LAWFINDERS mark owner loses 'lawfinder.com' dispute
In Lawfinders Associates Inc v Ultimate Search, a World Intellectual Property Organization (WIPO) panel has refused to order the transfer of 'lawfinder.com' to the complainant. It held that the respondent, Hong Kong-based Ultimate Search, had not registered or used it in bad faith.
Lawfinders Associates Inc's complaint was based on the fact that the operative part of Ultimate Search's domain name was just one letter different from its LAWFINDERS trademark, which it had used over the previous 20 years for its legal research and litigation support services. Maintaining that Ultimate Search had no entitlement to use the 'lawfinder.com' domain name since it only provided portals to other websites, Lawfinders furnished evidence of actual confusion on the part of its clients and argued that Ultimate Search had registered the disputed domain name in bad faith. Ultimate Search denied bad faith and argued that the mere fact that internet users were confused did not of itself confer any exclusive rights in the use of common words such as 'law' and 'finder'. Additionally, it asserted that it was not involved in the resale of registered domain names and that it derived an income stream from the commercial use of its website.
The three-member WIPO panel dismissed Lawfinders' complaint. It held that the domain name was comprised of generic or descriptive terms. Thus, Ultimate Search was within its rights in carrying on commercial activity under the 'lawfinder.com' website. In the absence of any positive evidence of bad faith, none would be presumed. The panel, however, dismissed Ultimate Search's claim of reverse domain name hijacking, reasoning that Lawfinders had not made its complaint in bad faith.
Jeremy Phillips, Slaughter and May, London
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