WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cicero League of International Lawyers v. James Hotka, linkUwant.com
Case No. D2017-0943
1. The Parties
The Complainant is Cicero League of International Lawyers of Hull, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by SCP Leaua & Asociatii, Romania.
The Respondent is James Hotka, linkUwant.com of Indianapolis, Indiana, United States of America (“United States), self-represented.
2. The Domain Names and Registrar
The disputed domain names <cicerolawyers.com> and <cicerolegal.com> (the “Disputed Domain Names”) are registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2017. On May 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On the same date, 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 May 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 4, 2017. The Response was filed with the Center on June 4, 2017.
The Center appointed John Swinson as the sole panelist in this matter on June 14, 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
The Complainant is a network of international independent law firms. The Complainant’s business is named after the ancient history figure Marcus Tullius Cicero, who was a Roman politician and lawyer born in 106 BC.
The Complainant owns the registered trade mark for CICERO (the “Trade Mark”) within the European Union. The European Union trade mark (no. 004621661) was registered on March 15, 2007.
The President of the Complainant’s board owns the domain name <ciceroleague.com> which is used by the Complainant. This domain name was registered in January 2006.
The Disputed Domain Name <cicerolawyers.com> (“First Disputed Domain Name”) was registered on February 22, 2004. The second Disputed Domain Name <cicerolegal.com> (“Second Disputed Domain Name”) was registered on May 4, 2011.
5. Parties’ Contentions
Identical or confusingly similar
The Complainant submits that the Disputed Domain Names are confusingly similar to its Trade Mark given that the Trade Mark is included in entirety. The differences between the Trade Mark and the Disputed Domain Names are the addition of the generic words “legal” and “lawyers” and the inclusion of the generic Top-Level Domain (gTLD) “.com”. The Complainant argues that neither of these factors add any distinctiveness to the Disputed Domain Names.
Further, the Complainant submits that the inclusion of the words “legal” and “lawyers” reinforce the association with the Trade Mark given the Complainant is a provider of legal services.
Rights or legitimate interests
The Complainant argues that the Respondent has no rights or legitimate interests in the Disputed Domain Names and is unable to demonstrate a bona fide offering of goods and services. The Complainant highlights that there is text on the websites at the Disputed Domain Names that state that the “domain may be for sale”. The Complainant further notes that the Respondent has registered thousands of domain names and set up a website to sell them, which the Complainant submits has been done for the purpose of financial gain.
Registration and use in bad faith
The Complainant submits that the Respondent must have been aware of their Trade Mark given its extensive use. The Complainant submits that the following factors demonstrate bad faith:
- The inclusion of links to other legal companies on the websites at the Disputed Domain Names, which the Complainant argues cannot be coincidental;
- The “passive use” of the Disputed Domain Names;
- The fact that the websites at the Disputed Domain Names are “parking websites”;
- The inclusion of notices on the websites at the Disputed Domain Names that they are for sale;
- The Respondent’s involvement in other UDRP cases; and
- The Respondent’s alleged ownership of more than 37,000 domain names.
The Respondent runs a business named “linkUwant” which commenced in 1999 as an online advertising business that acquires websites consisting of a geographic region joined with a well-established trade followed by the gTLD “.com”.
The Respondent contends that the term “Cicero” is used as a geographical reference to the cities located in the United States of America. The Respondent has registered a total of 43 domain names which include the word “cicero” to advertise resources to businesses and professionals offering services in the city of Cicero.
Identical of Confusingly Similar
The Respondent submits that while the term Cicero is identical to the Trade Mark, it is being used in a different way to the Complainant, with the Respondent using it as a reference to a geographical location. In addition, the Respondent submits that the Disputed Domain Names are not confusingly similar given the Respondent is not involved in a competing business and operates in a different jurisdiction.
Rights or Legitimate Interests
The Respondent submits that his company’s use of the term Cicero, which commenced on February 20, 2004, predates the Complainant’s registration of the Trade Mark, as well as the Complainant’s certificate of incorporation.
The Respondent notes that the First Disputed Domain Name was registered prior to the Complainant applying to register its Trade Mark within the European Union or internationally. The Second Disputed Domain Name was registered following the European Union registration but pre-dating the international Trade Mark registration. The Respondent argues that the Second Disputed Domain name cannot be said to infringe the European registered Trade Mark given it is used in the promotion of an American city.
The Respondent submits that the Complainant has no rights in the Trade Mark given that it is a geographical location which he is using in a geographically descriptive sense.
Registered and Used in Bad Faith
The Respondent submits that the Disputed Domain Names were registered and operated in good faith. The Respondent states that he checked whether there were any relevant registered trade marks prior to purchasing the Disputed Domain Names (which there weren’t) and that the Disputed Domain Names were subsequently purchased and used in commerce for a number of years.
Furthermore, the Respondent highlights that offering a domain name for sale and parking a domain name is neither illegal nor a representation of bad faith.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Names are identical or confusingly similar to a trade mark 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 Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.
The onus of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
The Trade Mark which is included entirely in both of the Disputed Domain Names. In this case the gTLD “.com” is irrelevant in assessing confusing similarity under the Policy and may be ignored. The inclusion of the words “lawyers” and “legal”, which are common terms, does nothing to detract from this similarity.
In light of the above, the Complainant succeeds on the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of both of the Disputed Domain Names.
The Complainant’s main argument on this point is that the Respondent has not rights or legitimate interests because he registered the Disputed Domain Names with the intention of selling them.
The Respondent asserts that he registered the Disputed Domain Names to operate online advertising businesses related to the dictionary meaning of the Disputed Domain Names. For example, an online advertising website to promote dentists in Marquette, Michigan or to promote lawyers in the town of Cicero, New York. During a downturn in the economy, the Respondent ceased this business model, and parked his domain names. He had costs for domain name renewal fees, which he tried to recover through pay-per-click (PPC) advertising and by selling some of his domain name portfolio. He states that he has no intention of selling all or most of his domain names, and that his costs exceed his revenue, which is believable since he owns a large domain name portfolio. He states that he plans to resurrect his original business model in a few years from now, when his personal situation is expected to change.
In these circumstances, registering a large number of domain names to operate an online advertising business, and then trying to sell some of these domain names during a business downturn, does not necessarily demonstrate that the Respondent has no rights or legitimate interests in the Disputed Domain Names.
The Panel does not need to reach a conclusion on the second element of the Policy in view of the findings in relation to bad faith below.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.
The Complainant was incorporated as a company under English law in May 2013. This was after both Disputed Domain Names were registered by the Respondent.
However, the Complainant appears to assert that it is the successor-in-title to an unincorporated association that was established in November 2003. This was a few months before First Disputed Domain Name was registered by the Respondent.
The First Disputed Domain Name was registered prior to the Complainant filing for any registered trade marks.
The key issue here is whether the Respondent registered the First Disputed Domain Name because of the Complainant’s trade mark rights. It appears unlikely that he did so. There is no evidence demonstrating that the Respondent was or was likely to have been aware of the Complainant in February 2004. At this time, there is no evidence that the Complainant had a strong or any trade mark reputation. The Respondent was located in Indiana, and there is no evidence that the Complainant had any reputation in the United States in 2003 or 2004. The Respondent is not in the legal business. The Respondent states that he conducted a trade mark search but did not find any trade marks of the Complainant (because there was no trade mark registration until much later in time).
The Respondent registered the Disputed Domain Names because of his business of online advertising. It appears that many of his domain names have a similar format, being a trade or profession followed by a geographic location. For example, the Respondent owns:
The Respondent owns 43 “Cicero” domain names, relating to real estate, dentistry, cars, doctors and escorts for example, that match this format.
The Respondent owns a large number of domain names including legal terms that also match this format, such as <iowainjurylawyers.com>.
He also owns “generic” domain names, such as <economyelevators.com> and <gastoyou.com>.
The situation here is not similar to the famous Panavison.com case (Panavision Intl v. Toeppen 141 F.3d 1316 (9th Cir. 1998)), where Mr. Toeppen asserted that he registered this domain name to show his vision of Pana, Illinois. It is believable in the circumstances here that the Respondent registered the Disputed Domain Names to operate advertising websites to promote lawyers in Cicero, Illinois or Cicero, New York, or Cicero, Indiana.
The PPC links on the websites at the Disputed Domain Names (as shown in printouts in the case file) do not demonstrate that the Respondent was targeting the Complainant or advertising the Complainant’s competitors. The links are general categories aimed at consumers looking for lawyers, such as “criminal defense lawyers” and “automobile accident lawyers”, or are general links, such as links to “Locations in Chicago, Ill”, “Marcus Tullius Cicero” or “Legal”.
Thus, the Panel concludes that the Respondent was using the Disputed Domain Names in a descriptive sense, and not trading off the reputation of the Complainant. It is merely an unfortunate but not improbable coincidence that the term “Cicero” is used as the name of a legal group and as the names of towns or suburbs in the United States where lawyers have businesses.
There is no evidence to suggest that the Respondent has used the Disputed Domain Names in a misleading attempt to imply any affiliation with the Trade Mark or the Complainant.
The Respondent has owned the Disputed Domain Names for many years. There is no evidence to suggest that the Respondent registered the Disputed Domain Names with the intention of selling it to the Complainant or a competitor of the Complainant. There is no evidence to suggest that the Respondent registered the Disputed Domain Names primarily to disrupt the business of the Complainant or that the Complainant is a competitor of the Respondent.
In light of the above, the Panel finds that the Complainant has not made out the third element of the Policy, because there is insufficient evidence to find registration in bad faith or use in bad faith.
For the foregoing reasons, the Complaint is denied.
Date: June 28, 2017