments relating to this dispute.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel determines that the Complainant has well-established rights in its LEGALZOOM trademark, based on the evidence of the Complainant’s multiple trademark registrations as well as the continuous use and widespread promotion of the LEGALZOOM trademark in the United States since its first use in commerce in 2000 or 2001.

The Disputed Domain Name contains the Complainant’s LEGALZOOM trademark in its entirety with the addition solely of the non-distinctive gTLD suffix “.nyc”.

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.8 states that where the relevant trademark is recognizable within the Disputed Domain Name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Here that is true also with respect to the gTLD involved.

Accordingly, the Panel finds that the Disputed Domain Name is identical to the Complainant’s LEGALZOOM mark.

B. Rights or Legitimate Interests

The Disputed Domain Name redirects users to a website at “www.balloonsaloon.com”, The Panel finds that this which website appears to be operated by the Respondent, based on the identity of identifying information on that website, including phone number, email, and trading name. The website contains no reference to the Complainant’s business nor to the Trademarks, but merely promotes the Respondent’s business.

Regarding the second element of the Policy, the 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 the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests with respect to the Disputed Domain Name. The Respondent’s emails do not make substantive arguments and therefore have failed to rebut this finding. The Respondent is not commonly known by the Disputed Domain Name, and the Respondent has no intellectual property or other rights in relation to the name “legalzoom”. Moreover, the Complainant has not authorized the Respondent to use the Complainant’s LEGALZOOM marks in the Disputed Domain Name. The Respondent is not making any legitimate noncommercial use of the Disputed Domain Name.

In sum, the Panel finds that the Respondent has no rights or legitimate interests with respect to the Disputed Domain Name.

Accordingly, the 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 the Complainant demonstrate that the Respondent registered and is using the Disputed Domain Names in bad faith. The 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”.

“There 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. D2006-1107. See also, Veuve Clicquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.

Here, the Panel observes that the Respondent registered the Disputed Domain Name more than a decade after the Complainant began using the LEGALZOOM marks, and also well after the Complainant became a well-known online legal destination for small businesses and consumers. The Disputed Domain Name includes the unique and well-known LEGALZOOM mark in its entirety. The Panel therefore concludes that the Respondent targeted the Complainant’s well-established LEGALZOOM trademark when she registered the Disputed Domain Name.

Furthermore, the Panel determines that the by directing the Disputed Domain Name to the website of her business, the Respondent’s use of the LEGALZOOM mark in the Disputed Domain Name attracted Internet users to her site, thereby disrupting the Complainant’s business. Such disruption is particularly acute when, as here, the Complainant’s business is completely online.

The Respondent had the opportunity to explain her actions and did not. The Panel therefore concludes that the Respondent’s registration and use of the Disputed Domain Name to misdirect Internet users to the Respondent’s website constitutes bad faith under paragraph 4(b)(iv) of the Policy.

Accordingly, the Panel determines that the Complainant has satisfied the third element of the Policy.

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 <legalzoom.nyc> be transferred to the Complainant.

Martin Schwimmer
Sole Panelist
Date: January 19, 2021

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