LegalSupply.com Lost To eLegalSupply.com: “The Transfer Of A Domain Is Equivalent To A New Registration”

A few weeks ago told you about a UDRP had been filed on the domain name legalsupply.com.

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.

Comments

  1. Clobert Rine says

    With the right research, a small investment to kick off a new business, and some balls; a guy could do quite well UDRPing domains.

    Watch out, punks…here I come.

  2. Back in the real World says

    Berryhill -

    Great point, fantastic illustration of the reason behind the aplication of the law. IMHO The situation it is meant to protect as shown by your timeline of events is 100% bad faith.

    The transfer of the domain itself should not make it bad faith but the subsequent usage after the transfer should be all that matters.

    Thanks Mr Berryhill for taking the time to add real insight to these blogs.

  3. Philip Corwin says

    @John B – Rest assured that I have been residing in the bright, SPF-slathered sunshine and not beneath a boulder. Yes, the Schmidheiny decision exists but, as you observe, it is nine years old and a Third Circuit case, so we might well see a different decision if a trademark action was brought in the Fourth Circuit where VeriSign and therefore .com in rem jurisdiction resides, and where the post-2003 evolution of the domain aftermarket and the inherent value of generic domains could be brought to the court’s attention. Besides, UDRP practice is not bound by any national law — as the WIPO Overview of panel decisions notes at 4.15: “…the decision framework of the UDRP generally does not require resort to concepts or jurisprudence specific to national law (other than with respect to the question of whether trademark rights exist)”. (And I refer to the WIPO overview throughout this post because, even though this was a NAF decision, WIPO provides the only comprehensive summation of/guide to prior UDRP decisions and overall practice.)

    National law aside, I am well aware of the portion of WIPO 3.7 stating that “the transfer of a domain name to a third party does amount to a new registration”, and had I known that my late night posting would be subject to such a persnickety critique I would have been more precise in articulating that my concern was with the application of that principle to a domain name consisting of one or more generic words vis-à-vis a trademark registered after the original registration of said domain name, where such trademark consists of generic words preceded by an Internet-referencing prefix such as “e” or a suffix such as “web” or “net”. The panelist appears to endorse the complainant’s contention that, in and of itself, such “circumstances indicate that Respondent registered or acquired the disputed domain name for the purpose of selling the disputed domain name to Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs”.

    The panelist’s shallow and mechanistic determination as to whether this is a case of “confusing similarity” indicative of bad faith registration fails to grasp that all sorts of parties might be interested in acquiring this combination generic domain name other than suppliers of goods to lawyers – such as an indie record label, a youth-oriented clothing line, or even a licensed medical marijuana dispensary. This decision would support a view that the registration of such trademarks as etrade, ebay, or eharmony might automatically preclude or devalue the post-TM-registration initial registration or third-party transfer of such generic domains as trade.tld, bay.tld, or harmony.tld – at .com or any other TLD subject to UDRP proceedings (and we have thousands of new gTLDs coming, so that would amount to a very broad grant of preemptive power to such species of trademarks). That’s what the panelist did here, in clearly adopting complainant’s contention that “Respondent’s domain name is confusingly similar to Complainant’s ELEGALSUPPLY.COM mark because it differs only by a single letter”.
    That conclusion is highly questionable. Again, would anyone looking for an online auction really confuse bay.com with ebay.com, etc.? And when we look at the WIPO Overview at 1.10, it states, “A domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.” Well, is legalsupply an obvious misspelling of elegalsupply? It looks to me like it is the correct spelling of two combined generic words. I think an argument could have been made that the trademark “elegalsupply’ is not even a dominant or principal component of the domain name, because the “e” prefix is such a critical modifier (again, by analogy, “etrade” should not be viewed IMHO as the dominant or principal component of “trade”). So a policy that is intended for true typosquats such as elegelsupply or elagalsupply has been twisted in this case to label the combination of two correctly spelled generic dictionary words as a typosquat.

    Even more to the point, WIPO 1.2 states “In order to satisfy this test [for confusing similarity], the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms.” Well, in this instance the relevant trademark elegalsupply is not recognizable within the domain name as it has greater breadth than the name; notice in particular that Overview point speaks of an “addition” to the trademark when the generic words domain at issue consists of the trademark with the all-important e-prefix subtracted. (And, again, it was the complainant who chose to add e- to a preexisting domain name.)

    There are of course other WIPO principles relevant to this decision (particularly 2.2, as to whether there are rights or legitimate interests in a domain comprised of dictionary words), as well as the overall feeling that a better defense combined with a request for a 3-member panel could have yielded a different or less worrisome result. As you point out, this decision features “the sheer idiocy of transfer on the basis of a supplemental registration, when it was bleedingly obvious that the domain name had been registered to another party, albeit not this Respondent, when the Complainant chose its domain name and trade name in the first place.” Indeed, the panelist here declared his mistaken belief that “The fact that the trademark is registered on the Supplemental Register and not on the Principal Register is not a factor to be considered under the Policy.” So here we see another troubling NAF decision, like the Hardware Resources one of several months ago, in which a domain was transferred to a “rights holder” who in fact seems to lack the requisite rights. Where is their panelist quality control?

    Wrapping up, especially since the WIPO Overview concedes at 4.1 that “The UDRP does not operate on a strict doctrine of precedent. However, panels consider it desirable that their decisions are consistent with prior panel decisions dealing with similar fact situations.” – and since any scan of the Overview yields the observation that there are multiple exceptions to consensus views as well as multiple “developing areas of UDRP jurisprudence” – it seems incumbent upon all of us who toil in the legal and policy realm on behalf of domain investors to try to nudge such developing areas toward a greater recognition of domain rights vis-à-vis trademark rights. That is, some decent respect should be paid to the bundle of valuable rights that make up the intangible asset called a domain when it rubs against the intangible asset known as a trademark. Such respect should surely extend to a domain consisting of two correctly spelled dictionary words that was registered well in advance of complainant’s own domain and trademark registrations, acts undertaken with full knowledge of this disputed domain’s preexisting status.

  4. John Berryhill says

    “Rest assured that I have been residing in the bright, SPF-slathered sunshine”

    Just warn me this year before you sneak up on me at Bethany Beach again. That was one of the weirdest moments of my life.

  5. Keith says

    I don’t know where this is going to go, but there are some problems with the way the law reads and domains. Any domain I get for any niche is confusingly similar to some other names for that niche. I am sure we will have a decade or two while the courts start trying to sort out the internet and domains.

  6. says

    The. Dot. Co is not solving anything…
    For theone who are not aware this is colombia, so the country code tld protect in colombia …. Are you crazy enough to start your biz in bogota ?????????

  7. says

    The. Dot. Co is not solving anything…

    Indeed. That’s why I’m finding it rather odd how .co is arguably any better than .com other than being one letter short, much more be able to solve domain-trademark issues since it’s also using UDRP.

  8. Ricky says

    People need to start suing the WIPO panelists or the organization itself otherwise this is only going to get worse. At the very least respondents should be able to appeal the decision.

  9. Philip Corwin says

    @ John B — I would characterize that unexpected encounter as happening upon rather than sneaking up — but it was strange to be walking up a sparsely populated beach and run into you and your family — hope you and they are enjoying the holiday weekend

  10. Philip Corwin says

    From the go.co website comes the following background information as this country code TLD (ccTLD) —
    .CO, a global, recognizable, and credible domain extension, is brought to you by .CO Internet SAS, a joint-venture between Arcelandia SA and Neustar, Inc (NSR). As a global provider of managed DNS services and registry solutions, USA based Neustar, Inc. provides the domain name resolution for .CO and other domain extensions such as .US, .BIZ, and .TRAVEL. Arcelandia is a Colombian entity with interests in a variety of internet related ventures.

    The .CO top-level-domain is the country code extension assigned to the Republic of Colombia by ICANN, the organization responsible for assigning domain name extensions around the world. As is common with certain country-code extensions that have broad global appeal such as .TV (Tuvalu) and .ME (Montenegro), Colombia made the bold decision to share this resource with the global internet community by adapting the registration policies for .CO to industry standards and enlisting an international joint-venture – .CO Internet SAS – to manage the marketing and operational aspects of this domain extension.

    As for alleged cybersquatting disputes, .co registrants are subject to UDRP same as .com –
    If a person or entity claims that your domain name registration infringes on or violates their rights, an administrative proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP) may apply to help resolve the claim. The UDRP was adopted by The Internet Corporation for Assigned Names and Numbers (ICANN) for the quick and inexpensive resolution of domain name disputes and is a simple and fast process that trademark owners can initiate with an accredited Dispute Resolution Mediation center.

    Finally. .co has additional available m,easures to address other potential threats and harms –
    Put into effect on December 1, 2010, the Rapid Domain Compliance Process gives the .CO Registry the ability to quickly suspend any .CO domain name, if it’s being used in a manner that appears to threaten the stability, integrity or security of the .CO Registry, or any of its registrar partners – and/or that may put the safety and security of any registrant or user at risk. The process also allows the Registry to take preventive measures to avoid any security threat.

    The new team running .co has repurposed it in a very compelling and responsible way. But to assert that it is somehow a haven from UDRP jurisdiction or problems is quite mistaken. Flaws in UDRP must be addressed to imprve its operation at all gTLDs and all the ccTLDs that employ it.

  11. z says

    any tld within the icann system will be subject to icann “corruption” or whatever you choose to call it. that is, making money via domain names at the expense of trademarks. but maybe(?) the idea some .co fans have is that we could have a purely “generic” tld. imagine if a tld registry excluded all trademarks (and focused on names that for one reaosn or another could never be trademarked). no trademark system is “perfect” and neither would this be a “perfect” system. but it is certainly possible to limit what can be registered to avoid a vast majority of domain name/trademark disputes. would such a registry be useful?

    it is possible to have a tlds or several outside the icann system. they do not have to follow the icann approach with which so many are unsatisfied.

    and accessing such tld’s can be accomplished without sacraficing access to icann-sponsored tld’s. contrary to popular myth there is no need to “split the root” to accomplish this. it is not necessarily an “either-or” proposition.

    whether such tld’s would benefit domainers, i’m not sure. what do you think?

    keep in mind a lot of domainers do rely on confusion with trademarks in order to receive the traffic that generates the parking revenue needed to pay registration fees, e.g. for their non-infringing generic names that might be sold at a markup to end users (but which do not receive enough parking revenue to cover their own costs).

  12. Overpriced says

    The problem is that most domainers never develop their domains. People who think domainers are providing valuable information lack insight.

    Domain investors ask ridiculous prices. They block innovation. They hold back valuable information to keep lower tier domainers coming back.

    This is karma at work. If you develop and use your domains the right way, there is no reason to worry. However, parking domains on domain parking sites who take no responsibility for their mistakes is unintelligent. If you lose your domains due to parking companies, you deserve it.

    Seems like DomainNameSales banner and their links served a minor role in this domain case. Not every person has the money to defend cases. $1500 to a wealthy person is nothing, but it is a lot to another.

    Legal supply is a good domain. It is no beauty supply, office supply, medical supply and uniform supply.

    Develop your domains and use them. Parked domains offer no value on the web. Most links lead people to a pointless site. Keyword show up in website which have nothing to do with the search result.

    In a way, domainers deny innovation. End-users overspend on domains rather than learn how to analyze traffic. Better luck next time.

  13. Overpriced says

    Waste of time debating over a unappealing domain that domainers will overprice. There are far better supply domains than LegalSupply. It is no that generic of a donain to create buzz.

    I can see if OfficeSupply, MedicalSupply and BeautySupply were hit with a UDRP. Legal Supply is not that great of a domain. Discussing the domain is pointless. I’m sure some here think the domain is worth $50k or more.

    You can locate better unregistered domains, that if developed right, can deliver thousands of uniques and revenue in a few months. A few niches provide that playing field. Stage is a premium generic that is worth discussing. So is the NewYorkNewYork domain lost in a case.

    LegalSupply is nothing to get mad about. Identifying the domain as a generic is extreme. The e site accepting the better domain selected a bad name (IMO). Talking about UDRP in blogs equip end-users to file cases.

    When you think about it, you are better off writing about UDRP cases on law sites that deter future filers. People rarely take blogs serious. They are like a local diner or a fast food joint.

    I would rather own LegalPad than LegalSupply. Even LegalJobs is far better. Another headline captures attention. Vanity was noted as a developed site and now LegalSupply is a generic domain.

  14. Overpriced says

    Robert Cline has nothing better to do than push his dot co. I would say the domain extension is bad because I own three that I developed. They are extremely popular keywords.

    To say that dot co is better than dot com is reaching. Dot co take too long to get ranked. Publishing article on good dot com create instant traffic. However, articles featured on dot co website take too long to get indexed.

    Dot co domain content will get indexed with a good keyword. I wouldn’t bet the house on dot co or cloud sites. It is better to spread out your domain assets.

  15. Huh? says

    @Berkens: ” “The Transfer Of A Domain Is Equivalent To A New Registration”

    I don’t get the title to the story. The transfer of a domain name to a third party has long been interpreted as being the equivelant of a new registration!

  16. BrianWick says

    Huh?
    Ok masked genius – are you saying there is no longer a need for a Real Estate title company which is the conduit between a seller and a buyer ?

  17. says

    Huh ?
    Whebn you transfer the domain from godaddy to name.com to make some savings in the renewal costs knowing there is no change of ownership are you sure you can consider as a new registration ???

  18. ERIC says

    Hi guys,

    This article has really got me thinking. Is it possible that I might lose my domain to another company since it only differs by one letter.
    I will not reveal my domain but Iwill give a striking similarity to what I am talking about. As mentioned my domain differs only by one letter from the domain of a company that has been operational for over a decade now. I registered this domaina few months ago since it contains the “i” beginning e.g ibook , ifan , iknife, isolar……you get the picture.
    Let’s call my domain isaul.com and the companies name is isault.com
    Seeing as how the names are only slightly different, can I get a trademark for my name and is it possible for me to lose my domain ( which I plan to develop and invest lots of cash into by the way) to the other company simply because of the one letter difference. Please help. I need some guidance or at least advice from domainers.

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