Pacificlawcenters.com, Pacific-law-center.com

The timeline behind pacificlawcenters.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 Pacific Law Center v. Shahrokh Saadat-Nejad Claim Number: FA0703000944798 PARTIES Complainant is Pacific Law Center (“Complainant”), represented by Jeffrey L. Phillips, 3030 North Third Street, Suite 1100, Phoenix, AZ 85012. Respondent is Shahrokh Saadat-Nejad (“Respondent”), 3713 Mount Ashmun Place, San Diego, CA 92111. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <pacificlawcenters.com> and <pacific-law-center.com>, registered with Go Daddy Software, Inc. PANEL The undersigned certifies that has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. Judge Ralph Yachnin as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on March 22, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 23, 2007. On March 23, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <pacificlawcenters.com> and <pacific-law-center.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. 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"). On March 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 16, 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@pacificlawcenters.com and postmaster@pacific-law-center.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On April 23, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Ralph Yachnin 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. 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 <pacificlawcenters.com> and <pacific-law-center.com> domain names are confusingly similar to Complainant’s PACIFIC LAW CENTER mark. 2. Respondent does not have any rights or legitimate interests in the <pacificlawcenters.com> and <pacific-law-center.com> domain names. 3. Respondent registered and used the <pacificlawcenters.com> and <pacific-law-center.com> domain names in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Pacific Law Center, is a professional legal corporation which has operated in San Diego, California since January 2003. Complainant seeks to provide legal services to low-income residents who otherwise may not have resources to obtain qualified legal representation. Complainant has expended significant time, money, and effort establishing public recognition of the PACIFIC LAW CENTER mark as a source for legal representation in the San Diego area. Respondent is a former client of Complainant. Respondent registered the <pacificlawcenters.com> domain name on September 20, 2006, approximately one month after Respondent terminated representation of Complainant, and the <pacific-law-center.com> domain name on January 18, 2007. Respondent has used the disputed domain names to display defamatory statements about Complainant. When Complainant requested that Respondent remove the defamatory material, Respondent replied that unless Complainant paid him $500,000, Respondent would continue to operate the websites at the disputed domain names. Complainant received a temporary injunction ordering Respondent to stop using the <pacificlawcenters.com> domain name. Complainant then pursued a temporary injunction against Respondent for the <pacific-law-center.com> domain name, which was in progress at the time Complainant filed its Complaint with the National Arbitration Forum. The domain names no longer resolve to active websites. DISCUSSION 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). 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. Identical and/or Confusingly Similar It is not necessary for Complainant to hold a registered trademark in order to establish rights in its PACIFIC LAW CENTER mark for purposes of the Policy. Common law rights in a mark are sufficient to satisfy Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that a complainant's trademark or service mark be registered by a government authority for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names.”). Complainant has established rights in the common law trademark PACIFIC LAW CENTER through Complainant’s four years of continuous use in commerce. The Panel finds that Complainant has created substantial consumer recognition in the PACIFIC LAW CENTER mark sufficient to establish its rights in the mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”). Respondent’s <pacific-law-center.com> domain name is confusingly similar to Complainant’s PACIFIC LAW CENTER mark because the domain name incorporates Complainant’s mark in its entirety, merely replaces the spaces with hyphens, and adds the generic top-level domain “.com.” Because hyphens and generic top-level domains are irrelevant to a Policy ¶ 4(a)(i) analysis, the <pacific-law-center.com> domain name does not sufficiently distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Respondent’s <pacificlawcenters.com> domain name is confusingly similar to Complainant’s PACIFIC LAW CENTER mark because the domain name incorporates Complainant’s mark in its entirety, removes the spaces between the terms, adds the letter “s,” and adds the generic top-level domain “.com.” These minor variations to Complainant’s mark are insufficient to distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”); see also Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark). The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i). Rights or Legitimate Interests Complainant alleges that Respondent has no rights or legitimate interests in the <pacificlawcenters.com> and <pacific-law-center.com> domain names. Because Complainant made a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Since Respondent failed to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests under the Policy. After Complainant asked Respondent to remove the defamatory content from the websites at the disputed domain names, Respondent offered to sell the domain name registrations to Complainant for $500,000. The Panel finds this to be evidence that Respondent lacks rights and legitimate interests in the <pacificlawcenters.com> and <pacific-law-center.com> domain names under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Dobson, FA 146568 (Nat. Arb. Forum Apr. 8, 2003) (finding evidence that the respondent lacked rights or legitimate interests in the disputed domain name after it sent several correspondences offering to sell its rights in the domain name in exchange for 1,500 shares of the complainant’s stock to the complainant); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“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.”). Complainant asserts that Respondent is not associated with Complainant in any way. Furthermore, Respondent’s WHOIS information, as well as other information in the record, does not suggest that Respondent is commonly known by the <pacificlawcenters.com> and <pacific-law-center.com> domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”). The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Because Respondent offered to sell the disputed domain name registrations to Complainant for $500,000, the Panel finds this to support its conclusion that Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(i). See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that bad faith existed where the respondent offered the domain name for sale to the complainant for $125,000); see also Kabushiki Kaisha Hitachi Seisakusho (Japan Corp.) v. Fortune Int’l Dev. Ent. Co., D2000-0412 (WIPO July 2, 2000) (finding the respondent’s offer to sell the domain name for $100,000 constitutes bad faith). The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <pacificlawcenters.com> and <pacific-law-center.com> domain names be TRANSFERRED from Respondent to Complainant. Hon. Ralph Yachnin, Panelist Justice, Supreme Court, NY (Ret.) Dated: May 7, 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.