To Be “Your Lawyer” (and Wants the Domain Names, Too) — Firm Wants

Arbitration panel finds Parker Waichman Alonso LLP overstepping its bounds.

Fresh York law firm Parker Waichman Alonso LLP has two registered trademarks that include the term “YourLawyer”: yourlawyer.com on the principal register and YourLawyer on the supplemental register. It’s trying to make a land grab online for domains that include “YourLawyer” in them.

The law firm just lost a case at National Arbitration Forum for the domain YourLawyer.tv, which is used by a Florida law firm. From the outset it was fairly clear that Parker Waichman couldn’t prove the registrant lacked rights or legitimate interests in the domain and that it was registered and used in bad faith. It was registered ahead of Parker Waichman’s trademarks, and the respondent was clearly using it based on the general term “your lawyer”. But when the respondent asked the arbitration panel for a finding of reverse domain name hijacking, Parker Waichman got down-right feisty, responding that this request was:

“clearly outrageous” and “a personal attack upon our firm’s reputation throughout the internet community and the public at sizable to which penalties and/or sanctions ought to be considered for imposition directly against Respondent herein.”

The panel found against Park Waichman, but declined to find it guilty of reverse domain name hijacking (although it “does not consider Respondent’s accusation of reverse domain hijacking to be “outrageous” or a “personal attack”).

Parker Waichman Alonso is also going following an individual lawyer who uses the domain name arnoldpolitzer-yourlawyer.com. The case is pending.

Although the arbitrator found in favor of the respondent for UDRP claims 2 and 3, he found that YourLawyer.tv was confusingly similar to the YourLawyer.com trademark. The arbitrator stated it wouldn’t find it similar to the YourLawyer mark since that mark is on the supplemental register, but wrote:

The question, therefore, is whether the disputed domain name, yourlawyer.tv, is confusingly similar to Complainant’s registered mark, yourlawyer.com.

Although the phrase “your lawyer” is certainly descriptive of legal services, it does represent the more distinctive component of Complainant’s mark, and it is incorporated in its entirety in the disputed domain name. The addition of a top-level domain such as “.tv,” whether it represents a country code or a generic term such as “television,” does not sufficiently distinguish the domain name from the corresponding trademark.

With this reasoning, anyone who trademarks a .com domain name (or any other TLD) can claim that a another TLD is “confusingly similar”.