Two paralegal service companies crossed swords over the domain LawyersService.com.
The Complainant in this case, New Jersey Lawyers Service LLC, asserted it has common law rights to the terms NEW JERSEY LAWYERS SERVICE and LAWYERS SERVICE since 1929.
The domain LawyersService.com was apparently sold on Afternic for $995 dollars in 2015. Its original registration date is in 2002.
According to the UDRP:
“Complainant was founded in 1929, and has engaged in the business of same day and overnight delivery of correspondence and packages for the New Jersey legal community since its inception. In 2005, New Jersey Lawyers Service, LLC was formed. […]
Complainant has spent millions in advertising its name and services, directed at New Jersey attorneys. Complainant has common law protection in the tradenames NEW JERSEY LAWYERS SERVICE and LAWYERS SERVICE. Most attorneys in the region refer to Complainant as “lawyers service.”
Respondent is a direct competitor of Complainant. After registering the domain name, Respondent placed an ad in the New Jersey Law Journal advertising the domain name. […]
The domain name lawyersservice.com is confusingly similar, if not identical, to New Jersey Lawyers Service.”
The Respondent, GUARANTEED SUBPOENA SERVICE, INC., denied the claims made by the Complainant, stating:
“Respondent denies the allegations made by Complainant. Respondent admits that both parties render legal services to attorneys, but Respondent’s services under the <lawyersservice.com> domain name are different than those offered by Complainant.
Complainant has failed to provide evidence of any common law rights through use of the name LAWYERS SERVICE in connection with its business; rather, the only evidence goes to NEW JERSEY LAWYERS SERVICE, LLC or NJLS. Further, no likelihood of confusion exists with the marks in which Complainant may have rights. <lawyersservice.com> relates directly to the nature of Respondent’s business.
Prior to the filing of the Complaint, effective October 30, 2015, Respondent’s principal formed a New Jersey limited liability company, “Lawyers Service LLC,” for the purpose licensing the LLC to do business under <lawyersservice.com>. On November 30, 2015, “Lawyers Service LLC” applied for a federal service mark registration for the mark THE ATTORNEY SUPERMARKET for services of providing an online directory and providing online attorney referral services, namely under <lawyersservice.com>. “
The National Arbitration Forum panel found no evidence of “common law rights” to the claimed marks, stating the following:
“The Panel agrees with Respondent that Complainant has failed to provide evidence of any common law rights through use of the tradename LAWYERS SERVICE in connection with its business; rather, the only evidence is advertising that goes to the NEW JERSEY LAWYERS SERVICE, LLC or NJLS trade names. “
For those reasons, the domain LawyersService.com was ordered to remain with the Respondent. For the full text of this UDRP decision, click here.
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