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.
Why?
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.
2 votes
Horrendous decision on a generic name – panelists are clearly beholden to tm interests (or at least the first one that files a case). The process is broken, though it has been apparent for a long time.
One of these days, this process will backfire on WIPO, when a major site/corporation will lose its name via UDRP.
But in the meantime, WIPO will continue to strip independents and small business owners of their rightful names, because these registrants have little to no recourse (in terms of having the resources to maintain a major legal response).
Weakening the rights of individuals in their rightful domain ownership and registration weakens the entire Internet. This is not sustainable for the health of the web.
It is really shame! But everythig is possible. This is UDRP?!
Even 3 panelists!
Yes,”There are lots of “Law Society’s, in several countries around the world”
Also Law Society generic 2 words, but they do NOT care!
Wipo (UDRP) always care about “Complainants”!..
Just imagine, If you have Law.com or Society.com and If someone go to UDRP, you have a little chance!
I mean does not matter If domain generic or not!!! Because the rules are wrong, and UDRP is not working properly.
We are investing fortune to domains, but UDRP does not care any thing.
So I suggest you, go to court, do not allow them to transfer your domain name.
I am sure, you are going to win. Then those 3 panelists think about how wrong their decision, maybe!
Best wishes.
I’m going to have to disagree here. The Trademark was registered before the domain, the business usage is similar and it is unclear from the case whether the Respondent had any other defenses except that it was “generic” and he didn’t think it would be contested. That’s really pretty weak.
Howard
I had to defend a WIPO on internet.biz against someone who owned a trademark on “internet”.
Guess I should have lost that one.
The problem is they would never strip a big company of a domain. They are after the smaller guys and even big domain owners. It’s just easier this way, right or wrong.
It’s a small world, and these judges, trademark lawyers, NAF, and WIPO people all pal around the same brethren and culture they create . They get to agree or disagree at cocktail parties, luncheons, and such about who the bad people in the world really are. It’s a great way for them to all get on the same page, so to speak. It does not matter if they are really informed or doing what is right, just so they learn how to parrot their peers and go with the flow and keep the candy mountain growing.
Like ambulance chasers, there is a growing group of trademark lawyers who are UDRP chasers. It’s about turning tricks, not going after the bad guy. It sounds to me like The Law Society was a willing participant in a dirty back door domain stealing plot. Another case of reverse domain name hijacking IMO.
Howard – millions of generic names that are not currently in use could be handed over to the first TM challenge based on this logic. Just because a name is not being used does not mean it should be forfeited. Reserving a generic name for future use is entirely legitimate, even if the registrant does not have an immediate business interest related to the term.
As I mentioned above, it is unfortunate that small independents and individuals are unfairly targeted in these decisions. The complainant would have likely balked if this had been a corporate interest, even if its business wasn’t related to the legal profession.
I agree with you, Mike, this decision is weak because “Law Society” is a generic term. However, my take on this is that UDRP panels are simply coming out more and more against parked names. They can dress this decision up any way they want to justify it, but what you basically have here (in their eyes) is a distinguished organization dating from 1831 versus a domainer sitting on a name that he doesn’t respect enough to develop. .
Again – I don’t agree with their decision, but I believe we’re going to see an escalation of similar decisions with parked names.
Horrible decision on a very generic phrase. Ouch. Scary times.
It will be the end of the world if WIPO takes away my BullShitWebsites dot com.
little wonder why Howard is not a practicing lawyer…
David
Unfortunately I agree with you but its not in accordance with the law.
With parking revenue being what it is, I think it may be better to just put a “coming soon” page up for your more valuable domains. Would a “for sale” page actually be worse than a parked page.
David, no doubt we gonna continue seeing these random decisions. One of the problems we’re facing is that very few panelist actually read or review what you submit as your response. Majority of responses are written by clerks supplied by WIPO and NAF and panelists just simply sign off and cash their checks with minimal actual work performed.
I agree with Howard. The tm existed well before the domain and the use was for the purposes of listing adverts for attorneys and legal publications. The defense was extremely weak and apparently consisted of an informal email response. If the respondent was serious he/she could have mounted a substantive defense including many of the arguments I see here in the post and comments. However, none of that was in the response and it is just silly to expect a panel to make the arguments for you.
This also brings to light a common misconception I see in the domain industry as to what is generic, what is descriptive, and what is neither. One must look at the manner in which the term is used. The mere fact that a term appears in a dictionary does not make it generic or descriptive in every use. An example is “apple” to sell apples vs “apple” to sell electronic goods (or music recording services).
“Generic” trademarks are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. There is a two-part test used to determine whether a designation is generic: (1) What is the class of goods or services at issue? and (2) Does the relevant public understand the designation primarily to refer to that class of goods or services?
A descriptive mark describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods and/or services.
Applying the above, the mark was registered for publications, etc. The domain was used for a similar purpose including attorney advertisements. The term AS USED is not generic because it was not used (as a trademark) to describe a group of attorneys. The term is not descriptive for the same reason.
So, in my opinion this is not a good candidate for a wall of shame – whereas the “dingbats.com case is.
There are too many points in the complainants favor for this case to have swung the other way, WIPO were quite right to grant the domain back to The Law Society. In my view, and overall in especially the real world, the outcome is fair due to the facts:
1. The complainant has an established web site which was created “before” the respondent’s domain was purchased.
2. The complainants business is registered with the Royal Charter first granted in 1831 and has been operating under the name “The Law Society” since 1903, further more under a TRADE MARK.
3. The respondent’s domain was simply a link directory, there was no running business, going concern, or vested interests other than basic hosting and the registration fee.
In the real world, if a company had started a recent business under the name “Law Society”, it would have probably received flack from many companies, and the respondent may have been faced with TM infringement. (The domain title is wide open)
An interesting point, the fact that the complainant has been granted the domain could open up new doors for their business, that is, if they so wanted to contest other Law Society’s “on the internet” – sounds expensive but then this “WIPO” case was fairly inexpensive!
Paul/Huw
How about the fact that 45 organization are allowed to exist, calling themselves a law society and and are doing business as a law society?
And unlike Paul example of Apple, all of these organizations are in the same business.
This widespread use for the same purpose of other organizations inside and outside the same country where the complaint does business does not show the generic nature of the domain?
Could it be the “Law Society” organization assessed that the domain
TheLawSociety was easy pickings? Knowing that the domainer would have very little defense and resources to defend himself.
The domainer was out matched. But, they also realize the other Law Society’s would be an uphill battle since the other society’s probably have available pro bono IP attorneys.
PLus, the Society establishes a track record of defending its TM with very little effort.
Domain
The .com was “easy pickings” because of the way WIPO and UDRP panels are deciding cases.
To go after any of the other law society’s they would have to do so in a real court, in the real world against real attorneys and would lose.
The domainer was not outmatched – he/she did not show up for the fight. The opinion says they provided an informal response by email merely stating that the term was generic. As noted in my prior post, almost no term would be generic regardless of the context of use.
In response to MHB, it is acceptable to be known as “The Law Society” and have a trademark for legal publications. Don’t confuse the operations of the complainant with the use they make of the asserted trademark. I am a lawyer and while I could not trademark “lawyer” for providing legal services, I could for the purposes of selling anything else.
Don’t get me wrong here. I think a good defense COULD have been mounted. However, that did not happen here and the panel was left to make a decision and – given the facts presented – it was not entirely incorrect.
little wonder why Howard is not a practicing lawyer…
@FX – You need to check your facts before you make stupid statements. I defended multiple UDRP actions in 2009 and won every one of them.
@Paul – thank you for agreeing. This case shows that Respondents think that they can avoid having their domains taken by either not responding or by sending an email. The UDRP has rules and if the Domainer Respondent chooses not to actively defend his domain under the Rules, then he loses it to an “Active” Complainant.
@Mike – Yes, there are other Law Societies which may or may not have trademarked their names, but they didn’t think of trying to get the dotcom through the UDRP. You snooze, you lose.
Hi all, I agree that this case might be decided in case of the Respondent, too. However, I totally agree to Howard in that a Respondent should defend its name to avoid loss under the UDRP. There were some recent decisions in which the Respondent defended its name, although in one case the trademark was a famous one: cohiba.com (http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-1041.html) and leyton.com (http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-1589.html). How about putting those on a UDRP Wall of Fame for 2010.
Quote –
“leyton.com http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-1589.html ”
Nice win for the IP lawyer – Stevan Lieberman.
Check the whois, folks….
could have easily been won in a us court and it did actually go before a judge but was settled out of court for a nice acceptable price. the domain owner never fought wipo as he has wasted many dollars on lawyers only to lose at wipo. this is a heads up for anyone considering fighting any arbitration body… save your money for a real court and real judge. in the end it all worked out for both parties.
note to paul keaton… it’s egg heads like you that think you understand when in fact you understand very little 🙂
long live domains!
“note to paul keaton”
“Its Me”: If you are going to call someone out (a) spell the name correctly and (b) read what they wrote. I am happy the domainer recovered something – although you never disclosed the price. I would submit that if (presumably you) had actually taken the time to put together a defense you would have garnered more during the negotiations. You don’t need an attorney to put together a defense, all of the arguments are out there and freely available. By promoting defending UDRPs I am targeting those whose domains are used by panelists to formulate rules that only favor complainants. An example of “bad” UDRP rules that came about via defaults was the entire prima facie argument whereby a complainant need only state (by allegation) the rules for legitimate interest in the negative. In the absence of a defense, the complainant’s allegations are taken as true and the domainer loses the domain (and the industry likely suffers from yet another bad decision).
The concept (as I see it) of the “Wall of Shame” is to call out panelists who in the face of clear facts and legal authority to the contrary simply miss the boat and issue a poorly analyzed decision. The “Wall of Shame” is not there to criticize a panelists for failing to do your work for you.
” Check the whois, folks…. ”
I see it hasnt changed, correct, does this mean someone we know is fighting it 😉
This is an absolutely shocking decision for a number of different reasons. I hope the original domain owner is appealing this decision, but first, he needs to sack the lawyer he used because to lose such an easy case is unforgivable.
I’d put money on it that his lawyer didn’t even research other Law Societies around the world either.
By the very definition of this judgement the judge is saying it doesn’t matter if he didn’t use the full trademarked term i.e Law Society instead of THE Law society, so by definition, this would mean The Law Society in the UK must own the singular trademarks for LAW and for SOCIETY on their own. Especially LAW because as the judge states, a percentage of people intending to visit The Law Society would probably end up on law.com or some other derivation of the word.
The judge has basically made something that is in essence extreamly simple and straight-forward into a confusing mess.
He CLEARLY had no idea how the internet works or domain names for that matter. The judge has based his judgement on the real world which still doesn’t justify it but it explains it.
Also, why on earth didn’t the domain owner host the domain in the US or somewhere else? I’m sure this would have made it impossible to bring a case against him, especially with all the other Law Society domains around the world.
One final point, for this case to be heard by the UK courts it MUST be seen as a conflict of interest due to the relationship between The Law Society and the judge. In reality, any sane and rational person could tell you that any case The Law Society brings to court in the UK could not possibily be fair ruling because no UK judge in their right mind is going to want to judge against their own regulator. This fact alone, even if the judge intends to be fair, should be seen as an unfair conflict of interest.