In a UDRP decision released today a one member panel rejected the trademark holder of the “brands 1-800-NY-ABOGADO 1-800-ELABOGADO” to the domain name ElAbogado.com, which translates to “The Lawyer” in English.
Here are the relevant facts and findings:
“The complainant registered marks based on previous use made of them that according to these records dating back to 1996 in the case of the brand 1-800-ELABOGADO and 2000 in the case of the brand 1-800 -NY-LAWYER.”
The trademark holders claim was that “the domain ELABOGADO.COM is virtually identical to the mark 1-800-ELABOGADO. For only omits the number “1800” at the beginning of the sign.”
The disputed domain name was registered in 1999.
Although the applicant has demonstrated the registration of trademarks since 2006, there is no evidence in the record regarding the extensive and exclusive use of the mark in order to establish that there is a prior right to domain registration, ie 1999 .
Defendant demonstrated that their rights and legitimate interests to the domain in dispute, as follows:
i) In Annex V of the response there is full proof for the first use of the disputed domain dating from April 7, 2000, this shows that before any notice of the dispute, the Respondent had used the name domain, in connection with a bona fide offering of services.
Respondent’s website from 2000 until 2012, has always been to a directory of lawyers and law firms with special emphasis on Spain, is thus found that the Respondent has legitimate and fair use of the domain name, without intent to divert consumers to misleadingly or tarnish the brand name product or service of the Claimant.
Thus, the Panel finds that the Respondent has demonstrated rights and legitimate interests in the domain and on the contrary, Claimant failed to demonstrate the lack of rights or legitimate interests of the Respondent on the property, in accordance with the requirements of paragraph 4 (c) UDRP.
“Additionally, as previously argued ELABOGADO is the term commonly used to identify services and descriptive directory of lawyers and law firms. So ELABOGADO is a term with obvious weakness trademark and thus can be used by anyone to describe your products or legal services. Thus, the use of the term in a domain ELABOGADO not follow bad faith, or prior knowledge of the plaintiff’s mark, it is necessary to adequately describe the business of suing.”
It does not appear that the domain holder asked for a finding of Reverse Domain Name Hijacking.
Finally it should be noted that the UDRP decision was handed down in Spanish and we translated the decision with Google Translate.
