The Complainant is Pro Se Planning, Inc. dba Divorcewriter of Medina, Washington, United States of America (“United States)”, represented by Shelley Janssen, United States.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Bogdanov Andriy of Dnepr, Ukraine.
The disputed domain name <divorcepaperswriter.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2018. On August 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 17, 2018, 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 August 29, 2018 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 amended Complaint on August 31, 2018.
The Center verified that the Complaint together with the amended 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 September 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2018.
The Center appointed Alistair Payne as the sole panelist in this matter on October 15, 2018. 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.
The Complainant has used the trade mark DIVORCEWRITER in the United States since 2005 in conjunction with the sale of divorce-related legal products and services. The Complainant owns United States trade mark registration no. 4209922 for DIVORCEWRITER that was registered on September 18, 2012. The Complainant operates its business through a website at <divorcewriter.com> which domain name was registered on 20 November 2005.
The disputed domain name was registered on January 17, 2018 and resolves to a webpage selling divorce‑related products and services.
The Complainant submits that it owns registered trade mark rights in its DIVORCEWRITER mark as set out above and that the disputed domain name only differs from its mark by the inclusion of the word “papers” between “divorce” and “writer”. The Complainant asserts that the disputed domain name is therefore confusingly similar to its mark as the addition of the word “papers” does not distinguish it and in fact increases the level of confusion.
The Complainant submits that the use of “writer” is distinctive to Complainant’s product and mark and that the Complainant offers pro se divorce-related products and services through an automated system using software. In the field of computer programming, “writing” code is a part of the process of creating computer software. Thus, it says that the term “writer” has acquired a secondary meaning, which when applied to the trade mark, DIVORCEWRITER, is highly distinctive of the Complainant. Additionally, as further evidence of the Complainant's branding of "writer", the Complainant says that it has continuously used the name “LegacyWriter” in the United States in conjunction with the sale of pro se estate planning products and services using the domain name <legacywriter.com> since May 2002.
The Complainant notes that the website to which the disputed domain name resolves sells very similar goods or services to the Complainant’s website and presents them in a state-specific based format and formerly offered them at an identical price, although it has subsequently lowered its price and also refers to its user interface as an “online interview”.
According to the Complainant, the Respondent is not affiliated with the Complainant and is not licensed to use the Complainant’s trade mark. Neither, says the Complainant, has the Respondent ever been commonly known by the disputed domain name.
As far as bad faith is concerned, the Complainant says that the Respondent knowingly registered the disputed domain name for the purpose of disrupting the business of the Complainant, a well-known competitor. In this regard it says that not only was the Complainant actively using the domain name, <divorcewriter.com>, for more than twelve years before the Respondent registered the disputed domain name, but the Complainant submits that traffic to the Complainant's domain name compared to traffic to the disputed domain name provides clear evidence that the Respondent is not commonly known by the disputed domain name.
The Complainant advised the Respondent that the disputed domain name is confusingly similar to the Complainant’s trademark by email dated July 3, 2018 but received no response. Shortly after that date the Complainant says that the disputed domain name began forwarding traffic to “www.divorcefiller.com”, a website that sells the same products and services as the Complainant and the Respondent. Additionally, the Complainant notes that as of August 14, 2018 the telephone number listed for the disputed domain name was a working phone number that answers as “divorcepaperswriter.com” at 1-800-212-4951.
In addition the Complainant submits that the requirements of paragraph 4(b)(iv) of the Policy have been fulfilled in that there is evidence that in this case the Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has demonstrated that it owns United States trade mark registration no. 4209922 for DIVORCEWRITER and that mark was registered on September 18, 2012. The disputed domain name differs from the Complainant’s trade mark only by the inclusion of the word “papers” between “divorce” and “writer”. Accordingly, the Complainant’s mark is wholly contained within the disputed domain name. Under section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus approach taken by panels is noted as follows: “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”. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s DIVORCEWRITER mark and that the Complaint therefore succeeds under this element of the Policy.
The Complainant has submitted that the Respondent is not affiliated with the Complainant and is not licensed to use the Complainant’s trade mark. It has also asserted that the Respondent has never been commonly known by the disputed domain name.
The disputed domain name resolves to a website selling almost exactly the same goods and services and there is evidence that certain elements on it including the price and terminology have been copied from or are very similar to the Complainant’s website. As further discussed below, this does not appear to the Panel to be consistent with the Respondent having bona fide legitimate interests.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent has not responded and has failed to rebut this case. Accordingly, the Panel finds for this reason and for the reasons described under section C below that the Complaint also succeeds under this element of the Policy.
The Complainant first used its DIVORCEWRITER trade mark in 2005 and its domain name <divorcewriter.com> to resolve to its main website in 2012. The Complainant’s United States trade mark registration for DIVORCEWRITER dates from 2012. In view of the similarities between the Respondent’s website and the Complainant’s website, it seems to the Panel more likely than not that the Respondent must have been aware of the Complainant’s DIVORCEWRITER mark when it registered the disputed domain name in 2018.
Up until around July 2018 and just after the Complainant’s notification of its rights to the Respondent, the disputed domain name resolved to a website that sold very similar goods or services to the Complainant’s website and presented them in a similar manner to the Complainant’s website, in particular, on a state‑specific based format and with an identical price and using at least one example of identical or similar terminology. Subsequently the Respondent lowered its price and at some time after July 2018 began forwarding traffic to “www.divorcefiller.com”, a website that sells the same products and services as the Complainant does through its website at “www.divorcewriter.com”.
Under paragraph 4(b)(iv) of the Policy, intentionally attempting to attract for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website amounts to evidence of registration and use in bad faith. The Respondent’s former website appears to have been in direct competition with the Complainant and overall appears to the Panel to be similar in many respects to the Complainant’s website. In addition, even after taking down this website the disputed domain name is still diverting Internet users to a website at which competing goods and services are sold. In these circumstances there is an overwhelming inference that the Respondent has sought to divert Internet users from the Complainant’s site and for its own commercial gain and the Panel finds that the Complainant has made out its case in terms of paragraph 4(b)(iv) of the Policy.
As a consequence, the Panel finds that the Complaint also succeeds under this element of the Policy.
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 <divorcepaperswriter.com> be transferred to the Complainant.
Alistair Payne
Sole Panelist
Date: October 29, 2018