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Generic Top Level Domain Name (gTLD) Decisions |
The State Bar of California v. Cayman
Trademark Trust
Claim Number: FA0411000371470
Complainant is The State Bar of California (“Complainant”),
represented by Mark Torres-Gil, 180
Howard Street, San Francisco, CA 94105-1639.
Respondent is Cayman Trademark
Trust (“Respondent”), P.O. Box 908, George Town, Grand Caym GT, KY.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <californiastatebar.com>,
registered with Bulkregister, Llc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
23, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on November 29, 2004.
On
November 24, 2004, Bulkregister, Llc. confirmed by e-mail to the National
Arbitration Forum that the domain name <californiastatebar.com>
is registered with Bulkregister, Llc. and that Respondent is the current
registrant of the name. Bulkregister, Llc. has verified
that Respondent is
bound by the Bulkregister, Llc. 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").
On
December 2, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
December 22, 2004 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@californiastatebar.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
January 3, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed Judge Harold
Kalina (Ret.) as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum
has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules")
"to employ reasonably
available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules,
the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without
the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <californiastatebar.com> domain name is confusingly similar
to Complainant’s THE STATE BAR OF CALIFORNIA mark.
2. Respondent does not have any rights or
legitimate interests in the <californiastatebar.com>
domain name.
3. Respondent registered and used the <californiastatebar.com> domain
name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
public corporation established by the California Legislature on June 29,
1927. Complainant is qualified by
California’s highest court to adopt rules and regulations for admission to the
bar and formulate and enforce
rules of professional conduct for all its members. Complainant’s responsibilities include the
admission of new attorneys to the practice of law, administering the statewide
bar examination,
implementing a system of attorney discipline, among other
things.
Since
Complainant’s inception, it has used the THE STATE BAR OF CALIFORNIA mark in
connection with a variety of goods and services.
Complainant applied to
register the THE STATE BAR OF CALIFORNIA mark with the United States Patent and
Trademark Office (“PTO”) as
early as November 15, 2000. See
PTO Reg. Nos. 2573230, 2593974, 2676361, and 2676363. On May 28, 2002, the PTO issued registration number 2573230 to
Complainant for “books, pamphlets, reports . . . and magazines in the
fields of
law, the legal profession and the regulation thereof . . .” On July 16, 2002, the PTO issued
registration number 2593974 to Complainant for “pre-recorded audio and video
cassettes featuring
information in the fields of law, the legal profession,
lawyers’ professional responsibility, legal education, and law practice
management” On January 21, 2003, the
PTO issued registration numbers 2676361 and 2676363 to Complainant for a
variety of “association services”
and “arranging and conducting education
seminars,” among other things.
Respondent
registered the disputed domain name <californiastatebar.com>
on November 14, 2001. The domain
name resolves to a website that contains a variety of links relating to the
legal profession such as <cruiselawyers.com>,
<legalmatch.com>,
<americasleadinglawyers.com>, <bondsexpress.com>,
<aa-accidentattorneys.com>, among many
others directory websites.
Paragraph 15(a)
of 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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
Paragraph 4(a)
of the Policy requires that 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 Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has
rights; and
(2) 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.
The registration
of a mark with a legitimate governmental authority is sufficient to create a
presumption of rights in the mark under
the Policy. See Janus Int’l Holding Co.
v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the
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); see also Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
Panels have consistently held
that a complainant’s trademark rights must predate the disputed domain name
registration pursuant to
paragraph 4(a)(i) of the Policy. See Abt Elecs., Inc. v.
Motherboards.com, FA 221239 (Nat. Arb. Forum Feb. 20, 2004) (Complainant
failed to establish Policy ¶ 4(a)(i) because Respondent's rights in the
<abt.com>
domain name predated Complainant's registration
application for the ABT mark and Complainant failed to provide
sufficient evidence
of its common law rights in the mark.); see also Phoenix Mort. Corp. v.
Toggas, D2001-0101 (WIPO
Mar. 30, 2001) (finding that Policy ¶ 4(a)(i) “necessarily implies that
Complainant’s rights predate Respondent’s
registration. . .of the domain
name”).
In the instant
case, Respondent registered the domain name <californiastatebar.com> on November 14, 2001. It was not until after such registration
that Complainant was issued its first PTO registration for the THE STATE BAR OF
CALIFORNIA
mark, which was granted on May 28, 2002. Yet, Complainant filed the registration application on November
15, 2000, almost exactly one year prior to Respondent registering
the disputed
domain name. Nevertheless, panels and
courts alike have held that a trademark registrant’s rights date back to the
original filing date, provided
the application is granted. See
FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum
Mar. 26, 2003) (finding that Complainant’s rights in the successfully
registered FDNY mark date back
to the original registration application that
was filed with the U.S. Patent and Trademark Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144
U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima
facie proof of continual use of the mark, dating back to the filing
date of the
application for registration).
Therefore, since
Complainant filed its successful registration for the THE STATE BAR OF
CALIFORNIA mark prior to Respondent registering
the domain name <californiastatebar.com>,
Complainant has established a presumption of rights in the mark pursuant to
paragraph 4(a)(i) of the Policy. The
latter presumption has not been challenged in this proceeding. Therefore Complainant has established rights
in the mark under the Policy by virtue of its registration and the Panel need
not determine
potential common law rights Complainant has created in the mark.
The domain name <californiastatebar.com> incorporates
the three substantive words present in Complainant’s mark in their entirety,
specifically “california,” “state,” and
“bar.”
The domain name does not contain the remaining terms of Complainant’s
mark, mainly “the” and “of.” Yet, prior
panels have held that the omission of terms such as “the” or “of” fails to sufficiently
distinguish domain names from marks. See Saul Zaentz
Co. v. Dodds, FA 233054 (Nat. Arb. Forum
Mar. 16, 2004) (finding that the domain name merely omitted the words
“the” and “of” from Complainant’s mark and thus, failed to “sufficiently distinguish
the domain
name from the mark pursuant to Policy ¶ 4(a)(i)”); see also Mega
Soc. v. LoSasso, FA 215404 (Nat. Arb.
Forum Jan. 30, 2004) (finding that the disputed domain names
<megasociety.net> and <megasociety.com>
were identical
or confusingly similar to Complainant's THE MEGA SOCIETY common law mark);
see also Antoun v. Truth Squad,
FA 114766 (Nat. Arb. Forum Aug. 21, 2002) (stating that the
article "the" is "often added only for grammatical
purposes,
and may be superfluous to the name itself").
Furthermore, the
domain name <californiastatebar.com>
has simply inverted the terms of Complainant’s THE STATE BAR OF CALIFORNIA
mark by placing the word “california” before the terms
“state” and “bar.” Panels have held that “merely inverting the
terms of a mark . . .is quite insufficient to dispel consumer confusion; the
mark and
the resulting domain name are simply too similar to each other.” NCRAS
Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001); see also Playboy Enters. v. Movie Name Co.,
D2001-1201 (WIPO Feb. 26, 2002) (finding the domain name
<channelplayboy.com> confusingly similar to the mark THE PLAYBOY
CHANNEL); see also Toronto Convention
& Visitors Ass’n v. This Domain is For Sale, D2001-1463 (WIPO Feb. 25,
2002) (finding that there would be no reason to distinguish between
<tourism-toronto.com> and TORONTO
TOURISM).
Of
particular importance is the previous case involving State Bar of California v. eWebNation.com, Inc., FA 97137 (Nat.
Arb. Forum June 14, 2001). In that
case, the panel found the domain name <castatebar.com> to be confusingly
similar to the THE STATE BAR OF CALIFORNIA
mark. The panel based its decision in part on the fact that “ca” is
“the official abbreviation” of the word “California,” and thus, “immediately
gives rise to a possible connection with the Complainant.” In the instant case, the domain name
comprises more than a mere abbreviation of the word “California,” it
incorporates the word itself.
Therefore, the disputed domain name is found to be confusingly similar
to Complainant’s mark pursuant to paragraph 4(a)(i) of the
Policy.
Complainant
has established Policy ¶ 4(a)(i).
Respondent has
failed to respond to the Complaint.
Therefore, the Panel construes Respondent’s inaction as an implicit
admission that it lacks rights and legitimate interests in the
disputed domain
name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221
(WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be
construed as an admission that they have no
legitimate interest in the domain
names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit
admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”).
Moreover,
Respondent’s inaction allows the Panel to accept all reasonable assertions set
forth in the Complaint as true. See Allergan
Inc. v. MedBotox Inc.,
FA 170639 (Nat. Arb. Forum Sept. 9, 2003) (“Respondent has not challenged the allegations in the Complaint.
Under these circumstances it is appropriate for the Panel to accept
all
reasonable allegations and inferences in the Complaint as true.”);
see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond
allows a presumption that Complainant's allegations are true unless
clearly
contradicted by the evidence).
There is nothing in the
record to suggest that Respondent is commonly known by the domain name <californiastatebar.com>,
including the WHOIS registration information.
See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (finding that the WHOIS information, and its failure to imply that
Respondent is commonly
known by the disputed domain name, is a factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16,
2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has
been commonly known
by the domain name prior to registration of the domain name
to prevail").
Respondent is
using the domain name <californiastatebar.com>, which is confusingly similar to Complainant’s THE STATE BAR OF CALIFORNIA mark, to host
web content directly related to the goods and services offered by Complainant
under its
mark. These facts suggest
that Respondent was attempting to use the goodwill Complainant had created in
the THE STATE BAR OF CALIFORNIA
mark as a means of redirecting Internet users
to its own website. Such parasitic
behavior is neither a bona fide offering of goods or services, nor a legitimate
noncommercial or fair use pursuant
to paragraphs 4(c)(i) and (iii) of the
Policy. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum
Mar. 17, 2003) (finding that Respondent’s diversionary use of Complainant’s
mark to attract Internet
users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of goods
or
services nor a legitimate noncommercial or fair use of the disputed domain
names); see also Bank
of Am. Corp. v. Northwest Free Community Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy 4(c)(i)
and it is not a legitimate noncommercial or fair use
under Policy 4(c)(iii).”);
see also Am.
Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com>
domain name with the intent to divert Internet users to Respondent's
website
suggests that Respondent has no rights to or legitimate interests in the
disputed domain name pursuant to Policy Paragraph
4(a)(ii).”).
Therefore,
Complainant has established Policy ¶ 4(a)(ii).
In the instant
case, Respondent chose to register a domain name that is confusingly similar to
Complainant’s mark. There is a close
connection between the disputed domain name and Complainant’s goods and
services, which are provided pursuant to
the mandate of the California
legislature. In cases such as this,
where the mark is so obviously connected with a source of goods or services, it
is relatively easy for the
Panel to conclude that Respondent registered and
used the domain name in bad faith.
Respondent has opportunistically attempted to free ride on the goodwill
developed by Complainant in its mark, and has attempted to
reap the benefits
from Complainant’s expenses and efforts.
Such registration and use has been found to evidence “opportunistic bad
faith.” See Harrods Ltd. v. Harrod’s Closet, D2001-1027 (WIPO Sept. 28,
2001) (finding that where a mark is so obviously connected with well-known
products, its very use by
someone with no connection to these products can
evidence opportunistic bad faith); see
also Northwest Airlines, Inc. v. Koch, FA 95688 (Nat. Arb. Forum Oct. 27,
2000) (“[T]he selection of a domain name [northwest-airlines.com] which
entirely incorporates
the name of the world’s fourth largest airline could not
have been done in good faith.”); see also
Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L.,
D2000-0643 (WIPO Aug. 29, 2000) (“The domain name ‘singaporeairlines.com’ is so
obviously connected with a well-known airline that
its very registration and
use by someone with no connection to the airline suggests opportunistic bad
faith. Indeed, it is hard to imagine a
more blatant exercise in ‘cybersquatting.’”); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000)
(finding that the ICQ mark is so obviously connected with Complainant and its
products that the
use of the domain names by Respondent, who has no connection
with Complainant, suggests opportunistic bad faith); see also London Metal Exch. Ltd. v. Hussain, D2000-1388 (WIPO Dec.
15, 2000) (finding that the “letters ‘lme’ are so obviously connected with a
well-known entity that their
very use by someone with no connection to
Complainant suggests opportunistic bad faith”).
Moreover,
Respondent has not provided the Panel with a good faith basis to overcome the
latter conclusion. Therefore,
Respondent is deemed to have registered and used the disputed domain name in
bad faith pursuant to paragraph 4(a)(iii)
of the Policy. See
CBS Broad., Inc. v. LA-Twilight-Zone,
D2000-0397 (WIPO June 19, 2000) (finding bad faith where Respondent failed to
provide evidence to controvert Complainant's allegation
that Respondent
registered the name in bad faith and any future use of the name would only
cause confusion with Complainant’s mark);
see
also Kraft Foods v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (“the fact that
Respondent [chose] to register a well known mark to which he has no connections
or rights indicates that he was in bad faith when registering the domain name
at issue.”); see also Albrecht v. Natale,
FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding bad faith registration and
use where Respondent registered a domain name incorporating
Complainant’s mark
and Respondent failed to show circumstances in which such a registration could
be done in good faith).
Complainant has established
Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <californiastatebar.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
January 14, 2005
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