Panel rules against company claiming rights to LegalAdvice.org.
A company called Capitalism, Inc. didn’t quite get the legal advice it needed in a recent UDRP case.
The company asked a National Arbitration Forum panel to give it the domain name LegalAdvice.org.
No such luck, the panel ruled.
After all, it’s merely a descriptive term. Capitalism, Inc does have a trademark on the term, but not in the class of legal services.
The terms of the
domain name are common and descriptive, when applied to the use employed by Respondent—the rendering of “legal advice†to browsers. Had Complainant attempted to register LEGAL ADVICE in International Class 45, for example, which includes legal services, it seems very doubtful that it would have issued. Rather, Complainant’s use of the mark is unusual when describing mortgage and job finding related services and can therefore uniquely identify the source. In the field of legal services, Complainant’s mark has no such power. Therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. The terms of the disputed domain name are actually descriptive of the services offered at the website to which it resolves.
UDRP panelist James A. Carmody wimped out on finding reverse domain name hijacking, though. He cited Capitalism, Inc’s trademark as enough reason to not find RDNH.
OK, commence “capitalism” jokes about buying domain now…
Gnanes says
Nice to hear about this outcome. Victory for the domainer. 🙂
Trico says
“Some legal advice: LegalAdvice.org is generic ”
Andrew,
Do I really need to remind you that you are NOT a lawyer and should not be rendering “Some legal advice” in this public forum.
🙂
UDRPtalk says
LegalAdvice.com was also UDRP’d which was withdrawn:
http://www.udrpsearch.com/naf/1364561
Acro says
Apparently both complainant and respondent are DNF members: http://www.dnforum.com/f617/legaladvice-dot-org-thread-471325.html
Yury says
I am the respondent in this case. Complainant actually took screenshots of that specific thread and attached it in his additional documents attempting to prove that I was hiding information by deleting my original post. The only thing that post said was that I acquired legaladvice.org, which anyone can tell by just looking at the category the post is in.
Flat Fee UDRP says
There was an agreement regarding legaladvice.com which is why the UDRP was withdrawn. I tried contacting the attorneys for both sides but they were both mum.. apparently there was some type of non-disclosure agreement in there.
Lionel Hutz says
Pretty good outcome. Logical reasoning by the panelist. I don’t understand why he did not pursue the reverse domain name hijacking claim… seems like a UDRP panelist needs to step up to the plate and slap these frivolous claims causing heartburn to us domain owners.
steve says
I have my generic site, http://wordunscrambler.com ,
bought from Mr. Big. He seems to own every domain. I know I am no lawyer but why should I have to pay for a lawyer before I even buy a domain…
That would be awful to have to give up a domain that seems so generic.
With laws changing so much one starts to wonder how we stop these trademark idiots from bringing losing lawsuits.
Steve Jones says
Pretty ridiculous that anyone thinks they are solely entitled to a generic domain like that. Glad the case turned out the way it did.
John Berryhill says
Bizarrely, the decision doesn’t even mention the most interesting aspect of the alleged mark at issue:
“Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “LEGAL ADVICE” APART FROM THE MARK AS SHOWN”
The textual component of the mark is itself disclaimed, yet it appears this wasn’t even mentioned to the panelist.
Paul Keating says
John, you are right on point. A very big miss by Respondent’s counsel. I am sure had it been referenced the panelist would have mentioned it.