Legal organization denied a UDRP complaint at NAF

Pro Bono Net, Inc., a national nonprofit organization based in New York City and San Francisco, filed a complaint at the National Arbitration Forum for the domain name lawhelpny.org on May 26, 2012.  Pro Bono Net, Inc. claims to work in close partnership with nonprofit legal organizations across the United States and Canada, to increase access to justice for the millions of poor people who face legal problems every year without help from a lawyer.

Ironically Vietnamese Respondent Nhut Pham Dinh was not represented by a lawyer in these proceedings. The domain name lawhelpny.org was registered on August 2006.

Pro Bono Net, Inc. owns a trademark registration with the United States Patent and Trademark Office  (USPTO) for the mark “LAWHELP” (Registration No. 3597774 filed on July 2, 2008; registered on 31 March 2009.)  Pro Bono Net, Inc. claims first use in commerce on March 2001. Please notice the lack of space between the two words that comprise the mark. There are no other live marks for “LAWHELP” or  “LAW HELP” registered in USPTO or in the Trade Marks and Designs Registration Office of the European Union (OHIM) and there is reason for that…

The mark “LAWHELP” is registered with USPTO for “providing law related information, namely, providing information relating to legal affairs, court information, and information about social service agencies, legal aid programs and non-profit legal service providers via an on-line global computer network”. One could only guess how such a descriptive mark with no secondary meaning was allowed a USPTO registration. A descriptive mark is a term with a dictionary meaning which is used in connection with products or services directly related to that meaning. Such terms are not registrable unless it can be shown that distinctive character has been established in the term through extensive use in the marketplace. Descriptive marks are not inherently distinctive and the mark’s owner must show that the mark acquired secondary meaning in order to be entitled to protection of that mark. No trademark rights are granted to merely descriptive marks.

Pro Bono Net, Inc. owns several domain names such as: lawhelp.org (registration date: 1998) probono.net (registration date: 1998) probono.org (registration date: 1999) lawhelpny.com  (registration date: 2011) So Complainant’s lawhelpny.com was registered 5 years after Respondent registered his disputed domain name  lawhelpny.org.

Panel found that the Complainant did not establish an obvious case to support his argument that the Respondent lacked rights and legitimate interests. Respondent argued that the terms of the domain name lawhelpny.org are popular and common names, and thus, everyone is free to use these terms on the Internet. As such, the Panel found that Respondent established rights or legitimate interests in the disputed domain name under the second element of the UDRP. Panel also found that the Respondent did not register or use the domain name lawhelpny.org in bad faith. So the complaint for the domain name lawhelpny.org was denied.