Company that uses legally.co filed claim against legally.io. It previously lost a case against legally.com.
A World Intellectual Property Organization (WIPO) panel has determined that Legally Co. LLC, which operates the domain legally.co, attempted reverse domain name hijacking in a complaint against legally.io.
This marks Legally Co’s second appearance before WIPO. In 2018 it lost a dispute over legally.com, a domain that at the time was held by GoDaddy’s NameFind.
LegalVision B.V acquired legally.io in 2023 and launched a site offering legal documents in 2024. The respondent’s use of a dictionary-word domain to provide legal services was a major obstacle for Legally Co.
Legally Co argued that LegalVision offered competing services, but in 2024 the complainant narrowed its business activities to sending trademark cease-and-desist letters in the United States.
The three-member panel concluded that Legally Co failed to demonstrate that the domain registrant lacked rights or legitimate interests in the domain. The panel also found no evidence that the domain was registered or used in bad faith. Under the .io policy, a complainant must show either registration or use in bad faith; the panel found neither.
Although the respondent did not request it, the panel evaluated whether the complaint amounted to reverse domain name hijacking and identified several deficiencies in Legally Co’s case:
- Legally Co offered only bare assertions that its reputation and goodwill reached into Europe, the respondent’s principal market. Given the descriptive character of the mark, the panel said the complainant needed persuasive evidence that the mark had acquired reputation in Europe and that the respondent used “LEGALLY” other than in its descriptive sense. This was particularly important because in Europe the complainant’s protection was limited to a figurative mark.
- Legally Co knew the respondent was operating a genuine business through the website associated with the disputed domain, and the panel found the domain appropriate for that business.
- Because Legally Co was represented by an experienced intellectual property practitioner, it should have understood the need for cogent evidence demonstrating targeting of the complainant and the challenges posed by a highly descriptive mark.
- The complaint contained misleading statements about the respondent’s services, suggesting the site was used for legal document preparation—exactly the activity the respondent offers. In a later filing the complainant narrowed its claimed activities to U.S. cease-and-desist letters only, after the initial complaint had been filed.
The panel, composed of John Swinson, Sally Able, and Tony Willoughby, found these shortcomings collectively amounted to reverse domain name hijacking.
Luke Brean represented the complainant, and Motsnyi IP Group acted for the domain owner.