LegalZoom uses an outside law firm to enforce its own trademarks

In LegalZoom.com, Inc. v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, WIPO Case No. D2017-1894 (Alfred Meijboom, November 14, 2017), the Panel transferred the domain name zoomlegal.com to LegalZoom, the online provider of legal services, including trademark related services. LegalZoom, which boasts on its trademark services page of how it "knows the ropes," and tells its potential customers "[l]et's join forces in protecting your brand," chose itself to join forces with an outside law firm to protect its own brand. That fact, in and of itself, is the story here. More on that later.

As for the merits of the case, this was about as routine as it gets in a UDRP dispute. The Respondent defaulted. LegalZoom demonstrated trademark rights in the mark LEGALZOOM and LEGALZOOM.COM. The disputed domain merely reverses the order of the words in the LEGALZOOM mark. According to the Panel, "[t]his reversal of two terms does not change the overall impression of the disputed domain name as compared to the Complainant's trademarks taking into consideration that it is possible that Internet users unintentionally type in the disputed domain name instead of the Complainant's trademarks."

As to Respondent's rights or legitimate interests in the disputed domain, there was evidence that the disputed domain "was used to install malware on Internet users' computers." Not surprisingly, the Panel held that "[i]nstalling malware on Internet users' computers can never qualify as a bona fide offering of goods or services or as a legitimate noncommercial or fair use." At some point, the use of the disputed domain changed "to direct Internet users to a website with legal information which directly competes with the services for which the Complainant registered and uses its trademarks," and the Panel concluded that such use does "not constitute a bona fide offering of goods or services."

Finally, the Panel had no problem finding that the disputed domain was registered and used in bad faith. According to the Panel, "it is obvious that at the time the Respondent registered the disputed domain name it must have had the Complainant's trademarks in mind as they had already been registered for many years and have actually been used by the Complainant internationally. Moreover, the Panel agrees with the Complainant that its trademarks are an invented word, and as such, third parties would not legitimately choose this name or a variation of it, unless seeking to create an impression of an association with the Complainant." Continuing, the Panel confirmed that using a domain name to install malware is evidence of bad faith.

As a result of all of the foregoing, the Panel ordered the transfer of the disputed domain.

In a final note, I just want to confirm that our firm owns trademarks and if we ever have to enforce our marks, we will be enforcing those trademarks ourselves, because enforcing trademark rights is what we do.