Commercial Publishing Co., Inc. v. Webicons, Inc.
[Indexed as: Commercial Publishing Co. v. Webicons]
[Indexed as: thelawyerslist.com]
National Arbitration Forum
Forum File No. FA0005000094825
Commenced: 22 May 2000
Judgement: 21 June 2000
Arbitrator: Daniel B. Banks, Jr.
Domain name Domain name dispute resolution policy Trademark Identical Legitimate rights Bad faith.
Complainant is the registered owner of the trademark, The Lawyers List, and has used it since 1904. Respondent registered the domain name, thelawyerslist.com but it is not identifiable to any product or service of the Respondent. Complainant alleged that the domain name is identical or confusingly similar to its mark, that Respondent has no legitimate interests in the name, and that Respondent registered and used the name in bad faith.
Held, Name Transferred to Complainant.
Respondents domain name is identical or confusingly similar to Complainants
trademark. Respondent also does not have legitimate rights or interests
in the domain name.
Respondent registered and used the name in bad faith. Respondent
registered the name for the primary purpose of selling the name either
to Complainant or to a competitor for valuable consideration in excess
of out-of-pocket expenses related to the domain name.
Policies referred to
Uniform Domain Name Dispute Resolution Policy
Banks, Arbitrator: -
The above matter came on for an administrative hearing on June 19,
2000 before
the undersigned on the Complaint of Commercial Publishing Co., Inc.,
hereafter
"Complainant", against Webicons, Inc., hereafter "Respondent". Neither
party was
represented by an attorney.
Upon the written submitted record, the following DECISION is made:
PROCEDURAL FINDINGS
Domain Name: THELAWYERSLIST.COM
Domain Name Registrar: Network Solutions
Domain Name Registrant: Webicons, Inc.
Date of Registration: April 14, 1999.
Date Complaint Filed: May 15, 2000.
Date of Commencement of Administrative Proceeding: May 22, 2000.
Date of Response: Respondent sent an e-mail response that did not address
the
issues involved in this case.
Remedy requested by Complainant: Transfer of Domain Name to Complainant.
After
reviewing the Complaint and determining it to be in administrative
compliance, the National Arbitration Forum (The Forum) forwarded the
Complaint
to the Respondent in compliance with Rule 2(a), and the administrative
proceeding
was commenced pursuant to Rule 4(c). In compliance with Rule
4(d), The Forum
immediately notified Network Solutions, the Internet Corporation for
Assigned
Names and Numbers (ICANN), and the Complainant that the administrative
proceeding had commenced. Respondent sent an e-mail response
that did not
address the issues involved in this case.
The
Respondent registered the domain name with Network Solutions, the
entity that is the Registrar of the domain name. By registering
its domain name with
Network Solutions, the Respondent agreed to resolve any dispute regarding
its
domain name through ICANN'S Uniform Domain Name Dispute Resolution
Policy.
FINDINGS OF FACT
1. The Complainant Commercial Publishing
Co., Inc. is the registered owner of
the trademark "The Lawyers List" and has owned and used that mark since
1904.
2. The Respondent registered the domain
name THELAWYERSLIST.COM on
April 14, 1999.
3. On November 30, 1999, the Respondent
listed the domain name
THELAWYERSLIST.COM on a web page shown as
http:\\20917618739/legal.htm, under the topic "Legal Domain Names"
with the
instruction to click on any domain name and when the name you are interested
in
appears, make us an offer.
4. The domain name is not identifiable
to any product, service or web-site
managed or operated by the Respondent.
5. The Respondent's domain name THELAWYERLIST.
COM is identical or
confusingly similar to the Complainants established trademark.
6. The Respondent has no legitimate interests in respect of the domain name.
7. The Respondent's e-mail response to
the Complaint did not address any of
the issues raised in this case. The failure to file any meaningful
response to the
complaint coupled with the fact that it listed the domain name for
sale permits an
inference that registration of the domain name was done primarily for
the purpose
of selling or otherwise transferring the domain name registration to
the Complainant,
who is the owner of the trademark for a valuable consideration in excess
of any
documented out-of-pocket costs directly related to the domain name.
This
constitutes registration and use of a domain name in bad faith.
8. The Complainant's prayer for relief
requests that the domain name
THELAWYERSLIST.COM be transferred from Respondent to Complainant.
CONCLUSIONS
The
undersigned certifies that he has acted independently and has no
known conflict of interest to serve as the Arbitrator in this proceeding.
Having
been duly selected and being impartial, the undersigned makes the following
findings and conclusions:
1. The domain name THELAWYERSLIST.COM
registered by Respondent on
April 14, 1999, with Network Solutions, is identical to Complainant's
name and is
confusingly similar to a trademark in which the Complainant has rights,
and to
which the Respondent has no right or legitimate interests.
2. The domain name THELAWYERSLIST.COM
was registered and is being
used in bad faith in that the Respondent registered the name primarily
for the
purpose of selling or otherwise transferring the domain name registration
to the
Complainant who is the owner of the trademark or to a competitor for
valuable
consideration in excess of documented out-of-pocket costs directly
related to the
domain name.