In what sounds more like a soap opera than an intellectual property dispute, the UDRP panelist in this week’s National Arbitration Forum (NAF) decision ordered the domain to be transferred from the respondent to the complainant, a California law firm known as Kinkle, Rodiger and Spriggs.  The firm actually owned the domain at issue here but was undergoing a rebranding effort, which involved changing its domain name to a simplified version:  However, the firm wanted to maintain the old domain since it was still used by many clients and their billing systems.

Complainant asked its IT technician, the respondent in this case, to renew the old domain, which was about to expire.  However, about that time, a small number of attorneys decided to leave the law firm and start their own practice.  Among them was an associate to whom the respondent was married.  Once this departure was announced, the firm advised respondent that his services would no longer be required, and he was let go.

Respondent’s replacement in the IT role later informed the firm’s management that the old domain had expired and was then, surprisingly, registered by the respondent after he’d left the firm.  This caused havoc with the firm’s name transition due to clients’ ongoing use of the old domain. The firm had to scramble to educate its clients to use the new domain.

Very quickly, and through the dust of IT mayhem, the firm’s management turned its infuriated gaze towards respondent, who happily offered to sell the old domain back to the firm, claiming that he had legitimately registered it after its expiration and that he “should not be prevented from the full potential investment opportunity.”  The case makes no mention of the amount asked by the respondent but it almost doesn’t matter since, once angered, lawyers’ rage can rarely be soothed by money alone. Blood must be drawn and honor must be satisfied.

After finding that the domain was confusingly similar to the law firm’s common-law trademark, the panelist turned to the question of respondent’s legitimate interest in the domain.  He found that the respondent was making no use of the domain for any purpose other than to sell it back to Complainant and was not preparing to use it in a bona fide business venture of his own.Noir and NAF

Next, the issue of bad faith was addressed and, predictably, the decision did not go well for the respondent.  Complainant directed respondent, while he was still employed, to renew its registration of the old domain, and respondent replied that he would do so.  However, upon his dismissal from the firm, he failed to inform complainant that he hadn’t carried out the request. After the domain name expired, the respondent registered it for himself.

From this pulp fiction set of circumstances, it seems apparent that respondent hatched this sordid plot the moment he was let go as revenge for his firing.  He figured he’d get back at them by making them pay for the domain but, in the end and as happens with all storybook ill-doers, respondent’s situation quickly unraveled and he was left staring at the unsympathetic face of a UDRP panelist.

The moral of the story? Law firm romances are fraught with risk, and if you want to extract money from a lawyer who’s done you wrong, get some really good dirt on them and extort them the old fashioned way!

Steve Levy

Steve Levy

Senior Advisor at FairWinds Partners
It can be difficult tackling domain name and social media infringement without the right expertise. Steve covers UDRP cases, URS cases, and all other acronyms and topics related to cybersquatting and usersquatting.
Steve Levy
Hell Hath No Fury Like An IT Technician Scorned

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