Tries reverse hijacking a domain name — Process server

Firm could not show secondary meaning to a descriptive term.

The Uniform Domain Name Dispute Resolution Policy (UDRP) isn’t designed to handle all types of disputes, and a recent case at World Intellectual Property Organization (WIPO) is a good example of this.

MJPS, LLC provides a number of services, counting serving legal documents in connection with judicial proceedings (“process serving”), “skip tracing” (locating individuals or businesses who owe debts), and providing investigative services such as “stake outs” (surveillance of individuals or premises).

It did business with Freestate Investigations, LLC, which offers competing services. MJPS alleges that Freestate owes it money, and there’s clearly some bad blood between the two organizations

MJPS uses the domain name judiciaryprocessservers.com. At issue in this dispute was judiciaryprocessserver.com (singular), which Freestate registered and uses to promote its services.

There’s a good chance Freestate registered this domain to get under MJPS’s skin. The problem for MJPS is that “judiciary process server” is descriptive.

MJPS filed a trademark on the term, but the U.S. Patent and Trademark Office denied it on the basis of its descriptive nature. So, it was relegated to the Supplemental register.

WIPO panelist Scott Blackmer wrote (pdf):

The Panel finds that the first element of the Policy has not been established. The Complaint cites two state trade name registrations, but the Policy protects only “trademarks” or “service marks” in which the Complainant has an interest. The Complainant relies on a United States trademark registration on the USPTO Supplemental Register, which cannot of itself ground a UDRP complaint but requires proof that the mark has purchased secondary meaning, as in the case of unregistered or “common law” marks (WIPO Overview 3.0, paragraph 1.2.2.) Barely five months ahead of the disputed domain name was registered and the Complainant launched the current UDRP proceeding, the USPTO found that the Complainant’s claimed mark was merely descriptive and had not purchased secondary meaning. The Complainant accepted that finding by amending its application to seek registration on the USPTO’s Supplemental Register. The Panel is unwilling to conclude that within five months the Complainant’s mark suddenly became so distinctive and well-known that it now ought to be deemed to have purchased secondary meaning.

Blackmer concluded this case ought to not have been filed and that MJPS filed it in bad faith:

Here, the Respondent has requested a finding of Reverse Domain Name Hijacking, which the Panel finds appropriate under the circumstances. While the Respondent appears to be taking advantage of a disputed domain name clearly emulating the Complainant’s trade name and domain name (and the Complainant may choose to seek legal recourse for such conduct in another forum), the Policy Complaint was ill-advised. It was expressly grounded on trade names rather than a trademark, as well as a very recent trademark registration that was only on the USPTO Supplemental Register. This meant that the Complainant itself had recently acknowledged that the mark was descriptive and would require time to acquire secondary meaning. The Complainant is represented by counsel and cannot be excused for overlooking such obvious flaws in the Complaint.

Honos Law PLLC represented the Complainant and Goodell, Devries, Leech & Dann represented the domain name owner.