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11 January 2018Trademarks

CPA Global launched domain name fight to 'harass' law firm: WIPO panel

IP management company CPA Global has failed in its bid to win a domain name owned by a law firm that is considering starting a class action lawsuit against the company.

CPA Global failed to convince a panel at the World Intellectual Property Organization’s (WIPO) Arbitration and Mediation Center that the domain name, cpaglobal-litigation.com, should be transferred.

The panel said CPA Global should have known its complaint was “doomed to fail”.

CPA Global declined to comment on the case.

Kobre & Kim is the owner of the website, which provides information about a potential class action lawsuit against CPA Global over the alleged overcharging for patent renewal fees.

Kobre & Kim is conducting the investigation in conjunction with law firm Baker & Partners, litigation finance company Bentham IMF and Patent Annuity Costs, a company that consults with patent owners on how to manage patent annuities.

The firms claim that CPA Global has engaged in the “systematic and widespread overcharging of clients”.

In relation to the potential suit, CPA Global previously told WIPR: “CPA Global categorically and emphatically denies any wrongdoing in our business. The fees for our service are defined in our agreements with our customers, and we adhere to those agreements fully.”

No actions are yet underway and it is unclear whether or when one might be launched. More details on the potential lawsuit can be found here.

On December 26, the WIPO panel concluded that CPA Global had failed in its attempt to prove two of the three elements required to succeed in the Uniform Domain Name Dispute Resolution Policy proceedings.

The panel said the case had been launched “primarily to harass” Kobre & Kim and to disrupt the lawsuit.

“In this case, the complainant ought to have known its complaint was doomed to fail. The respondent was clearly using the disputed domain name in good faith to promote and provide information about a legitimate service which it offers,” noted the panel.

CPA Global complained about the domain name in October last year, alleging that it had been registered with the sole purpose of disrupting the business of a competitor and to attract users to the site by creating a likelihood of confusion.

The website claims that CPA Global has engaged in overbilling practices, and invites those who have been affected by the conduct to join the potential suit.

It went on to argue that the addition of the word litigation to the domain name is unlikely to differentiate the name from CPA Global’s trademark, and that the use of the mark in the name is to “misleadingly divert the complainant’s customers or to tarnish the reputation” of the mark.

Kobre & Kim alleged that the format of the domain name is identical to hundreds of other domain names for websites relating to class action suits, that it had a legitimate interest in informing the public about potential legal claims, and that the domain wasn’t registered to disrupt CPA Global’s business or tarnish the trademark.

While CPA Global succeeded in demonstrating that the domain name was confusingly similar to its mark, the panel disagreed with its assessment that the respondent lacked rights or legitimate interests and had registered the domain in bad faith.

“It is entirely clear to any visitor to the website at the disputed domain name that the respondent is not associated with the complainant (and, in fact, is involved in a lawsuit or potential lawsuit against the complainant),” explained the panel.

It added that CPA Global’s argument that the domain name is being used to tarnish its trademark is unconvincing and that the “mere fact” that Kobre & Kim is critical of the IP management company is not evidence of tarnishment.

On bad faith, the panel noted that the two parties were not competitors, that the site was not attempting to mislead customers, and that because CPA Global doesn’t offer services relating to litigation, the likelihood of any consumer confusion is minimal.

Although Kobre & Kim did not seek a finding of reverse domain name hijacking, the panel said it was entitled to make such a finding without a request. In concluding, the WIPO panel said the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Michael Ng, lawyer at Kobre & Kim, said that the firm viewed CPA Global’s challenge as a “gambit”, meant to keep the public from learning about the alleged overcharging.

“We were gratified that the panel took such a strong position to protect an important tool that enables lawyers to inform the public about misconduct and the availability of legal remedies,” he added.

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More on this story

Patents
29 September 2017   Law firms Kobre & Kim and Baker & Partners have joined forces with litigation finance company Bentham IMF to investigate and possibly sue IP management company CPA Global over the alleged overcharging for patent renewal services.
Patents
29 August 2017   Private equity firm Leonard Green & Partners has agreed to buy IP services provider CPA Global for £2.4 billion ($3.1 billion).