Kevin Daste the owner of the domain name LegalSupply.com has appealed the UDRP decision in which the panel awarded the domain name over to eLegalSupply.com
The case was filed in the Louisiana Eastern Federal District Court.
The case is Daste v. Elegalsupply.com LLC
We called out the panel for what we thought was a bad decision and its good to see the domain owner appeal the decision.
The complaint asks the court for a declaratory judgment that Plaintiff’s registration and use of the domain name LEGALSUPPLY.COM does not constitute trademark infringement, unfair competition, or a violation of the Anti-cybersquatting Consumer Protection Act (“ACPA”), and that Plaintiff is the rightful registered name holder or registrant of the Domain Name.
This action also seeks relief for Defendant’s bad faith actions constituting common law unfair competition and unfair competition under Louisiana Unfair Trade Practices and Consumer Protection Law Sections51:1401 et seq.
Daste is a web developer who has developed several businesses and websites including without limitation: Crawfish.com, AllWebJobs.com, AdminCareers.com, RunningOfTheBulls.com, NolaMedia.com, LocalAdvertiser.com, Pralines.com, BusinessAnalytics.com, CaliforniaFunding.com, and RedBeansAndRice.com.
Mr. Daste alleges in his complaint that
“Recently, many overreaching trademark owners have sought to capitalize on this thriving market by filing baseless trademark infringement lawsuits or taking advantage of the administrative system set up by ICANN (the California corporation that administers the Domain Name System (“DNS”)), using this system to intimidate domain name holders into transferring their domain names, and swiping valuable descriptive, generic, keyword and/or dictionary domain names away from their rightful owners. These abusive lawsuits are threatening meaningful development of domain name and Internet investment and innovation.”
“Such is the situation that is before the Court in this Complaint. ”
“On February 22, 2007, Plaintiff purchased and registered the Domain Name in good faith for the sum of $685.00 by successfully participating in a public auction hosted by SnapNames.”
“Plaintiff bid against eleven (11) third party auction participants, which is a reflection of the market value of generic descriptive domain names.”
Since his original registration of the Domain Name on February 22, 2007, to the present, Plaintiff has been the continuous owner of the Domain Name and the real party of interest of the Domain Name registration.
“Thus it appears Defendant has been unconcerned with the registration of the Domain Name for at least fourteen years before initiating the UDRP against the Plaintiff.”
“Plaintiff has never offered to sell the Domain Name to Defendant, nor attempted to disrupt the Defendant’s business by confusing consumers trying to find the Defendant’s website, or otherwise.”
“Defendant made an unsolicited offer to purchase the Domain Name from Plaintiff, to which Plaintiff responded.”
“Content at the website has never been focused upon Defendant, Defendant’s business, or Defendant’s competitors, but instead has displayed and linked to a variety of information and advertising content relevant to web users who visit the site.”
“The Weak Trademark on the Supplemental Register & the Descriptive Domain Name”
“Defendant filed a trademark application for the mark “eLegalsupply.com” on January 28, 2008, and secured a registration on the Supplemental Register on August 5, 2008.”
“The Domain Name itself consists of two dictionary words “legal” and “supply.” Manifestly two generic descriptive words for the products associated with legal supply.”
“There are several active US trademark registrations, not owned by Defendant, that use the terms “Legal” and “Supply.”
“There are some 1223 active trademark records in the US Patent and Trademark Office that contain the word LEGAL, and with the exception of one, are not owned by Defendant.”
“There are some 1912 active trademark records in the US Patent and Trademark Office that contain the word SUPPLY, and with the exception of one, are not owned by Defendant.”
“There are thousands of legitimate uses of the terms LEGAL and SUPPLY together with domain names and websites owned by third parties – in addition to LEGALSUPPLY.COM, active website of similar domains not affiliated with the Defendant,include: LEGALSUPPLY.NET LEGALSUPPLYSHOP.COM, LEGALSUPPLYSPECIALTIES.COM, LEGALSUPPLYYELLOWPAGES.COM, LEGALSUPPLIES.COM, LEGALSUPPLIES.NET, LEGALSUPPLIES.ORG, LEGALSUPPLIESOFTEXAS.COM, LEGALSUPPLIESONLINE.COM, LEGALTREEOFFICESUPPLY.COM, LEGAL-FORM-SUPPLY.COM, LEGAL-OFFICE-SUPPLIES.COM, LEGALCORPSUPPLIES.COM,LEGALFORMSSUPPLIER.COM,LEGALFORMSUPPLY.COM, LEGALOFFICESUPPLIES.COM, LEGALOFFICESUPPLIES.NET, LEGALOFFICESUPPLIES.ORG,LEGALOFFICESUPPLIES.INFO, LEGALOFFICESUPPLY.COM LEGALPAPERSUPPLY.COM, LEGALSHIELDSUPPLIES.COM.
LEGALSUPPLIERS.COM, LEGALSUPPLIERSGUIDE.COM, LEGALSUPPLIERSHUB.COM, CHEAPLEGALSUPPLIES.COM, CHEAPLEGALSUPPLY .COM, CORPKITLEGALSUPPLIES.COM, DMCLEGALSUPPLY.COM, EZLEGALSUPPLY.COM, GETLEGALSUPPLIES.COM, GREENLEGALSUPPLIES.COM, ILLEGALSUPPLY.COM, INCORPLEGALSUPPLY.COM, IOWALEGALSUPPLY.COM, ONLINELEGALSUPPLY.COM, TEXASLEGALSUPPLIES.COM, USLEGALSUPPLIES.COM, WELLSLEGALSUPPLY.COM
“Moreover virtually all of Defendants competitors utilize the descriptor “Legal Supply” to generically describe their legal supply products, including OfficeDepot.com, Blumberg.com, Catalogs.com, LegalStore.com, asLegal.com, BulkOfficeSupply.com, ClassicLegal.com, CleanSweepSupply.com, HotFrog.com, CorpKit.com, Local.com, TCS-Liberty.com, Ask.com, Target.com, CheapOfficeSupplies.com, and Info.com.
“Defendant does not own and cannot rightfully claim exclusive rights to use of the common words LEGAL and SUPPLY, separate or together, as used in a domain name, trademark or otherwise. At best, Defendant’s trademark rights are weak and narrowly limited to the complete mark Elegalsupply.com.
In addition to the Declaratory Judgement the domain holder is seeking for the court to award him his reasonable attorney’s fees and costs.
(Hat tip George Kirikos)