Los Angeles County Bar Association v J.D. Barnett Law Offices

Claim Number: FA0011000096113


The Complainant is Los Angeles County Bar Association, Los Angeles, CA, USA ("Complainant") represented by David Weiss, Law Offices of David Weiss. The Respondent is J.D. Barnett Law Offices, Mississauga, ON, Canada ("Respondent") represented by Merle Donawa, Re/Max Apex Realty.


The domain name at issue is "", registered with Network Solutions, Inc..


The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

Edmund P. Karem as Panelist.


Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on November 21, 2000; The Forum received a hard copy of the Complaint on November 22, 2000.

On November 30, 2000, Network Solutions, Inc. confirmed by e-mail to The Forum that the domain name "" is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.

On November 30, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 20, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts, and to by e-mail.

On December 19, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Edmund P. Karem as Panelist.


The Complainant requests that the domain name be transferred from the Respondent to the Complainant.


A. Complainant

Complainant contends it is the owner of U.S. Service Mark Registration No. 2,359,281 for "SMARTLAW". The Complainant contends this mark is used in connection with Complainantís attorney referral services and legal information services. Complainant states it has used the service mark since 1994 and in interstate commerce since 1996 for attorney referral services. Complainant asserts that it has used the service mark in connection with legal information services through a predecessor in interest since 1986.

Complainant asserts Respondentís use of the domain name is in violation of its rights under its service mark and its U.S. registration and it believes that Respondentís use of the domain name is likely to cause the public to mistakenly believe Respondent and its website are sponsored by and/or connected in some way with the Complainant. Complainant asserts that the domain name has never been used by Respondent in connection with a bona fide offering of goods or services. Complainant also contends Respondentís use of the domain name is not a continuation of previous business activities nor has Respondent ever commonly been known by the domain name.

Further, Complainant asserts the domain name was registered and is being used in bad faith based on correspondence between the parties, particularly a September 18th letter from Respondentís representative soliciting an offer that Complainant purchase the domain name for $25,000.00.

B. Respondent

Respondent contends the domain name should not be considered identical or confusingly similar to Complainantís trademark or service mark because the name is a compilation of generic names and the Complainant has not produced evidence that its trademark has acquired distinctiveness or a strong secondary meaning. The burden to prove acquired distinctiveness is on the Complainant.

Respondent claims to have legitimate interest in the domain name because it is one of several names that the Respondent registered at a time when he was unaware of Complainantís use of the trademark registration or mark, SMARTLAW.

Respondent also asserts it does not and has never engaged in an attorney referral service and is simply a practitioner at law in Canada who registered certain names for legitimate purposes.

Respondent asserts that the domain name is not being used in bad faith. Respondent also asserts that the panel arbitrator must determine both that the name was registered and is being used in bad faith pursuant to a two-tier approach confirmed in World Wrestling Federation vs. Bosman (WIPO D99-0001).

Respondent also contends that the mere offer to sell a domain name does not establish bad faith. Respondent also alleges that the period of time after it registered the domain name and before Complainantís registration of its trademark is indicative that the registration was not in bad faith because Respondent was not even aware of the existence of the Complainant or its alleged common law trademark at the time of the registration.


Respondent, James Barnett, is a lawyer licensed in the Province of Ontario, Canada and was in practice from April of 1986 to July of 1998. He has been involved in consumer class actions and real estate law. In 1997, his law firm consisted of eight attorneys and thirty-five full and part-time support staff.

Mr. Barnett has never been licensed to practice in any jurisdiction other than Ontario, Canada.

During the years of his practice, Mr. Barnettís firm advertised and marketed itself aggressively. In early 1997, he became aware of the likely importance and usefulness of the Internet in terms of attracting clients and registered a series of law related domain names with the intention of creating interactive web pages for them. Mr. Barnettís goal was to have several different interactive websites to attract potential Ontario residents as clients and provide information to them. One of the names registered was, a combination of the words "smart" and "law". He registered that name together with six others on March 14, 1997, after having been informed that they had not as yet been registered. At the time of registration, Mr. Barnett had no intention of selling or renting any of the domain names.

From the end of 1997 and into 1998, Mr. Barnettís health deteriorated and he was unable to focus time and energy on the development of the websites as he had anticipated. In July of 1998, he had a breakdown in health and became medically disabled. His law firm was forced to close at the end of 1999 and at that time, he had not been able to develop the websites and a text was then inserted into each of the websites indicating that the domain name owner would consider joint ventures or the joint development of the names. In connection with that effort, appraisal values of the name and others were obtained.

Complainant is a non-profit California corporation that operates to serve members of the Los Angeles County Bar Association. Among its activities are legal information services and attorney referral services.

Complainant has used the service mark SMARTLAW since 1994 in connection with attorney referral services and since 1986, (through its predecessor in interest) in interstate commerce for providing legal information services.

In 1997, Complainant applied for registration of the mark and subsequently obtained U.S. Service Mark Registration No. 2,359,281. It currently uses the SMARTLAW mark in connection with its rendering of services on its website.

In support of its contention that Respondentís website has never been used for the bona fide offering of goods or services, it quotes from the website as follows:

"This website is currently under construction. For joint venture possibilities to develop this great domain name, write to:

Legal Domain Name Possibilities

75 Ben Machree Drive

Mississauga, Ontario

Canada, L5H 2S4

or e-mail ""

The registration of the mark SMARTLAW by the United States Patent and Trademark Office was dated June 20, 2000.

On September 8, 2000, Complainantís attorney wrote to Respondent advising of Complainants rights in the service mark SMARTLAW and demanded the transfer of the domain name to Complainant. On September 18, 2000, Respondent solicited an offer by letter suggesting a purchase price of $25,000.00. In following additional correspondence on November 1, 2000, Complainant offered $2,000.00 to purchase the domain name and in a responsive letter of November 6, 2000, Respondent rejected that offer and counter-offered with $6,000.00, enclosing an appraisal report dated July 10, 2000 regarding the value of the domain name.

The six additional domain names registered by Respondent have identical language as cited hereinabove with regard to joint venture possibilities, on their websites.


Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The Arbitrator concludes that the domain name is confusingly similar to the trademark and service mark of Complainant. is identical to SMARTLAW with the exception of the inclusion of the .com on See Technology Properties, Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000), finding that the domain name, <> is identical to the Complainantís mark, RADIO SHACK.

However, whether the identical nature of the names gives the Complainant rights requires the resolution of the issue as to whether the domain name is composed of generic terms over which Complainant can not exercise exclusive control unless it has established a strong secondary meaning. See PetWarehouse v., Inc., D 2000-0105 (WIPO April 13, 2000), finding that "pet" and "warehouse" are generic terms and therefore not subject to trademark protection. The PetWarehouse v., Inc., case determined that two generic terms taken together could achieve trademark or service mark status by achieving a sufficient level of secondary meaning in the relevant community. It also established the burden to be on the party making a claim to show distinctiveness or secondary meaning.

Here, there is no evidence that would establish that the Los Angeles County Bar Association established a sufficient level of secondary meaning. There is a question of what is the relevant community. The domain name was registered by an Ontario law firm and Los Angeles County Bar Association uses it in connection with lawyer referral and information services. There is no evidence that anyone, even within Los Angeles County, associates smartlaw with the Los Angeles Bar Association. There is also no evidence that anyone in Ontario, Canada would associate smartlaw with the Los Angeles County Bar Association. It is the determination of the Arbitrator that the Complainant has failed to show that it has achieved a secondary meaning in the use of the common terms smartlaw, as an aggregate, so as to be provided protection against Respondentís registration of the domain name prior in time to the registration of the service mark. See SOCCERPLEX, INC. vs. NBA, INC., FA 94361 (Nat. Arb. Forum May 25, 2000). The term smartlaw, a combination of two generic terms is not exclusively associated with the provision of legal services and information by the Los Angeles County Bar Association.

Rights or Legitimate Interests

The Respondent does not presently have any rights or legitimate interests in respect to the domain name. At the time that the domain name was registered, the Respondent did have rights or legitimate interests in respect to the domain name as he registered it, together with six others, for the purpose of utilizing them in connection with the operation of his law practice in Ontario, Canada. However, after he became disabled and his law practice closed, there was no existing legitimate right or interest in respect to those names and that is evidenced by the fact that on all the websites of those domain names that he registered, he posted identical language regarding joint venture possibilities to develop those names. While Respondent contends that this is evidence of use for a bona fide offering of goods or services, it in fact, is tantamount to offering the names for sale.

Registration and Use in Bad Faith

This standard requires proof both that the name was registered and is being used in bad faith. There is evidence that could lead the arbitrator to conclude that the domain name is being used in bad faith. That evidence is the attempt to sell the domain name for $25,000.00 when Respondent was in possession of an appraisal indicating a value of $5,000.00 to $7,000.00. Certainly, the offer to sell was in an amount well in excess of the documented out-of-pocket costs directly related to the domain name.

However, the domain name was not registered in bad faith. Respondentís affidavit indicates that he registered the name, along with six others, for the purpose of utilizing them to contact and obtain clients in the Ontario area and to provide information via websites to clients. That certainly is a legitimate business activity to be carried out through a website by a law firm. When the domain name was registered, Complainant had not registered its mark and Respondent had no knowledge of the use of the term SMARTLAW by the Los Angeles County Bar Association in connection with the provision of lawyer referral and information services. It was only when Respondent became disabled and unable to continue to practice law and closed his law office, that his use of the domain name could be considered to be in bad faith and thus, the conclusion of the Arbitrator is that it was not registered in bad faith.


Accordingly, it is the decision of the Arbitrator that the Complaint be dismissed.


Honorable Edmund P. Karem

State Circuit Judge (Ret.)


Dated: January 2, 2001



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