Kevin Daste the owner of the domain name LegalSupply.com has appealed the UDRP decision in which the panel awarded the domain name over to eLegalSupply.com
The case was filed in the Louisiana Eastern Federal District Court.
The case is Daste v. Elegalsupply.com LLC
We called out the panel for what we thought was a bad decision and its good to see the domain owner appeal the decision.
The complaint asks the court for a declaratory judgment that Plaintiff’s registration and use of the domain name LEGALSUPPLY.COM does not constitute trademark infringement, unfair competition, or a violation of the Anti-cybersquatting Consumer Protection Act (“ACPA”), and that Plaintiff is the rightful registered name holder or registrant of the Domain Name.
This action also seeks relief for Defendant’s bad faith actions constituting common law unfair competition and unfair competition under Louisiana Unfair Trade Practices and Consumer Protection Law Sections51:1401 et seq.
Daste is a web developer who has developed several businesses and websites including without limitation: Crawfish.com, AllWebJobs.com, AdminCareers.com, RunningOfTheBulls.com, NolaMedia.com, LocalAdvertiser.com, Pralines.com, BusinessAnalytics.com, CaliforniaFunding.com, and RedBeansAndRice.com.
Mr. Daste alleges in his complaint that
“Recently, many overreaching trademark owners have sought to capitalize on this thriving market by filing baseless trademark infringement lawsuits or taking advantage of the administrative system set up by ICANN (the California corporation that administers the Domain Name System (“DNS”)), using this system to intimidate domain name holders into transferring their domain names, and swiping valuable descriptive, generic, keyword and/or dictionary domain names away from their rightful owners. These abusive lawsuits are threatening meaningful development of domain name and Internet investment and innovation.”
“Such is the situation that is before the Court in this Complaint. ”
“On February 22, 2007, Plaintiff purchased and registered the Domain Name in good faith for the sum of $685.00 by successfully participating in a public auction hosted by SnapNames.”
“Plaintiff bid against eleven (11) third party auction participants, which is a reflection of the market value of generic descriptive domain names.”
Since his original registration of the Domain Name on February 22, 2007, to the present, Plaintiff has been the continuous owner of the Domain Name and the real party of interest of the Domain Name registration.
“Thus it appears Defendant has been unconcerned with the registration of the Domain Name for at least fourteen years before initiating the UDRP against the Plaintiff.”
“Plaintiff has never offered to sell the Domain Name to Defendant, nor attempted to disrupt the Defendant’s business by confusing consumers trying to find the Defendant’s website, or otherwise.”
“Defendant made an unsolicited offer to purchase the Domain Name from Plaintiff, to which Plaintiff responded.”
“Content at the website has never been focused upon Defendant, Defendant’s business, or Defendant’s competitors, but instead has displayed and linked to a variety of information and advertising content relevant to web users who visit the site.”
“The Weak Trademark on the Supplemental Register & the Descriptive Domain Name”
“Defendant filed a trademark application for the mark “eLegalsupply.com” on January 28, 2008, and secured a registration on the Supplemental Register on August 5, 2008.”
“The Domain Name itself consists of two dictionary words “legal” and “supply.” Manifestly two generic descriptive words for the products associated with legal supply.”
“There are several active US trademark registrations, not owned by Defendant, that use the terms “Legal” and “Supply.”
“There are some 1223 active trademark records in the US Patent and Trademark Office that contain the word LEGAL, and with the exception of one, are not owned by Defendant.”
“There are some 1912 active trademark records in the US Patent and Trademark Office that contain the word SUPPLY, and with the exception of one, are not owned by Defendant.”
“There are thousands of legitimate uses of the terms LEGAL and SUPPLY together with domain names and websites owned by third parties – in addition to LEGALSUPPLY.COM, active website of similar domains not affiliated with the Defendant,include: LEGALSUPPLY.NET LEGALSUPPLYSHOP.COM, LEGALSUPPLYSPECIALTIES.COM, LEGALSUPPLYYELLOWPAGES.COM, LEGALSUPPLIES.COM, LEGALSUPPLIES.NET, LEGALSUPPLIES.ORG, LEGALSUPPLIESOFTEXAS.COM, LEGALSUPPLIESONLINE.COM, LEGALTREEOFFICESUPPLY.COM, LEGAL-FORM-SUPPLY.COM, LEGAL-OFFICE-SUPPLIES.COM, LEGALCORPSUPPLIES.COM,LEGALFORMSSUPPLIER.COM,LEGALFORMSUPPLY.COM, LEGALOFFICESUPPLIES.COM, LEGALOFFICESUPPLIES.NET, LEGALOFFICESUPPLIES.ORG,LEGALOFFICESUPPLIES.INFO, LEGALOFFICESUPPLY.COM LEGALPAPERSUPPLY.COM, LEGALSHIELDSUPPLIES.COM.
LEGALSUPPLIERS.COM, LEGALSUPPLIERSGUIDE.COM, LEGALSUPPLIERSHUB.COM, CHEAPLEGALSUPPLIES.COM, CHEAPLEGALSUPPLY .COM, CORPKITLEGALSUPPLIES.COM, DMCLEGALSUPPLY.COM, EZLEGALSUPPLY.COM, GETLEGALSUPPLIES.COM, GREENLEGALSUPPLIES.COM, ILLEGALSUPPLY.COM, INCORPLEGALSUPPLY.COM, IOWALEGALSUPPLY.COM, ONLINELEGALSUPPLY.COM, TEXASLEGALSUPPLIES.COM, USLEGALSUPPLIES.COM, WELLSLEGALSUPPLY.COM
“Moreover virtually all of Defendants competitors utilize the descriptor “Legal Supply” to generically describe their legal supply products, including OfficeDepot.com, Blumberg.com, Catalogs.com, LegalStore.com, asLegal.com, BulkOfficeSupply.com, ClassicLegal.com, CleanSweepSupply.com, HotFrog.com, CorpKit.com, Local.com, TCS-Liberty.com, Ask.com, Target.com, CheapOfficeSupplies.com, and Info.com.
“Defendant does not own and cannot rightfully claim exclusive rights to use of the common words LEGAL and SUPPLY, separate or together, as used in a domain name, trademark or otherwise. At best, Defendant’s trademark rights are weak and narrowly limited to the complete mark Elegalsupply.com.
In addition to the Declaratory Judgement the domain holder is seeking for the court to award him his reasonable attorney’s fees and costs.
(Hat tip George Kirikos)
Given the “mark” was merely supplemental, this should be an easy one for the courts to reverse the UDRP decision.
This reversal will be another black-eye for UDRP providers and for ICANN. It’s noteworthy that ICANN has refused to even review the UDRP, in order to improve due process for legitimate registrants. With UDRP providers not even under any contract with ICANN, they face no repercussions for indefensible decisions, and are thus completely unaccountable.
What is the going black market rate for a UDRP automatic win?
@Tom,
It’s tiered, based upon the estimated aftermarket value of the domain name.
Tom
I don’t agree with your bribery theory but to get the best chance to win you need a three member panel which will cost you $1,500, plus a top rate attorney which will cost around $3,500 so figure $5K for a proper defense.
Good to see the owner going down this route – wish him all the best.
This is good news but…
Registrar is Fabulous (Australia)
Domain Owner shows as address in Saint Kitts and Nevis
The UDRP Complainant must select one of those two jurisdictions for a Court venue in its Complaint.
How does Louisiana Federal Court have jurisdiction ?
The owner can ask the Louisiana court to issue an injunction against Fabulous.
@UDRPTalk –
What if the Complainant choses the location of the Owner – Saint Kitts and Nevis – for any subsequent legal action. Would the Louisiana Court still have jurisdiction ?
Hypothetically:
My domains are at eNom and I lose a UDRP where the Complainant chooses the place of the registrar (Washington State) vs. the place of the Owner (Colorado) for any subsequent action.
Can I still file my challenge in Colorado Federal Court .
This is a bigger issue than ever these days !!
Brian
You can file either where you reside or where the registrar is
Regardless of where the Complainant chooses ?
its up to the one filing the suit to pick jurisdiction
If the complainant files the suit in the wrong jurisdiction you can object
Its only going to become more mainstream – so a good point of clarification considering UDRP suggests otherwise.
Thanks Mike and George.
Do either of you have a link to the case filing?
Wonder how Daste is enjoying the taste of his own medicine. Having been named and having lost numerous domain names as a result of cybersquatting perhaps he now will have a better appreciation of intellectual property rights. I suppose he hopes that his prior history does not become the focus of this case as there is little in his past to help him. While he relies on his history of development to paint a picture of being a helpless victim anyone who investigates his past will find a checkered history littered with his own flagrant abuse of others intellectual property. The shoe is on the other foot now. While he deserves to win this one it may come at a grave cost if his history of illicit activity becomes public knowledge as opposed to being public record.
The registrar is Australia-based Fabulous.com. The registrant is based in St Kitts (likely an offshore company without physical operations in St Kitts, but still…) According to UDRP, Fabulous.com “will … implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. ”
So, why should an Australian company comply with a foreign (U.S.) court decision? To be more specific, if it is OK for Respondent to obtain the court decision in U.S., a jurisdiction which has nothing to do with this case, and send it to Fabulous, why cannot Complainant go to the court in, say, China (or any other jurisdiction which has nothing to do with this case), or even to correct jurisdiction (Australia or St Kitts) and obtain an opposite decision? What should Fabulous do if they receive two conflicting decisions from different courts?
Do I miss something here?
“You can file either where you reside or where the registrar is”
No.
The registrar is most likely to transfer the name, if the suit is not files in the Mutual Jurisdiction chosen by the Complainant in the UDRP complaint.
When the UDRP complaint is filed, the Complaint must admit to ONE of either the registrar or registrant location for the purposes of a challenge. This was originally established in the UDRP so that the registrant would have recourse at its own location or that of the registrar it chose.
4(k) of the UDRP says that the domain name will be transferred unless the registrar receives notice of a suit filed in the Mutual Jurisdiction.
Kevin has not filed in the Mutual Jurisdiction, and the name is going to be transferred by Fabulous.
There are some other wrinkles. For example the UDRP Mutual Jurisdiction rules are not, and cannot be, exclusive of any other competent jurisdiction. But for the purpose of preventing an Australian registrar from transferring this name as ordered, what he has done here is misguided.
“What should Fabulous do if they receive two conflicting decisions from different courts?”
Fabulous has no obligation relative to a suit filed in Lousiana in these circumstances.
Hi John –
Thankyou for the insight.
This has been my top issue from day one in my conversations with Registrars.
If my business is in Denver and my domains are at eNom and the Complainant selects “location of registrar” as mutual jurisdiction and I want to challenge a UDRP opinion – am I obligated to use Federal Court in Washington State – where eNom is located ?
Hmm, one of those things that doesn’t necessarily seem important or given much thought until it hits “home”.
Curious also with BrianWick’s question. I’d imagine yes, but leave it to John or any other lawyer to answer. 🙂
Mike, as usual, there are simple answers, and there are more interesting answers.
As a practical matter, if you do not want to face the possibility of having to reach that decision point, then do not use a registrar in a jurisdiction in which you do. It want to have to litigate.
The simple answer is that 4(k) is easy to read, and is written in English. And the way it has come to be applied as a practical matter is that ICANN compliance will tell the registrar to transfer the name unless a suit is filed in the Mutual Jurisdiction designated in the Complaint.
The objection raised by some at this point is “that’s not fair that the Complainant gets to choose”. That objection misses the point that it was the registrant who chose the registrar in the first place.
However, this can be a more subtly complex issue than some beelieve, but which cannot be explained simply in the context of a blog post. It would make a good conference seasion, but I’ve gotten out of the business of paying to hear myself talk.
I mean Brian, sorry.
Picking up with your stated facts, let me throw in some wrinkles.
Let’s say you are in Denver, the registrar is in Washington, and the Complainant is ALSO in Denver. Now let’s say that the Complainant selected Washington as the UDRP Mutual Jurisdiction.
Okay, so the UDRP results in a transfer. At the basic level a suit in Washington will stay transfer of the name by the registrar.
However, consider that if you filed a suit in Denver, where you certainly can get personal jurisdiction over the Complainant, and you come in with an application for an emergency temporary restraining order seeking an injunction against the Complainant from taking transfer of the name. The thing is, the registrar is only one side of the transfer. The Complainant has to take affirmative steps to receive the transfer.
That’s just one example. There are other scenarios, but they also depend on the registrar’s interpretation of certain principles, if the point is to avoid the UDRP ordered transfer.