LegalSupply.com Lost To eLegalSupply.com: “The Transfer Of A Domain Is Equivalent To A New Registration”
At the time there was no indication who filed the UDRP seeking control of the domain, but the decision has just been issued and the complainant is eLegalsupply.com, LLC.
And guess what?
eLegalSupply.com just took the generic domain name LegalSupply.com away from the domain holder based off a Trademark for eLEGALSUPPLY.COM which was filed years after the original registration.
Moreover in the wild, wild west of UDRP decision the one member panel decided that “The Transfer Of A Domain Is Equivalent To A New Registration”
Yup against a ton of UDRP decisions that went the other way.
No wonder most domainer’s think that the UDRP is nothing more than a Crap table when it comes to decisions and speaking of crap here are the relevant facts and findings by the one member panel:
Complainant has registered its ELEGALSUPPLY.COM mark with the United States Patent and Trademark Office (“USPTO”) filed January 28, 2008; registered August 5, 2008.
Respondent’s <legalsupply.com> domain name is confusingly similar to Complainant’s ELEGALSUPPLY.COM mark because it differs only by a single letter.
3. Complainant never licensed or authorized Respondent to use the mark.
4. Respondent’s disputed domain name resolves to a website that features a banner stating that the website is listed for sale at domainnamesales.com and displays links referencing Complainant’s competitors.
5. Respondent has not been commonly known by the disputed domain name and the WHOIS information provides no indication that Respondent is associated with the disputed domain name.
6. Respondent registered the disputed domain name for the purpose of selling the disputed domain name for valuable consideration in excess of Respondent’s out-of-pocket costs.
7. Respondent uses the disputed domain name to intentionally attract Internet users, for commercial gain, to the resolving website by creating a likelihood of confusion with the mark as to the source, sponsorship, or affiliation of the disputed domain name and resolving website.
8. Respondent has demonstrated a pattern of bad faith domain name registration.
“The Panel finds that Respondent was not the first person to register the domain name. ”
“As of March 1, 2007, the domain name was registered to Kevin Daste at the registrar, Network Solutions, LLC. As of April 9, 2012, the domain name was registered to Respondent at the registrar, Fabulous.com Pty Ltd.”
“The domain name must therefore have been transferred to Respondent at some point after March 1, 2007.”
“Complainant has registered its ELEGALSUPPLY.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,482,692 filed January 28, 2008; registered on the Supplemental Registry on August 5, 2008).”
“The Panel finds that using a confusingly similar disputed domain name to host links advertising Complainant’s competitors is not consistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). “
“Complainant also contends that Respondent’s disputed domain name resolves to a website featuring an orange banner on top of the screen stating that the domain name has been listed in the marketplace at <domainnamesales.com>. ”
“The Panel finds that offering the disputed domain name for sale does not indicate rights and legitimate interests under Policy ¶ 4(a)(ii). ”
“The Panel agrees with Complainant and finds that Respondent is guilty of typosquatting and lacks rights and legitimate interests in the <legalsupply.com> domain name under Policy ¶ 4(a)(ii).”
“Had the Respondent established that it was selling or otherwise dealing in legal supplies, the Panel might have decided differently, but there being no indicia of rights or legitimate interests in the disputed domain names, the Panel finds that the Complainant has met the Policy ¶ 4(a)(ii) criteria.”
“Respondent was not the first person to register the domain name. ”
“As of March 1, 2007, the domain name was registered to Kevin Daste at the registrar, Network Solutions, LLC. As of April 9, 2012, the domain name was registered to Respondent at the registrar, Fabulous.com Pty Ltd. The domain name must therefore have been transferred to Respondent at some point after March 1, 2007. Even assuming that Complainant’s first use of the mark was on May 7, 2002 – which Respondent suggests and Complainant denies – that use would still pre-date Respondent’s re-registration of the domain name by at least four years and nine months.”
“The transfer of a domain name is equivalent to a new registration under the UDRP
Accordingly, it is Ordered that the legalsupply.com domain name be TRANSFERRED from Respondent to Complainant.”
Certainly a troubling decision for any domain holder.
Just not domainers, but any domain holder.