A UDRP for the domain name LegalSupply.com has just been filed.
The domain name was first registered back in 1998.
Just for comparison sake, our company’s retail site, Mostwanteddomains.com was registered in 1999.
I just checked the USPTO and found a trademark on the term ELEGALSUPPLY.COM but that was only registered in 2008.
It will be interesting to see who filed this UDRP and what grounds they allege.
For the record the domain name does go to a parked page.
That’s all I can say for now, but it’s coming. Better sell those generics now while you still can – the FAIR Act of 2013 has already been negotiated behind closed doors, both parties signed on.
Domainers are being thrown under the proverbial bus.
Ridiculous that these are even allowed to be heard.
Even if it was registered after elegal is not legal and there are thousands of businesses that can sell into the legal space and use that name.
Pay up for it or use another name.
LegalSupplies.com was reserved in 1997 – not a live site.
@Wave of UDRP’s –
What does the FAIR Act have to do with domains ?
I’m with Brian here; how does the FAIR Act have anything to do with UDRP or domains? Even if you could separate the functions of arbitration panels out of the Federal government’s regular operations, trademark, legal challenges, and even ICANN, itself, can’t be. So, where do we get “wave of UDRPs” in 2013?
What’s more, how do both parties sign onto something when they can’t even agree on the brand of TP to use in the Capitol Building?
C’mon, dude. Really?
At the very, very least …there needs to be some basic case law established that protects Generic Terms.
Generic Terms should Not be allowed to be trademarked in any way and they should not be allowed to be contested in these “pay us some cash and we will steal the domain you want” venues.
Unfortunately, the only way that’s going to happen is for some politicians to be paid off to write these types of laws OR court cases filed and won that establish this sort of presidence.
I can confirm that this bill has been discussed in hushed tones in DC, corp lobbyists are behind it. Our firm first heard about it in 2007 and the rumormill of last week indicates that this new law will see the light of day next year.
“At the very, very least …there needs to be some basic case law established that protects Generic Terms”
The issue here is eminent domain. Owning unused beach front property that a hotel chain wants is no different than owning unused electronic beach front property. And, in order to keep UDRP Panels employed, most feel PPC is not a bonafide use – as a result new ideas, small buisiness and speculation is stiffled – but UDRP Panels have bills to pay as well – come on !!
This is what is wrong with America, we are seeing it at the core, everyone is udrp drunk, who will want to invest, and invest in anything…
Rather than paying for Legal Supply they are going to the UDRP casino, and taking a spin on the roulette wheel.
elegalsupply.com picked a name that sounds like “illegal supply”, and now that they have realized their mistake are now trying to get legalsupplies.com by doing something that, should be illegal. 🙂 The joke is on them.
UDRP lawyers will all get rich at this rate.
The issue here is eminent domain. Owning unused beach front property that a hotel chain wants is no different than owning unused electronic beach front property.
——————
And per Kelo v New London, that hotel can take your private property away, so long as your local city commission agrees it’s for ‘the common good’.
Or, per ongoing cases like United States v. 434 Main Street, the local authorities will simply get the Feds to go for civil forfeiture on various pretexts, then split the proceeds from your property between themselves and the Federal Government.
The trend in the US towards INsecuring property rights over the past 40 years has been terrifying.
“And per Kelo v New London….”
A little OT, but it’s worth pointing out that Kelo, like Citizen’s United, is much broader in the public’s perception of it, than in actual fact. The issue in Kelo was whether the state law in question, authorizing taking for public/private development ventures, was unconstitutional. As it turns out, the Kelo decision is only relevant to a handful of states whose ED laws had specifically authorized that kind of taking in the first place. Most states did not, and fewer states do now. The problem was with the state law in question, and that is a set up for tension between the “state’s rights”/”limited government” axis, when this kind of case arrives in a federal court.
(Likewise the actual scope of Citizen’s United is outstandingly mundane in the scale of things, and is another example of an SC ruling that has become more of a political hobby horse than anything else. If a media work, which was at issue there, is treated as an in-kind political contribution, then we might as well shut down a good deal of the press during elections.)
Ez
Just to be clear as I said in the post the name of the complainant hasn’t been posted yet, I’m just guessing that’s its the folks at elegalsupply as that is the only trademark I could find in the US close to the term.
Michael,
thanks. That was my bad. I misread. Thanks for clarifying that. I take back the comment. I do not know who it is either. Feel free to remove it.
Ez
NP
Using UDRPs to acquire domains is comparable to getting laid. You never know what you’ll get until you ask! Or demand…in the case of all these new UDRPs.
@ IP Law
Can you help clarify how the new law might impact generic terms? Is there anyone we can write to about this?
I don’t see how the Fair Act applies here but here is the law so everyone can read it:
An Act
To provide a process for identifying the functions of the Federal Government that are not inherently governmental functions, and for other purposes. <>
Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled, <>
SECTION 1. SHORT TITLE.
This Act may be cited as the “Federal Activities Inventory Reform Act of 1998”.
SEC. 2. <> ANNUAL LISTS OF GOVERNMENT ACTIVITIES NOT INHERENTLY GOVERNMENTAL IN NATURE.
(a) <> Lists Required.–Not later than the end of the third quarter of each fiscal year, the head of each executive agency shall submit to the Director of the Office of Management and Budget a list of activities performed by Federal Government sources for the executive agency that, in the judgment of the head of the executive agency, are not inherently governmental functions. The entry for an activity on the list shall include the following:
(1) The fiscal year for which the activity first appeared on a list prepared under this section.
(2) The number of full-time employees (or its equivalent) that are necessary for the performance of the activity by a Federal Government source.
(3) The name of a Federal Government employee responsible for the activity from whom additional information about the activity may be obtained.
(b) OMB Review and Consultation.–The Director of the Office of Management and Budget shall review the executive agency’s list for a fiscal year and consult with the head of the executive agency regarding the content of the final list for that fiscal year.
(c) Public Availability of Lists.–
(1) Publication.–Upon the completion of the review and consultation regarding a list of an executive agency–
(A) the head of the executive agency shall promptly transmit a copy of the list to Congress and make the list available to the public; and
(B) <> the Director of the Office of Management and Budget shall promptly publish in the Federal Register a notice that the list is available to the public.
(2) Changes.–If the list changes after the publication of the notice as a result of the resolution of a challenge under section 3, the head of the executive agency shall promptly–
(A) make each such change available to the public and transmit a copy of the change to Congress; and
[[Page 112 STAT. 2383]]
(B) <> publish in the Federal Register a notice that the change is available to the public.
(d) Competition Required.–Within a reasonable time after the date on which a notice of the public availability of a list is published under subsection (c), the head of the executive agency concerned shall review the activities on the list. Each time that the head of the executive agency considers contracting with a private sector source for the performance of such an activity, the head of the executive agency shall use a competitive process to select the source (except as may otherwise be provided in a law other than this Act, an Executive order, regulations, or any executive branch circular setting forth requirements or guidance that is issued by competent executive authority). The Director of the Office of Management and Budget shall issue guidance for the administration of this subsection.
(e) Realistic and Fair Cost Comparisons.–For the purpose of determining whether to contract with a source in the private sector for the performance of an executive agency activity on the list on the basis of a comparison of the costs of procuring services from such a source with the costs of performing that activity by the executive agency, the head of the executive agency shall ensure that all costs (including the costs of quality assurance, technical monitoring of the performance of such function, liability insurance, employee retirement and disability benefits, and all other overhead costs) are considered and that the costs considered are realistic and fair.
SEC. 3. CHALLENGES TO THE LIST.
(a) Challenge Authorized.–An interested party may submit to an executive agency a challenge of an omission of a particular activity from, or an inclusion of a particular activity on, a list for which a notice of public availability has been published under section 2.
(b) Interested Party Defined.–For the purposes of this section, the term “interested party”, with respect to an activity referred to in subsection (a), means the following:
(1) A private sector source that–
(A) is an actual or prospective offeror for any contract, or other form of agreement, to perform the activity; and
(B) has a direct economic interest in performing the activity that would be adversely affected by a determination not to procure the performance of the activity from a private sector source.
(2) A representative of any business or professional association that includes within its membership private sector sources referred to in paragraph (1).
(3) An officer or employee of an organization within an executive agency that is an actual or prospective offeror to perform the activity.
(4) The head of any labor organization referred to in section 7103(a)(4) of title 5, United States Code, that includes within its membership officers or employees of an organization referred to in paragraph (3).
(c) Time for Submission.–A challenge to a list shall be submitted to the executive agency concerned within 30 days after the publication of the notice of the public availability of the list under section 2.
[[Page 112 STAT. 2384]]
(d) <> Initial Decision.–Within 28 days after an executive agency receives a challenge, an official designated by the head of the executive agency shall–
(1) decide the challenge; and
(2) transmit to the party submitting the challenge a written notification of the decision together with a discussion of the rationale for the decision and an explanation of the party’s right to appeal under subsection (e).
(e) Appeal.–
(1) <> Authorization of appeal.–An interested party may appeal an adverse decision of the official to the head of the executive agency within 10 days after receiving a notification of the decision under subsection (d).
(2) Decision on appeal.–Within 10 days after the head of an executive agency receives an appeal of a decision under paragraph (1), the head of the executive agency shall decide the appeal and transmit to the party submitting the appeal a written notification of the decision together with a discussion of the rationale for the decision.
SEC. 4. APPLICABILITY.
(a) Executive Agencies Covered.–Except as provided in subsection
(b), this Act applies to the following executive agencies:
(1) Executive department.–An executive department named in section 101 of title 5, United States Code.
(2) Military department.–A military department named in section 102 of title 5, United States Code.
(3) Independent establishment.–An independent establishment, as defined in section 104 of title 5, United States Code.
(b) Exceptions.–This Act does not apply to or with respect to the following:
(1) General accounting office.–The General Accounting Office.
(2) Government corporation.–A Government corporation or a Government controlled corporation, as those terms are defined in section 103 of title 5, United States Code.
(3) Nonappropriated funds instrumentality.–A part of a department or agency if all of the employees of that part of the department or agency are employees referred to in section 2105(c) of title 5, United States Code.
(4) Certain depot-level maintenance and repair.–Depot-level maintenance and repair of the Department of Defense (as defined in section 2460 of title 10, United States Code).
SEC. 5. DEFINITIONS.
In this Act:
(1) Federal government source.–The term “Federal Government source”, with respect to performance of an activity, means any organization within an executive agency that uses Federal Government employees to perform the activity.
(2) Inherently governmental function.–
(A) Definition.–The term “inherently governmental function” means a function that is so intimately related to the public interest as to require performance by Federal Government employees.
[[Page 112 STAT. 2385]]
(B) Functions included.–The term includes activities that require either the exercise of discretion in applying Federal Government authority or the making of value judgments in making decisions for the Federal Government, including judgments relating to monetary transactions and entitlements. An inherently governmental function involves, among other things, the interpretation and execution of the laws of the United States so as–
(i) to bind the United States to take or not to take some action by contract, policy, regulation, authorization, order, or otherwise;
(ii) to determine, protect, and advance United States economic, political, territorial, property, or other interests by military or diplomatic action, civil or criminal judicial proceedings, contract management, or otherwise;
(iii) to significantly affect the life, liberty, or property of private persons;
(iv) to commission, appoint, direct, or control officers or employees of the United States; or
(v) to exert ultimate control over the acquisition, use, or disposition of the property, real or personal, tangible or intangible, of the United States, including the collection, control, or disbursement of appropriated and other Federal funds.
(C) Functions excluded.–The term does not normally include–
(i) gathering information for or providing advice, opinions, recommendations, or ideas to Federal Government officials; or
(ii) any function that is primarily ministerial and internal in nature (such as building security, mail operations, operation of cafeterias, housekeeping, facilities operations and maintenance, warehouse operations, motor vehicle fleet management operations, or other routine electrical or mechanical services).
SEC. 6. EFFECTIVE DATE.
This Act shall take effect on October 1, 1998.
Approved October 19, 1998.
LEGISLATIVE HISTORY–S. 314:
————————————————
SENATE REPORTS: No. 105-269 (Comm. on Governmental Affairs).
CONGRESSIONAL RECORD, Vol. 144 (1998):
July 30, considered and passed Senate.
Oct. 5, considered and passed House.
@Nadia,
I’m no lawyer, but it appears to me after reading the above message that generic terms that are just parked might now be more susceptible to losing the UDRP battle. If true, bad news.
Actually, there are. But just as trademarks don’t necessarily have an absolute, exclusive claim for any and all other uses of the mark, generic terms don’t make them generic in every other context.
Heh, better make sure you don’t use any of those products or services using generic terms then. How else did they become such in the first place anyway?
Really not worth the time and effort
for just a mediocre name.
Just grab legal.supply when it comes out and ure good.
Hey Dave Zan.
How do you make those ‘quote’ functions?
@Tom C – it’s a WordPress code thing. I’ll have to put some spaces in between because the code will take effect.
Just type at the start of what you want to quote, then “close” it with at the end of it. So you do it something like this:
Here’s how to quote.
Again, remove any spaces between to make it
Ooops, I knew it. Just start your paragraph with
type a “left arrow”blockquote “right arrow”
where left/right arrow are the symbols above comma and period, respectively, on a standard keyboard. Then, past in the quote and end with the same setup, but with a “/blockquote” in the brackets.
…and don’t use the “quote marks” I did, that was just to show you what’s in there.
Not sure about WP shortcuts, but that works… always is a bugger trying to explain HTML on a plateform that actually uses the commands that you want to show… lol
FAIR Act negotiated for introduction in 2013? That will make generic domains more liable to be targeted in UDRPs?What???Seems like anonymous FUD.
Let’s make a few things clear:
-Nobody negotiates in this Congress for legislation to be introduced in the next, and no commitments made now would be binding next year.
-The odds of a major Internet trademark law change being negotiated in DC and no word leaking out is close to zero.
-U.S. law has no impact on UDRP standards (but can affect appeals from UDRP or litigation brought as a substitute for a UDRP).
Would some trademark interests like to amend the Anti-Cybersquatting Act to reduce their burden of proof, increase monetary penalties, and possibly add criminal penalties? Quite possibly, but getting such a bill introduced, much less enacted, is a long process. The same groups who were concerned by and protested SOPA would likely have a strong interest in this as well. (BTW, leaders of both parties were signed off on PIPA & SOPA as well, until they weren’t.)
If and when such a bill is introduced ICA will review it, analyze it, and lobby in regard to it. But for now it is nonexistent.
Thank you, Phil, for adding substance (and your actual name) to the running legal commentary. I am always amazed by people who desire anonymity, as though we’re supposed to infer some potential blowback should the ‘real’ name be used.
Amusing and puerile snippets aside, the great reality is the stream of assaults on generic domain-name investors is of grave concern to everyone with, as Schwartz would say, “skin in the game.” I hardly have anywhere near the investment of the powerhouse investors, but it’s all I have.
My career and life are staked on domains and development. In that regard, my exposure is of equal import. Indeed, when one’s very livelihood and future can be so easily attacked, the resources of time and money required to defend such an attack can cripple a small investor like me.
Imagine the danger of a coordinated series of UDRP filings against a medium or large stakeholder in this indusrty. What would happen if such a multi-pronged attack succeeded? The nightmare scenario does, in fact, awaken me some nights.
It will be interesting to watch how saveme.com plays at WIPO, and with Paul Keating’s observation that there appears to be advisory consideration provided to complainants, how is the deck already stacked against investors? For the record, we’re talking about real investors and not typosquatters or daily flippers, here.
There is enough of a history of sound rulings in favor of investors, but that history is, in my opinion, fairly negated by the bizarre decisions that have been handed up. It’s enough to write a fairy tale, but for the fact so few live happily ever after!
The respondent suprisingly lost today:
http://www.udrpsearch.com/naf/1438796
Operating a descriptive domain in a descriptive manner should always result in the respondent having legitimate rights or interests as it was in this case.
So now what’s next? A UDRP for LegalSupplies.com?
what a frekin scam, obviously extremely generic
btw, I bet “legal.supply” would be worth about nothing unless somehow google makes new algorithm for such anomalies
“obviously extremely generic” ACTUALLY
this would not be the only one such issue, there might be hundreds of such cases all over..
it is just with the bigger brands that such issues spread such vast, its an everyday story on the web and many don’t even bother to complaint.