Law firms don’t usually represent themselves in legal proceedings, but — as I discuss in this video — an increasing number of firms are being targeted by cybesquatters and taking action under the UDRP, the Uniform Domain Name Dispute Resolution Policy, to enforce their rights as trademark owners.
In one recent case, the Bryan Cave law firm filed and won a UDRP complaint for a domain name that is almost identical to the firm’s own domain name and registered trademarks.
Bryan Cave, an international law firm with more than 1,400 lawyers in 31 offices around the world, filed its UDRP complaint against the registrant of the domain name was <bclplawv.com>, which is the same as Bryan Cave’s own domain name, <bclplaw.com>, except for the addition of a letter “v” at the end.
According to the UDRP decision, the registrant of the domain name used it to impersonate one of Bryan Cave’s own attorneys in an email soliciting payment for a fake invoice for legal fees.
This type of scheme seems to be a growing tactic used by cybersquatters. I know I’ve represented clients who have encountered the same thing – someone else registering a domain name and targeting their customers for payment. The real victims, of course, are the customers who might pay these invoices unaware they’re not legitimate, but ultimately it’s the trademark owners who can really do something about it by doing what Bryan Cave did in this case – filing a complaint under the UDRP.
As I explain in the video, the UDRP panel wrote:
Complainant has provided as evidence an email with the subject line “Invoice” sent by Respondent from an “@bclplawv.com” email address to a client of Complainant. In that email, Respondent attempts to impersonate an employee of Complainant and asserts, “The wire is not yet received. There was a bad check deposit into our account, Due to this bank has place a hold on our account until this issue resolved, We need to change our ban account details[.]” The Panel considers this email to constitute uncontroverted evidence that Respondent has registered and used the disputed domain name in bad faith in furtherance of Respondent’s illegal scheme to defraud Complainant’s clients.
Unfortunately, it’s impossible for a trademark owner to anticipate every potential domain name registration and how it might be used, so there’s really no way Bryan Cave could have stopped this attempted scam in advance. And when these scams prey on large law firms, that’s a pretty good sign that just about any company is a potential target.
Fortunately, filing a UDRP complaint is a very effective way for trademark owns to shut down these types of fraudulent email schemes seeking payment for fake invoices once they actually arise.
(For a link to the UDRP decision in this case, see the description in my video.)
