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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LegalZoom.com, Inc. v. Minh Tran, Arrow Law Group

Case No. D2015-2071

1. The Parties

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

The Respondent is Minh Tran, Arrow Law Group of Seattle, Washington, U.S.

2. The Domain Names and Registrar

The disputed domain names are <legalzoom.attorney> and <legalzoom.lawyer> (the “Domain Names”) and are registered with GoDaddy, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2015 listing Minh Tran, Arrow Law Group as the Respondent. On November 16, 2015, the Center transmitted a request for registrar verification in connection with the Domain Names to the Registrar by email. On November 16, 2015, the Registrar transmitted to the Center by email its verification response confirming the contact details of the Respondent with regard to the Domain Names and that it had placed the Domain Names on Registrar HOLD and LOCK status in accordance with paragraph 4(b) of the Rules for the Uniform Domain Name Dispute Resolution Policy (the “Rules”). The Registrar further confirmed that the HOLD and LOCK status would remain in place during the UDRP proceeding.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules, and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint and the proceeding commenced on November 20, 2015. In accordance with paragraph 5(a) of the Rules, the due date for the Respondent to file a Response was December 10, 2015. The Respondent did not submit any response with respect to this proceeding. The Center notified the parties of the Respondent’s default on December 11, 2015.

The Center appointed Marylee Jenkins as the sole panelist in this matter on December 22, 2015. 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 paragraph 7 of the Rules.

4. Factual Background

Based on the review of the uncontested evidence submitted with the Complaint, the Panel determines that the Complainant owns trademark registrations for the mark LEGALZOOM in multiple countries including, for example, U.S. Trademark Registration Nos. 3,210,861 (registered February 20, 2007), 3,210,728 (registered February 20, 2007), and 3,211,009 (registered February 20, 2007); U.S. Trademark Registration No. 2,540,549 for the mark LEGALZOOM (stylized) (registered February 19, 2002); U.S. Trademark Registration No. 3,569,400 for LEGALZOOM.COM (registered February 3, 2009); and U.S. Trademark Registration No. 3,748,170 for the mark LEGALZOOM.COM (stylized) (registered February 16, 2010) in at least international classes 35, 42 and/or 45 (individually and collectively referred to as the “Complainant’s Marks”). The Complainant also registered and operates a website at the domain name <legalzoom.com>.

The Domain Names <legalzoom.attorney> and <legalzoom.lawyer> were both registered on October 6, 2014 and currently do not resolve to accessible websites.

5. Parties’ Contentions

A. Complainant

The Complainant states that it is the premiere online legal destination for small businesses and consumers and that it offers online legal document services, attorney listings, and general legal information to small businesses and individual consumers. The Complainant alleges that it has continuously used the Complainant’s Marks in connection with its online legal document business and related goods and services, and that its use predates the registration of the Domain Names by over a decade. The Complainant alleges it has expended, and continues to expend, a substantial amount of resources, money, time and effort promoting, marketing, advertising, and building consumer recognition and goodwill in the Complainant’s Marks and that the evidence shows that the Complainant’s Marks have become famous and enjoy a worldwide good reputation. In support of this claim, the Complainant has provided evidence of celebrity endorsements and media coverage of its business activities, which offers goods and services under the Complainant’s Marks.

The Complainant states that it is the owner of all rights in and to the Complainant’s Marks and corresponding common law marks (including, but not limited to, all goodwill associated therewith). In support, the Complainant has provided evidence of several U.S. registrations for the marks LEGALZOOM and LEGALZOOM.COM. In addition, the Complainant asserts that it owns multiple foreign registrations directed to these marks.

The Complainant has further stated that it is the owner of a domain name that incorporates the Complainant’s Marks. Particularly, the Complainant owns the domain name <legalzoom.com>, which was registered on June 11, 1999 and that it has operated a website at this domain name since at least 2001.

The Complainant asserts that the Domain Names reproduce the entirety of the mark LEGALZOOM, which is alleged to be distinctive and well-known, as evidenced by the Complainant’s multiple registrations and the assertion that LEGALZOOM is an invented word without any independent meaning. The Complainant further asserts that the generic Top-Level Domains (gTLDs) “.attorney” and “.lawyer” only serve to add to the potential for confusion, since the Complainant’s business provides services in the legal industry, including attorney listings.

The Complainant further asserts that the Respondent has no rights or legitimate interests in the Domain Names. The Complainant has provided evidence that the Domain Names were registered several years after the earliest date of commercial use associated with the Complainant’s Marks as well as more than a decade after the Complainant’s registration of the domain name <legalzoom.com>. Moreover, the Complainant alleges that it has never licensed or otherwise permitted the Respondent to use the Complainant’s Marks or to register any domain name including the Complainant’s Marks. As a result, the Complainant asserts that no relationship exists between the parties. The Complainant further asserts that the Respondent has not sought or procured any registrations for any tradenames, corporations, or trademarks with any governmental or business authority for “LegalZoom”, “LegalZoom.Attorney”, or “LegalZoom.Lawyer” and that no evidence has been found to suggest that the Respondent is or ever has been commonly known or operated as “LegalZoom”. Furthermore, the Complainant states that the Respondent has not demonstrated any active interest in using the Domain Names because the Domain Names were registered over a year ago and are currently inaccessible, as evidenced by screenshots annexed to the Complaint. The Complainant asserts that this use constitutes an attempt to prevent the Complainant, a trademark owner, from reflecting the Complainant’s Marks in corresponding domain names and so cannot create a right or legitimate interest with respect to the Domain Names.

The Complainant further asserts that the Domain Names were registered and are being used in bad faith. The Complainant alleges that the Respondent was aware of the Complainant’s Marks at the time of registration. To support this assertion, the Complainant has cited the fame and good reputation associated with the Complainant’s Marks, the fact that the Complainant’s Marks are registered in multiple countries, and the fact that LEGALZOOM is an invented term that lacks any other independent meaning. Furthermore, the Complainant has asserted that the Respondent proceeded with registration of the Domain Names despite receiving a warning at the time of registration indicating that the Domain Names contained a trademark term registered with the Trademark Clearinghouse. In view of the above, the Complainant claims that the Respondent chose to register the Domain Names in bad faith and with full knowledge of the Complainant’s Marks.

The Complainant further asserts 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. Moreover, the Complainant alleges that the Respondent’s registration of the Domain Names constitutes a bad faith attempt to prevent the Complainant, a trademark owner, from reflecting its famous trademarks in corresponding domain names. The Complainant has also presented evidence that the Respondent is licensed to practice law in the State of Washington, is currently employed at the law firm doing business as the Arrow Law Group and has failed to respond to multiple cease-and-desist letters. Consequently, the Complainant asserts that the Respondent has registered the Domain Names intentionally for the purpose of disrupting the business of the Complainant and thus the Domain Names are being used in bad faith by the Respondent.

B. Respondent

No response was filed by the Respondent with respect to this proceeding.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default as the Panel considers appropriate. Nevertheless, the Panel may rule in the Complainant’s favor only after the Complainant has proven that the above elements are present.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in and to the Complainant’s Marks.

A review of each of the second-level domains of the Domain Names shows that each consists of the Complainant’s Marks (i.e., LEGALZOOM) in its entirety. The Domain Names differ from the Complainant’s Marks only by the addition of the gTLD “.attorney” or the gTLD “.lawyer”. The addition of either gTLD with such second-level domains that are identical to the Complainant’s Marks does not serve to distinguish either of the Domain Names from the Complainant’s Marks. On the contrary, both the gTLDs “.attorney” and “.lawyer” are descriptive of the Complainant’s services and the addition of these gTLDs to the second-level domains “legalzoom” only increases the likelihood of confusion between the Domain Names and the Complainant’s Marks. Based 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. The Panel therefore finds that the Domain Names are identical to the Complainant’s Marks in which the Complainant has rights and that paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the panel to be proven based on the evaluation of all of the evidence presented, can demonstrate the domain name holder’s rights to or legitimate interests in a domain name. These circumstances include:

(i) before any notice to the holder of the dispute, the holder’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 holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or

(iii) the domain name holder 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.

No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent was using or was making demonstrable preparations to use the Domain Names in connection with any type of bona fide offering of goods or services or that the Respondent has been commonly known, as an individual, business or otherwise, by the Domain Names. In addition, it is apparent that the Complainant has never allowed or permitted the Respondent to register or use any domain name incorporating the Complainant’s Marks in any fashion. Rather it is apparent that the Complainant had well-established rights in the Complainant’s Marks at the time of the Respondent’s registrations of the Domain Names and that the Respondent nevertheless registered the Domain Names. The Panel therefore finds that the Respondent does not have any rights or legitimate interests in the Domain Names and that paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the domain name holder includes, but is not limited to:

(i) circumstances indicating that the holder has registered or has acquired 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 or service mark or to a competitor of the complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the holder’s website or location.

No evidence has been presented that the Respondent is commonly known by either of the Domain Names or that the Complainant has at any time assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Complainant’s Marks. Further, no evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Names in connection with any type of bona fide offering of goods or services. Rather, the Panel finds that the Respondent clearly had knowledge of the Complainant’s Marks when registering the Domain Names. This finding is supported by the evidence showing that the Domain Names were registered by the Respondent well after the Complainant’s significantly earlier dates of first use and first use in commerce of the Complainant’s Marks. In addition, the Respondent’s registrations of these Domain Names, even after receiving a warning at the time of registration indicating that the Domain Names contained a trademark term registered with the Trademark Clearinghouse, only reconfirms the Respondent’s awareness of the Complainant’s Marks and the rights therein.

Furthermore, the Complainant has established that the Respondent registered the Domain Names intentionally for the purpose of disrupting the business of the Complainant. The Complainant has submitted evidence that the Respondent is licensed to practice law in the State of Washington, is currently employed at the law firm doing business as the Arrow Law Group, and has failed to respond to multiple cease-and-desist letters. Coupled with the Respondent having no rights or legitimate interests in the Domain Names as set forth above, the Panel finds that the Respondent has registered and is using the Domain Names in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Names <legalzoom.attorney> and <legalzoom.lawyer> be transferred to the Complainant.

Marylee Jenkins
Sole Panelist
Date: January 22, 2016

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