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Recent Case Notes & Commentary

LAWYERS ! Keep Your Colleagues Close and Your Domain Names Closer

Allison Chermak Strull also known professionally as Allison Strull v. daniel sallus[1]

14 October 2020

FORUM Case Claim Number: FA2009001911689

Without seeking to further muddy the reputation of lawyers we already endure at the Christmas dinner table, this case note regards one lawyer’s disruptive appropriation of a domain consisting of the name of another.

We often see these types of cases in the contexts of celebrities and politicians, however Allison Chermak Strull also known professionally as Allison Strull v. daniel sallus shows us that it is possible to happen to anyone who is commonly known by their personal name in their professional capacity.

In this case, the Complainant was a former employee of the Respondent’s law firm. The Respondent registered two domain names consisting of the Complainant’s personal name in its entirety, and used both domains to publicise denigrating material about the Complainant , just at the time she was leaving their firm to start up by herself.

For the purposes of the UDRP Policy’s first element, a Complainant must show that they have rights in a trade or service mark to which the domain name is identical or confusingly similar.

While personal names do not automatically confer on you the right to pursue a domain name, they have been accepted as common law trademarks for UDRP purposes if they can be proved for as long as they have been used continuously “in commerce”. As Hillary Clinton can attest, it is the use in commerce (rather than general fame) which grants a personal name this unregistered trademark standing.

As the Complainant was well known by her name in her business as a lawyer, she was able to establish a common law trademark and she thus satisfied the first element.

The Respondent was clearly seeking to create a bad impression of the Complainant, using domain names in which it had no rights. Such use of a domain name is well established as not being a legitimate interest or a bona fide offering of goods or services , which would have satisfied the second element.

In fact, the Respondent’s behaviour was the epitome of UDRP Policy’s example of ‘bad faith’ per Paragraph 4(b)(iii), by plainly seeking to disrupt or harm the Complainant’s competing business. This claim is strengthened by the Respondent’s actual (rather than constructive) knowledge of the Complainant’s rights in the mark, therefore satisfying bad faith in both registration and use. Having worked with her in their firm, the Respondent must have had actual notice of her name.

As such, this undefended Complaint succeeded and the domain name was ordered to be transferred to Ms. Strull.

Other lawyers should note that there seem to be a disproportionate number of lawyers who are targeted by cyberquatters by one means or another. So, be prepared: register the name of your firm and your professional name as domain names in every variation you can think of or afford

[1] The Hon Neil Brown QC was the arbitrator in this case

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