DECISION

Law America, Inc. v. Legal America, Inc.

Claim Number: FA0307000170631

PARTIES

Complainant is Law America, Inc., Encino, CA (“Complainant”) represented by Keith A. Kelly.  Respondent is Stanley Chess Legal America, Inc., New York, NY (“Respondent”) represented by Stanley Chess, of Legal America, Inc.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <lawamerica.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 22, 2003; the Forum received a hard copy of the Complaint on July 28, 2003.

On July 22, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <lawamerica.com> is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

Pursuant to instructions from the Forum, Complainant filed an Amended Complaint to conform to the rules on August 4, 2003. On August 5, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 25, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@lawamerica.com by e-mail.

A timely Response was received and determined to be complete on August 19, 2003.

In accordance with Supplemental Rule 7, Complainant timely filed an Additional Submission, which was considered by the Panel in arriving at a decision.

 

On August 27, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Louis E. Condon as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The domain name registered by Respondent is identical to the federally registered trademark of Complainant. Complainant has already registered the <lawamerica.net> domain name for its commercial use. Based upon information and belief, Complainant does not believe Respondent has ever established a website at the <lawamerica.com> domain name nor used it in any commercial manner.

           

            The trademark LAWAMERICA was registered by Complainant’s assignor and approved by the USPTO on August 24, 1999. Although

Complainant says it started using the name earlier, according to the documents filed in this proceeding, the mark was not assigned to the Complainant until August, 2003.

Complainant alleges that, in a telephone conversation with  Respondent’s principal, Stan Chess stated that Respondent had never used the <lawamerica.com> domain name; had no future plans to use it; and offered to sell it for the cost of registration. Complainant further alleges that when it asked what the price would be, Respondent said he would have to get back to Complainant but never did. Subsequently, counsel for Complainant wrote to Respondent, requesting that the domain name be transferred to Complainant. No response was ever received by Complainant or its counsel.  

           

B. Respondent

Mr. Chess has been a shareholder in Legal America, Inc. during the 1970’s as a Delaware corporation, and then again since 1997 as a New York corporation. In 1979, Mr. Chess made a federal trademark application for the term “Legal America”. The  <legalamerica.com> domain name was registered in 1997. Since the 1970’s, people have often mistakenly referred to Legal America, Inc. by similar names, including “Lawyer America” and LAW AMERICA. Therefore, Respondent registered the domain names  <lawamerica.com> on January 18, 1999, and <lawyeramerica.com> on February 19, 1999, to direct traffic to the <legalamerica.com> domain name. Respondent says no website has ever been built around either the <lawyeramerica.com> or the <lawamerica.com> domain names since both names were acquired to point to the website at the <legalamerica.com> domain name. The reason the <lawamerica.com> domain name is not currently in use is that the website at the <legalamerica.com> domain name has been taken down while the site is being redesigned.

Respondent further alleges that although Complainant claims the assignment of the trademark occurred in September, 2002, the document filed in support of the claim contains a signature and notarization on August 1, 2003.

Respondent did not deny that there was a phone conversation but denied the alleged statements attributed to it. Respondent also stated that it had no record of receiving the correspondence cited in the Complaint. It acknowledged receiving the Complaint and Amended Complaint which appear to have been sent to the same addressee.    

Respondent states that it and related corporations maintain dozens of websites and hundreds of domain names, most of which are law related. Respondent says these names and websites have been used for legitimate business and other interests but offered no proof.

 

C. Additional Submissions

In its Reply to Respondent’s Response, Complainant dismissed most of the Response as minor technicalities of no real consequence. In answer to Respondent’s allegation that Complainant lacked standing to complain that someone else held title to the mark at the time of its first attempt at filing the Complaint, Complainant contends that it had standing to bring this action because the assignment giving Complainant the right, title and interest to utilize the LAWAMERICA mark was signed prior to the date the First Amended Complaint was filed with the National Arbitration Forum

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

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

FINDINGS

(1) The domain name is identical to a trademark in which the Complainant has rights.

(2) The Respondent has no rights or legitimate interests in the domain name.

(3) The domain name is registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has provided evidence to establish its rights in the LAWAMERICA mark through registration of the mark with the United States Patent and Trademark Office.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Complainant asserts that Respondent’s <lawamerica.com> domain name is identical to Complainant’s LAWAMERICA mark because Respondent merely added “.com” to Complainant’s entire mark.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. orum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark); see also Kabushiki Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000) (finding that the domain name <toshiba.net> is identical to Complainant’s trademark TOSHIBA).

Rights or Legitimate Interests

As Complainant alleges, Respondent is not using the <lawamerica.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial fair use because Respondent is not using, nor has it ever used, the <lawamerica.com> domain name and does not have any future plans to use it.  See Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established).

Furthermore, Complainant argues that Respondent does not have rights or legitimate interests in the <lawamerica.com> domain name because Respondent offered the disputed domain name for sale to Complainant.  See Am. Nat’l Red Cross v. Domains,  FA 143684 (Nat. Arb. Forum March 4, 2003) (stating that “Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark”);  see also Mothers Against Drunk Driving v. Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).

Registration and Use in Bad Faith

Complainant urges that Respondent registered the <lawamerica.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent has not made any use of the <lawamerica.com> domain name, and has failed to produce any evidence of plans or preparations to use the disputed domain name in the future.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when Respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (holding that Respondent’s “vague and unsupported assertion of ‘plans to sell household goods, supplies and appliances over the Internet’” was insufficient to be considered proof of a legitimate business plan); see also Open Sys. Computing AS v. Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that Respondent did not establish rights and   legitimate interests in the domain name where Respondent mentioned that it had a business plan for the website at the time of registration but did not furnish any evidence in support of this claim).

Furthermore, Complainant asserts that Respondent registered and is using the <lawamerica.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i) because Respondent is willing to sell the disputed domain name to Complainant.  See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)  (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith).

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be granted.

Accordingly, it is Ordered that the <lawamerica.com> domain name be transferred from Respondent to Complainant.

Louis E. Condon, Panelist
Dated: September 13, 2003

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