Canadian lawyers disputed the ownership of the domain name <fertilitylawcanada.com> under the UDRP and in an arbitration decision released yesterday, the panel held that common names for areas of legal practice are generally non-distinctive and there was no secondary meaning in this case.
The Registrant (Sara Dvorkin) responded to the Complaint. The Complainant, a Canadian lawyer, Sherry Levitan, asserted trade-mark rights in FERTILITY LAW and FERTILITYLAW.CA. The panel found that the term “fertility law” is descriptive of a specific practice area of law. Furthermore, the panel found that the Complainant did not enjoy common law rights as no secondary meaning was found. Use of the domain name and PowerPoint/promotional materials was of little value to the panel in determining public awareness of the term FERTILITY LAW as a unique indicator of the Complainant’s services. Of particular interest was the Reverse Domain Name Hijacking analysis as the panel did not find the Complainant had a malicious intent, but that the Complainant “more likely than not … ill-conceived the scope of its monopoly in the expression ‘fertility law’”.