In a ruling this week, a three member WIPO Panel gave a generic term, LawSociety.com to a group in the UK based off a trademark for “The Law Society”
Here are the findings from the panel:
“”The Complainant in this case was “the representative and regulatory body for the solicitors’ branch of the legal profession in England and Wales. It was founded in 1825 under the name of “The Law Institution”. It currently operates under a Royal Charter first granted in 1831. A supplemental charter in 1903 provided that it was to be called by the name and style of “The Law Society”.”
“The Complainant is the proprietor of a United Kingdom registered trademark THE LAW SOCIETY registered on December 26, 1997 in relation to goods and services in classes 16, 35, 41 and 42. Under the heading “Other Particulars Special Circumstances” on the trademark printout, there is a statement “Proceeding because of distinctiveness acquired through use”.
“The Complainant has been operating under the name “The Law Society” since 1903 as the regulatory body for solicitors in England and Wales and as a provider of services for its members.””
“”The Complainant has operated a website under the domain name <lawsociety.org.uk> since 1997. It also publishes a weekly journal called “The Law Society Gazette”.
“The disputed domain name was registered on January 6, 1999.””
“”It appears from the Respondent’s web page that it is a provider of Internet directory services. Some sponsored “click-through” links offer legal services.””
“””””The Complainant is the owner of a trademark registration for the trademark THE LAW SOCIETY in the United Kingdom which predates the date of registration of the disputed domain name in 1999.””
“”Furthermore, as a result of continuous use of the trademark THE LAW SOCIETY by the Complainant for over a hundred years in the United Kingdom, the Complainant had common law rights in the trademark THE LAW SOCIETY before the disputed domain name was registered.”
“And on the evidence, the Complainant appears to be the only law society which is known simply as “The Law Society”, without any geographic or other qualifier.”
“In registering and using the disputed domain name 0f the Respondent could not have failed to appreciate that it would attract to its website a significant number of Internet users looking for the Complainant.””
So to sum it up, the complainant had a trademark for, and was know by “The Law Society” and the panel gave the domain name LawSociety.com to them .
Now here’s the problem.
There are lots of “Law Society’s, in several countries around the world.
The complaint is just one of the 45 law society listed by wikipedia.org, including:
“Law Society of Upper Canada”
“Law Society of Kenya”
“Law Society Of British Columbia”
“Law Society Of Ireland”
“Law Society Of Alberta”
“Law Society Of Scotland”
“Law Society Of Hong Kong”
How many of these law society’s do you think the complainant sued in real courts for trademark infringement?
My guess is none.
Because the law society would get laughed out of the court room if they sued any other such society for trademark infringement in the real world.
But in the virtual world thanks to WIPO and UDRP, one group can be given clear title of the ownership of the name of an type of organization in which at least another 45 exist.
So here is my first nomination for the UDRP Wall of Shame for 2010.