Law firm with the generic name “Outside Legal Counsel” sues Dan Rubin over OutsideLegalCounsel.com domain name.
[Update: the case was resolved.] A law firm called Outside Legal Counsel Plc has sued JustDropped.com and its owner Dan Rubin, claiming he is cybersquatting on OutsideLegalCounsel.com.
At first I thought the attorneys for the case made a mistake, as it appeared someone acting as outside general counsel (a common name for an outside law firm working on behalf of a company) mistakenly put the plaintiffs name as “Outside Legal Counsel”.
But then I realized that this is the actual name of the plaintiff.
Here’s what allegedly happened (pdf), and it’s a somewhat cautionary tale.
Outside Legal Counsel Plc went into business in 2010. At the time, OutsideLegalCounsel.com was registered by The General Counsel Group so the plaintiff in this case used two alternate domain names.
OutsideLegalCounsel.com expired in April and Rubin picked it up on the drop.
That’s when things went wrong. Michelle Rubin emailed Outside Legal Counsel Plc this note:
We own the domain name OutsideLegalCounsel.com and think it would be a great fit for your business! We are only asking $488 for the domain name which is a one time fee. This is a very low price for a targeted, often searched domain name! If you get 1 NEW CUSTOMER this name will have paid for itself immediately.
You can convert the traffic from this domain to your main website, or build the domain into a website of its own. Do not lose your chance to own this domain to one of your competitors. Domains such as this are becoming extremely expensive and will no longer be available in a few short years!
I am sending this email to a few parties I feel could put the domain to good use. Please let me know if you are interested or if you have any questions about the next step to purchase it.
I think we can all agree that $488 is a bargain for this domain and that Rubin likely purchased it for the generic nature of the name.
So here are the two lessons:
First, you’re always taking a risk if you email a company who’s name matches the domain you’re trying to sell. Even if they really have no rights to the domain, they might think they do. (It doesn’t appear that Outside Legal Counsel Plc has filed any trademarks on the name. Its complaint says “Plaintiff is the owner of the mark “Outside Legal Counsel” or alternative is Plaintiff’
s personal name that is treated and protected under law.”)
Second, if you try to sell a domain to a law firm and the name matches their company name, you’re at pretty high risk of them suing you, even if you only ask $488. It’s cheap for them and it’s in their human nature.
[Note: the original version of this article mistakenly referred to “Outside Legal Counsel Plc” as “Outside General Counsel” in multiple places. This has been corrected.]