Was the RoadLaw.com UDRP Transfer Decision Wrong?

A WIPO panel of arbitrators ordered the transfer of roadlaw.com to a US trademark owner of the words ROAD LAW. The trademark owner filed a UDRP complaint with WIPO to set the process in motion.

You can read the roadlaw.com udrp transfer decision here:

https://www.wipo.int/amc/en/domains/decisions/pdf/2023/d2023-1117.pdf

The Complainant’s trademark registration for ROAD LAW is US Reg. No. 2340265. The trademark registration covers the services listed as:

Legal services in the nature of defense services to commercial and/or non-commercial drivers for traffic violations arising under Federal and/or state traffic laws

ROAD LAW is US Reg. No. 2340265

• Application Filing Date: Oct. 15, 1998
• Use in Commerce: Jun. 01, 1998
• Owner Name: TRUCKERS CHOICE SERVICES, INC.

A. Domain Name is Identical or Confusingly Similar to Trademark

This first element under the Policy functions in effect as a standing requirement. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and second, whether the disputed domain name is identical or confusingly similar to that mark.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the ROAD LAW mark by providing evidence of its trademark registrations.

The disputed domain name incorporates the ROAD LAW mark in its entirety. This is sufficient for showing confusing similarity. Accordingly, the Complainant has established this first element under the Policy.

Legitimate Interests in using Road Law

The problem is that road Law is a niche area of legal practice that some advertise as CDL Attorneys or trucking attorneys; road law is arguably a generic term.

The panel admitted that the disputed domain name is highly descriptive, saying:

The Panel acknowledges the Respondent’s argument that the disputed domain name is highly descriptive, incorporating the term “road law,” and that this thereby affects the Respondent’s asserted rights and legitimate interests in the disputed domain name. The parties dispute whether “road law” is a commonly used term in the Respondent’s line of business. But the Panel need not delve too deeply into the issue. The Complainant has provided evidence—apparently uncontroverted—of its longstanding use and registration of the ROAD LAW trademark.

The roadlaw.com domain name was forwarded to the domain owner’s main website https://driverslegalplan.com/

Before filing the UDRP complaint, the Complainant had been using roadlaw.net and truckerschoice.org

RoadLaw Domains sale reports:

Domain	Price	Date	Venue
broadlaw.com	717 USD	2021-04-11	NameJet
roadlawyers.com	113 USD	2017-09-23	GoDaddy
roadlawyers.com	647 USD	2016-09-23	GoDaddy

Current DNS For roadlaw.com

ns39.domaincontrol.com
ns40.domaincontrol.com

roadlaw.com Domain History August 2023

Domain name registration and hosting history for roadlaw.com from 2000 to present. This record is based on the nameserver (DNS) history of the domain name.

The domain term ‘roadlaw‘ is, as of 01 August 2023, registered in 4 TLDs.
HosterStats Domain Rank: 290