|Kläger||Legal Rights Defenders, Inc.|
|Beklagter||Oneandone Private Registration / Helen Smith|
The Complainant is Legal Rights Defenders, Inc. of San Pedro, California, United States of America, represented by Willenken Wilson Loh & Lieb, LLP, United States of America.
The Respondents are Oneandone Private Registration of Chesterbrook, Pennsylvania, United States of America and Helen Smith of Los Angeles, California, United States of America.
The disputed domain name <1800thelaw2.biz> is registered with 1&1 Internet AG (the “Registrar”).
The Complainant filed the Complaint with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2010, naming Oneandone Private Registration as the Respondent. On August 9, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 12, 2010, the Registrar transmitted by email to the Center its verification response disclosing that it was the registrar of the domain name and stating the following:
As our customer had chosen to make use of the Private Domain Registration feature, 1&1 Internet, Inc. appeared in the public WHOIS database as the holder of the domain name(s). In accordance to our Terms & Conditions, section 3.4., http://order.1and1.com/xml/order/TcPdr, we have now updated the domain name(s) to our customer’s data to reflect the current owner.
The Panel notes that the original WhoIs information identified the registrant’s name as “Oneandone Private Registration” and the registrant’s organization as “1&1 Internet, Inc.”. The current WhoIs information identifies the registrant as Helen Smith, and it indicates that Registrar updated the information on August 12, 2010.
Without taking a position upon the propriety of the Respondent identification in the original Complaint or upon the propriety of the change of Registrant information in WhoIs data, the Center sent an email communication to the Complainant on August 12, 2010 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 August 12, 2010, which added as a second Respondent the person whom the Registrar had identified as the customer of the private registration service. (The Panel construes all the references to “Respondent” as applying to both Respondents.)
On August 17, 2010, the Center invited the Complainant to substitute an annex filed in CD-ROM format by email, in accordance with the filing size modalities as stipulated in 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”).
The Center verified that the Complaint together with the amendment to the Complaint and with a substitute annex satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules, and the Supplemental Rules.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced, on August 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2010. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on September 10, 2010.
The Center appointed Andrew P. Bridges as the sole panelist in this matter on September 15, 2010. 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.
It is undisputed that the Complainant owns a United States federal registration of the trademark 1-800-THE-LAW2 on January 15, 2008, claiming a relevant date of first use in 1985, and had secured an earlier registration of 1-800-THE-LAW 2 in 1995 that expired.
According to WhoIs information in the Complaint, registration of the disputed domain name in the name of Oneandone Private Registration, 1&1 Internet, Inc. occurred on May 25, 2009. Further relevant registration history of the domain name appears above: registration of the challenged domain in the name of Helen Smith occurred on August 12, 2010.
The Complainant alleges that it has trademark rights in, and a United States federal trademark registration for, 1-800-THE-LAW2 with respect to joint attorney advertising services. It claims use of the mark or a closely related mark (1-800-THE-LAW 2) beginning in 1985. It furnished examples of attorney advertising using the mark, and it provided a declaration showing that it had spent nearly USD 36 million in advertising and promotion relating to the mark in television, radio, newspaper, and other promotions. It first gained United States federal registration of the earlier version of the mark in 1995. That registration expired when the Complainant failed to renew it. In 2008 the Complainant secured a new United States federal registration of the new version of the trademark, claiming the original first use date of 1985.
The Complainant alleges that the disputed domain name, <1800thelaw2.biz>, is confusingly similar to its 1-800-THE-LAW2 trademark. The Complainant also shows that a current use of the disputed domain name causes a web browser to direct the Internet user to the web site of a law firm, Shandler & Associates, which prominently exhorts potential clients to call it at 1-800-666-6666. The Complainant alleges that it had never authorized or permitted the Respondents to use the mark in question and that it has found no evidence relating to bona fide use of the domain name by the Respondents. The Complainant further alleges that the Respondents have registered and used the domain name in bad faith in that the domain name is redirecting traffic to a law firm to disrupt the business of competitors and that the law firm is in Southern California, where the Complainant’s advertising has been heavy. The Complainant alleges that the Respondents’ practices create a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Shandler & Associates’ services.
The Complainant requests transfer of the domain name.
The Registrar, which is associated with the Respondent Oneandone Private Registration, 1&1 Internet, Inc., responded to the Center’s request for Registrar Verification only by indicating that it had changed the registrant identity in WhoIs records to reflect the name of its customer as Registrant According to the Registrar, the Respondent Oneandone Private Registration appeared in the public WhoIs database as the holder of the disputed domain name because its customer had chosen to make use of the Private Domain Registration feature.
The Respondent Oneandone Private Registration did not oppose the Complaint.
The Respondent Helen Smith did not respond to the Complaint in any fashion.
In order for the Panel to order the transfer of the disputed domain name to the Complainant under the Policy it is necessary that the Complainant must prove, as required by paragraph 4(a) of the Policy, that
(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 has been registered and is being used in bad faith.
The Respondents have not responded to the allegations contained in the Complaint. The Panel will proceed to examine whether the Complainant has satisfied its burden on proof on the three elements of the Policy.
The Panel finds that <1800thelaw2.biz> is confusingly similar to the Complainant’s 1-800-THE-LAW2 registered mark.
The Panel finds, based upon the allegations of the Complaint and the lack of a response from Respondents, that the Complainant has satisfied the first element of the Policy.
The Panel finds that the Complainant has made a prima facie case that the Respondents have no rights or legitimate interests in the disputed domain name, the principal use of which appeared in the Complaint to be to redirect Internet users to a web site that makes no use of any similar phrasing and serves a law firm whose name bears no apparent relation to the domain name.
The Respondent has not rebutted the Complainant’s prima facie case in this regard and therefore the Panel finds that the Complainant has satisfied the second element of the Policy.
Given the totality of allegations in the Complaint, and the failure of the Respondents to offer any rebuttal, the Panel finds that the Respondents have registered and used the domain name in bad faith as the Complainant alleged. The Panel finds therefore that the Complainant has satisfied the third element of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <1800thelaw2.biz>, be transferred to the Complainant.
Andrew P. Bridges
Dated: October 16, 2010