7 February 2018Print This Post

Law firm defeats global patent giant in dispute over group action domain name

URL: Complaint brought in bad faith, said panel

A law firm that set up a website to publicise a group action it is bringing against one of the world’s largest patent renewal businesses has fought off a complaint about the domain name it is using.

CPA Global alleged that the ‘cpaglobal-litigation.com’ URL set up by US firm Kobre & Kim to provide information about a potential group action against the company breached its trade mark.

Last year, Kobre & Kim’s London office and Jersey law firm Baker & Partners secured litigation finance from Bentham IMF to investigate and possibly sue CPA Global over alleged overcharging of clients for patent renewal services.

The World Intellectual Property Organization’s (WIPO) arbitration and mediation centre rejected the domain name complaint in a ruling last month, finding that CPA “launched the proceedings primarily to harass the respondent and disrupt its lawsuit”.

The centre’s administrative panel also found that it was “brought in bad faith and constitutes an abuse of the administrative proceeding”.

The firm said the decision “sets an important precedent within the intellectual property and domain name space, as websites related to class actions commonly use the disputed domain name’s format (for example, trumpuniversitylitigation.com, gmsecuritieslitigation.com and uberlawsuit.com)”.

The panel said that the disputed domain name, which wholly incorporated the CPA Global trade mark, was “confusingly similar” and the complaint succeeded on the first element of the uniform domain name resolution policy.

However, the panel did not agree that the law firm was “deliberately using the trade mark to misleadingly divert the complainant’s customers or to tarnish the reputation of the trade mark”.

It went on: “The respondent is using the disputed domain name to provide information to the public about a legitimate lawsuit against the complainant which the respondent is conducting in relation to the complainant’s alleged overcharging practices.

“Further, as the respondent submitted, internet users in the United States are accustomed to seeing terms such as ‘litigation’ used in domain names in connection with business names or trade marks to provide information about class action lawsuits.

“It is entirely clear to any visitor to the website at the disputed domain name that the respondent is not associated with the complainant (and, in fact, is involved in a lawsuit or potential lawsuit against the complainant).

“In registering and using the disputed domain name, the respondent is not attempting to mislead consumers. Any internet user who came across the respondent’s website when looking for the complainant would instantly realize their error.

“Following notice of the dispute, the respondent added a disclaimer to its website containing a link to the complainant’s website, which has made the respondent’s lack of association with the complainant even more apparent.”

The panel concluded that the law firm had “rights or legitimate interests” in the domain name, and CPA failed on the second element of the policy.

The panel added that CPA “ought to have known its complaint was doomed to fail”, since the law firm was clearly using the domain name in good faith “to promote and provide information about a legitimate service which it offers”.

By Nick Hilborne


Leave a comment

We encourage you to be part of the Litigation Futures community but please note that all comments will be moderated before posting. We draw your attention to clause 5 of the Terms and Conditions of the site, which deals with user-generated content.