Company that uses legally.co filed claim against legally.io. It previously lost a case against legally.com.
A World Intellectual Property Organization (WIPO) panel has determined that Legally Co. LLC, which uses the domain name legally.co, attempted to reverse hijack the domain name legally.io.
This is Legally Co’s second case with WIPO. In 2018, it lost a dispute against legally.com. At the time, legally.com was registered by GoDaddy’s NameFind.
LegalVision B.V acquired legally.io in 2023 and launched a website offering legal documents in 2024.
A big hurdle for Legally Co. was that LegalVision is using the dictionary-word domain for legal services.
Legally Co. argued that LegalVision offers a competing service, but Legally Co. narrowed its focus in 2024 to only sending trademark cease & desist letters.
The three-person panel found that Legally Co. didn’t show that the Respondent lacked rights or legitimate interests in the domain. It also found that it didn’t show the domain was registered or used in bad faith. (The .io cybersquatting policy is for registered or used, not registered and used.)
Although the Respondent didn’t ask for it, the panel considered reverse domain name hijacking. It found several faults in the case:
- “…it failed to include anything beyond bare assertion to establish that its reputation and goodwill extended into Europe, the Respondent’s primary area of activity. When it filed the Complaint, it knew that the descriptive nature of its trademark called for cogent evidence to demonstrate that its trademark had acquired a reputation in Europe and that the Respondent used LEGALLY other than for its descriptive meaning. (This was of particular importance in Europe where its trademark protection is limited to a figurative mark.) The Complainant also knew that the Respondent was operating a genuine business by way of its website connected to the disputed domain name, a business for which the disputed domain name is appropriate…
- Legally Co was represented by an experienced IP practitioner and “therefore had particular reason for knowing and understanding the importance of establishing targeting of the Complainant by way of cogent evidence and the particular difficulties arising from the highly descriptive nature of the Complainant’s trademark.”
- The Complaint was partly misleading, suggesting the site was used for legal document preparation, which is what the Respondent offers. In a supplemental filing, Legally Co clarified that it narrowed its scope to U.S. C&D letters in 2024.
The panel of John Swinson, Sally Able, and Tony Willoughby found that this added up to reverse domain name hijacking.
Luke Brean represented the Complainant, and Motsnyi IP Group represented the domain owner.
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