When I first saw the Legally.com UDRP filing, I thought it would be a slam dunk for GoDaddy, which is the registrant of the domain name via its NameFind portfolio company. The Legally.com UDRP decision was published today, and although the registrant prevailed, it seemed a bit closer than I would have assumed. GoDaddy was represented in this proceeding by Gerald Levine of Levine Samuel, LLP.
Legally is a generic dictionary term, and it is also the name of at least a couple of companies that use non-.com domain extensions. The complainant in this filing is a company that was established in 2015, and it uses the Legally.CO domain name for its business. NameFind reportedly acquired the Legally.com domain name in 2017 when it acquired a group of domain names from YummyNames, which is the portfolio company associated with Tucows.
There was quite a bit of discussion about whether or not the domain name was registered in bad faith. Legally is a keyword, but it is also a trademark for the complainant. Here’s an excerpt from the decision discussing this:
“Complainant provides some support for the use of its LEGALLY Mark and the scope of the likely audience for the Mark. Complainant has not, however, provided sufficient evidence in this proceeding to demonstrate the renown of the Mark more broadly, including that it is sufficiently famous, such that Respondent would likely have known of the Mark and registered it for its trademark value, as opposed to its desirability as a dictionary word.”
Domain investors should take some time to read the panelist’s thoughts in the section about whether or not the domain name was registered and used in bad faith. Despite ruling in favor of NameFind when it comes to bad faith registration, the panelist mentioned that the complainant could possibly prevail if it chose to litigate via the courts outside of the UDRP:
“The Panel’s finding on the issue of bad faith registration does not mean that Complainant lacks valid trademark rights or that Complainant’s Mark is so commonplace as to be unenforceable as a matter of trademark law. With questionable rights or legitimate interests in the Domain Name, Respondent’s continued use of the Domain Name may very well constitute trademark infringement or unfair competition. Complainant may pursue Respondent in court for infringement, where the doctrine of constructive notice should apply and Complainant may have a better chance to discover Respondent’s motives. The Panel finds only that for purposes of this Policy proceeding, Complainant has failed to establish with competent evidence that Respondent registered the Domain Name in bad faith.”
It looks like Legally.com is still listed for sale for $24,999. A legal battle could be costly for both sides and would likely far surpass this amount. I will keep an eye on the domain name to see if Legally opts to buy it.
A single panelist…. that is issue number one. Can’t always trust a sole panelist to do the right thing, and is reason why you should always opt for a 3-member panel.
1 panelist will cost you ?
2 panelist will cost you?
3 panelist will cost you?
Even if the .com was just purchased .0000005555 a minute ago, “Trademark” was used for .co not for .com; trademarked said, leave me alone!
Here’s some information about additional costs for panelists: https://giga.law/blog/2017/8/30/beware-of-extra-fees-in-udrp-proceedings
Excellent insight here as always.