Westlegalcenter.com, Westllaw.com

The timeline behind westlegalcenter.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION West Publishing Corporation v. Texas International Property Associates Claim Number: FA0703000944496 PARTIES Complainant is West Publishing Corporation (“Complainant”), represented by Jodi A. DeSchane, of Faegre & Benson LLP, 2200 Wells Fargo Center, 90 South Seventh St., Minneapolis, MN 55402. Respondent is Texas International Property Associates (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker, PO Box 703431, Dallas, TX 75370. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <westlegalcenter.com> and <westllaw.com>, registered with Compana, LLC. 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. James A. Carmody, Esq., as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on March 21, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 23, 2007. On April 4, 2007, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <westlegalcenter.com> and <westllaw.com> domain names are registered with Compana, LLC and that Respondent is the current registrant of the names. Compana, LLC has verified that Respondent is bound by the Compana, 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 April 4, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 24, 2007 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@westlegalcenter.com and postmaster@westllaw.com by e-mail. A timely Response was received and determined to be complete on April 24, 2007. On May 1, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <westlegalcenter.com> and <westllaw.com> domain names, the domain names at issue, are confusingly similar to Complainant’s WEST, WEST LEGALEDCENTER, WESTLAW, and WESTLAW.COM marks, respectively. 2. Respondent does not have any rights or legitimate interests in the <westlegalcenter.com> and <westllaw.com> domain names. 3. Respondent registered and used the domain names at issue in bad faith. B. Respondent filed a Response which does not admit or deny any wrongdoing but does not oppose the relief sought by Complainant. FINDINGS Founded in 1872 by John B. West, West Publishing Corporation (“West”) is the legal profession’s leading provider of authoritative legal information resources and research technologies. In 1996 West joined The Thomson Corporation, a leading global provider of integrated information solutions to business and professional customers. West now forms part of one of The Thomson Corporation’s four principal global market groups, with over 17,000 employees and business operations in 24 countries. For over one hundred years Complainant has been at the leading edge of innovation. Over the years many of Complainant’s innovations have become synonymous with the successful practice of law, including West’s classification system of U.S. law; its legal, financial and business news databases and research services; and its educational and reference publications and services. Over the last hundred and thirty-five years Complainant has extensively used the mark WEST and a variety of other marks incorporating the word WEST in connection with its legal products and services. Complainant holds numerous United States trademark registrations for the WEST mark and marks incorporating the word WEST (hereinafter referred to as “the WEST Family of Marks”). Complainant is the owner of United States Patent & Trademark Office registration number 1,226,635 for the WEST mark, registration number 2,743,537 for the WEST LEGALEDCENTER mark, registration numbers 1,225,285 and 2,547,621 for the WESTLAW mark, and registration numbers 1,591,846 and 2,380,400 for the WESTLAW.COM mark. Respondent is not commonly known by the domain names at issue and has not been licensed or otherwise been given authority to use Complainant’s marks to register domain names or otherwise. The domain names <westlegalcenter.com> and <westllaw.com> were registered and are being used by Respondent to redirect Internet users to a site purporting to be “For resources and information on Legal Center and Legal information” with related searches such as “Legal Information” and “West Legal.” When an Internet user clicks on the related searches, sponsored links to third-party websites are displayed, many of which are competitors of Complainant. 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 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; (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. Statement with Respect to All Elements of the Policy Respondent does not contest any of Complainant’s allegations regarding the <westlegalcenter.com> and <westllaw.com> domain names. Rather, Respondent has consented to a decision in favor of Complainant and authorized the immediate transfer of the subject domain names. In a circumstance such as this, in which Respondent has consented to the transfer of the disputed domain names, the Panel decides to forego the traditional UDRP analysis and orders the immediate transfer of the domain names. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”). DECISION Therefore, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <westlegalcenter.com> and <westllaw.com> domain names be TRANSFERRED from Respondent to Complainant. James A. Carmody, Esq., Panelist Dated: May 15, 2007 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.