Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Commercial Publishing Co., Inc., Easton, MD, USA ("Complainant"). The Respondent is Earth Comm, Inc., Hewlett, NY, USA ("Respondent").

The domain name at issue is "LAWYERSLIST.COM", registered with Network Solutions, Inc. ("NSI").

James Alan Crary as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/14/2000; The Forum received a hard copy of the Complaint on 06/14/2000.

On 06/19/2000, NSI confirmed by e-mail to The Forum that the domain name "LAWYERSLIST.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 06/22/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/12/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.

The Forum received the Respondent’s response on 07/12/2000.

On July 26, Complainant filed a "Response to Complaint". Objections to this submission were made by Respondent the same day. These further submissions did not comply with Supplemental Rule 7, and were not considered. The Rules for Uniform Domain Name Dispute Resolution Policy (Rules) leaves to the administrative panel sole discretion to request additional statements or documents from either party.

On July 13, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed James Alan Crary as Panelist.

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

A. Complainant

The Complainant owns the trademark THE LAWYERS LIST (registration No. 759,253). The Lawyers List, a directory which lists attorneys who practice general corporate, trial and intellectual property law, has been continuously published in 1904.

The Complainant is interested in obtaining the domain name lawyerslist.com.

lawyerslist.com is confusing since with the exception of the The, they are precisely the same.

Respondent should be considered to have no rights because the Complainant has all the rights granted by the trademark registration. Federal Law is intended to give exclusive trademark use to the trademark holder.

Bad faith was alleged. The Respondent was not identified with any product, service or web site "managed or operated through the registrar" (Respondent-registrant?).

Complainant then asserts "the registrar" contacted the Complainant requesting a large sum of money to be paid to "registrar".

The Complainant maintained that Respondent had been advised of the existence of a dispute by "at least two letters from our attorneys".

The Complainant alleges that there was no response to the letters and that since the date of the complaint, respondent did not offer to cease and desist and to unregister the name.

Complainant asserted that the first contact "had with the registrar" (respondent-registrant?) was a "solicitation to the complainant that the registered name could be obtained for a large sum of money - $25,000."

The Complainant asserted that the use of the domain name amounted to trademark dilution and misappropriation under Federal Law.

By listing lawyerslist.com on a "legal domain names website: Respondent had misappropriated a trademark. The domain name consisted entirely of the trademark holder’s legal name and was therefore a "strict copy".

According to the complaint Respondent had "made prior bona fide use of the domain name and did not use it in connection with products, for if it had done so, such use would have been in direct contravention of the trademark law."

The use by the Respondent was not fair, and not non-commercial; its only use was to put on the auction block for "ale" (sale?) to the highest bidder. Complainant’s goodwill has been damaged.

B. Respondent

When respondent registered the domain name lawyerslist.com in March 1999 it was for the purpose of creating a web site that provided a lawyers directory and other services to the legal industry. It subsequently acquired attorney.com which had become a large .COM in the legal Internet industry. Respondent denied knowing of the existence. The Commercial Publishing Company or of The Lawyers’ List publication.

On November 30,1 999 respondent was contacted by e-mail by Heather Rapp. She indicated that she had a client who was interested in purchasing the domain name.

Respondent decided it was willing to sell the domain name since it had acquired attorney.com and other domain names for use in it’s legal related business.

Greatdomains.com an after-market domain name broker valued the name at $25,000. It was thereafter listed for sale. On December 8, 1999 Heather Rapp was contacted and advised of the $25,000 figure. Rapp did not respond but there were several other offers made by interested parties.

On February 20, 2000 the respondent received a letter from a Curtis Coon who was said to represent commercial bar. In response, a Hal Winter the CEO of attorney.com responded with a voice mail message to Coons.

The respondent maintained that complainant was attempting to set it up for an anti-cyber squatting action.

Subsequently there were discussions between Mr. Winter and Donald Schwartz. The respondent suggested that the two could help each other by advertising on each other’s site. Winter offered to give up the domain to the complainant in return for a small link. Complainant’s upcoming web site. Schwartz responded by hanging up.

It was then indicated that respondent next spoke to a Kaye Stein. Stein was told respondent was not a cyber squatter and respondent pursued legitimate businesses in the legal industry. Although respondent was told that complainant’s attorney Coon would be in contact with respondent, no call was received. This was alleged to be bad faith on the complainant’s part.

Respondent did not contact complainant in the attempt to sell the domain. First contact was from complainant’s web designer, Heather Rapp. Who stated she had a client who was interested in purchasing the domain. The statement that there were two attorney letters was also false. Respondent received only one letter "on February 10, 2000". Thereafter two attempts to call Coon were unsuccessful.

Respondent maintained it had rights and legitimate interests in the domain. It registered the domain name for a legitimate purpose which was to provide a lawyers list and legal services to the legal industry. Respondent was already in the business of providing legal services when it registered the domain name. It should be entitled to retain the domain name for legitimate use or for legitimate sale to a third party.

Bad faith was denied. The respondent was unaware of complainant’s existence until February 10, 2000. Respondent decided to sell the name only after being contacted by Heather Rapp a web designer working for Complainant.

Respondent further maintained he was not using the domain name to prevent the complainant from using it’s drawing mark in a corresponding domain name or for the purpose of disrupting Complainant’s business. It was not using the domain name with the intent for commercial gain to misleadingly divert customers from the complainant. Respondent had no intent to use the domain name as a directory service since it had already developed attorneydirectory.com and lawyerdirectory.com for directory listings. The domain name would be used by respondent "if the domain is not sold" as a list of resources for attorneys on the Internet similar to craigslist.com. Respondent requested that it retain the domain name.

1. The Lawyers List trademark, (Registration #759253 renewed 10/29/83) is owned by the Law List Publishing Company, Inc.

2. Respondent was engaged in providing goods and services in the legal industry at the time it registered the disputed domain name lawyerslist.com on March 6, 1999.

3. Respondent was ignorant of the existence of The Lawyers List publication at the time of the domain name registration.

4. A web designer associated with the Complainant, Heather Rapp, contacted Respondent seeking to acquire the disputed domain name in November 1999.

The Uniform Domain Name Dispute Policy ("Policy") is minimalist in its resort to mandatory resolution. The policy calls for administrative resolution for only a small special class of disputes. Except in cases involving "abusive registrations" made with bad faith intent to profit commercially from others trademarks e.g., cyber squatting and cyber piracy the adopted policy leaves the resolution of disputes to the courts and calls for a registrar’s not to disturb a registration until those courts decide. The adopted policy establishes a streamlined, inexpensive administrative-dispute resolution procedure intended only for the relatively narrow class of cases of "abusive registrations". Thus, the fact that the policy’s administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute is a feature of the policy, not a flaw. The policy relegates all "legitimate disputes" to the courts. Only cases of abusive registrations are intended to be subject to the streamline administrative dispute-resolution procedure. (See Second Staff Report on Implementation of Documents for the Uniform Dispute Policy October 24, 1999, page 9).

It is incumbent upon the complainant to establish, that is to prove by the greater weight of the evidence that each element under 4(a) of the Policy.

Complainant’s exhibits contain a certificate of renewal issued by the United States Patent and Trademark Office. This certificate is issued to the Law List Publishing Company, Inc. of Danbury, Connecticut. This panelist could not deduct the connection between Commercial Publishing Company, Inc., the complainant herein and the Law List Publishing Company, Inc. of Danbury, Connecticut.

The complaint itself was poorly drawn. Did the complainant actually intend to say the registrar which in this case is Network Solutions contacted the complainant requesting a large sum of money to be paid to Network Solutions?

The Complainant claimed that respondent was advised of the dispute prior to the filing of the complaint by "at least two letters" from complainant’s attorneys. This allegation was not supported even by copies of the letters. Respondent admits to only one letter, that dated February 10 from an attorney by the name of Coon. The panel can only guess of the content of the letter or letters since neither offered copies of the letters in support of their position.

There was further confusion between registrant, in this case Earth Comm, Inc. and the registrar Network Solutions. According to the complaint the complaint the first contact had with the registrar was registrar’s solicitation to the complainant that the registered name could be obtained for a large sum of money ($25,000). Even assuming that complainant is referring to the respondent as registrar and not registrant, the allegation is unsupported in complainant’s own evidence. Complainant exhibits contain a December 9, 1999 communication from Heather Rapp to Kaye Stein, complainant’s authorized representative. Rapp states she contacted the current owner of lawyerslist.com "a few weeks ago". According to Rapp, Respondent was looking for $25,000 but was open to consider reasonable counteroffers. Clearly the memo stands for the proposition that Rapp had a made a contact initially with the respondent and not the other way around.

The complaint goes on to make loose references to Federal trademark statutes and to the case of Avery Dennison Corp. v. Jerry Sumpton, et. al. [1999] USCA9 436; 189 F. 3d 868 9th CIC. (1999). But the complaint does not set forth any analysis of facts in the complaint to show or describe how the AVERY case might apply to the facts herein.

The complaint near the end states "respondent made prior bona fide use of the domain name and did not use it in connection with products". Respondent’s only use was to be put on the auction block for ALE to the highest bidder. The panel herein assumed that complainant had intended to say "sale" instead of "ale".

The respondents assertion that it was unaware of the Commercial Publishing Company or of any publication called "The Lawyers List" is unrebutted. Respondent’s assertion that it made efforts to enter into discussions to discuss potential partnerships or counteroffers is also unrebutted.

The respondent went on in considerable detail to outline the efforts it made to enter into appropriate and civil discussion with the complainant concerning the dispute.

The respondent had rights and legitimate interests in the domain name LAWYERSLIST.COM. Eventually the domain name was superseded by ATTORNEY.COM, which Respondent then adopted in connection with a bona fide offering of goods or services in the legal industry. Policy 4c(i).

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the complainant must prove each of the following three elements in order to demonstrate claims 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; and

(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.

Based on the evidence it was concluded that the domain name LAWYERSLIST.COM is confusingly similar to the trademark or service mark The Lawyers List but there is a failure of proof on the issue of whether the complainant has rights. Nowhere in the complaint of supporting evidence was it established how Commercial Publishing Company, Inc. acquired rights which are owned by the Law List Publishing, Inc.

The evidence is supportive of finding that respondent had made use of the domain name in connection with a bona fide offering of goods or services before notice of the dispute. Respondent has thus demonstrated legitimate interest in respect to the domain name.

The evidence did not support a finding that the respondent registered the domain name primarily for the purpose of selling it to the complainant or to a competitor for valuable consideration in excess of the out of pocket costs associated with registration. At the time it was registered respondent made bona fide use of the domain name to market products and services in the legal field.

The complaint does not allege a pattern of registering domain names in order to prevent owners of trademarks or service marks from reflecting their marks in corresponding domain names.

The evidence did not support a finding for 4b(iii). The respondent did not register the domain name primarily for the purpose of disrupting the business of a competitor. It was engaged in providing goods and services in the legal field prior to registering the disputed domain name. It was unaware of the rights of the trademark owner.

Finally under 4b(iv) of the Policy it was felt not to be applicable in this case. Again, respondent was ignorant concerning the existence of The Lawyers List publication, additionally it was pointed out above the nexus between the trademark owner, Law List Publishing Company, Inc. and Commercial Publishing Company, Inc. is not established in the evidence.

Based on the findings and conclusions set forth above, it was concluded that the complainant was not entitled to relief under 4(i) of the Policy. It was therefore ordered that respondent retain the disputed domain name.