26 September 2018

California State Bar loses cybersquatting dispute at ADR Forum

California’s official attorney licensing agency has lost a cybersquatting dispute after it failed to prove ownership of trademarks that it claimed could be confused with the disputed domain name.

The US-based Alternative Dispute Resolution (ADR) Forum delivered its decision against The State Bar of California, the administrative arm of the California Supreme Court responsible for overseeing the state’s legal professionals, on Monday, September 24.

At the centre of the dispute was the domain name calsb.org, registered with GoDaddy.com.

The State Bar first registered the domain name in 1996. After expiring this year, the domain name was purchased in a GoDaddy auction.

California’s official attorney licensing agency submitted a complaint to the ADR Forum last month and asked that the domain name be transferred back to it.

The State Bar relied on its trademark rights in ‘The State Bar of California’, ‘California State Bar’, and ‘CALSB’, and claimed that the disputed domain name is confusingly similar to these marks.

The licensing agency added that the respondent has no legitimate interests in the calsb.org domain name because it has no trademark rights relating to the same.

In addition, the respondent allegedly registered the domain name in bad faith and used it to send malware to internet users searching for the State Bar’s website, according to the licensing agency.

The owner of calsb.org did not respond to the complaint.

On Monday, the ADR Forum said that for a domain name to be cancelled or transferred it must be identical or confusingly similar to the complainant’s trademarks; the respondent must have no legitimate interests in the domain name; and the disputed name must have been registered and used in bad faith.

Referring to evidence submitted by California’s State Bar, the forum noted that the licensing agency “inadvertently” allowed the domain name registration for calsb.org to lapse last year.

Also, the disputed domain name was only an online presence for members and had not been available to the public since at least 2010, the ADR Forum said.

The forum went on to find that the licensing agency’s marks for ‘The State Bar of California’ and ‘California State Bar’ have “insufficient objective similarity” to the calsb.org domain name.

It accepted that ‘CALSB’ is used as an abbreviation of The State Bar of California, but said there is “no evidence at all” that the letters have been used as a trademark.

As The State Bar failed to prove common law trademark rights in ‘CALSB’, it did not prove that it owns the rights to a term which is identical or confusingly similar to the disputed domain name, the ADR Forum concluded.

The forum dismissed the complaint and ordered that the calsb.org domain name remain with the respondent.

This story was  first published on TBO.

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