This Article by Daniel Silliman was published on October 03, 2008 in Clayton News Daily- Online

A new Atlanta Law Firm won its first case, defending the owner of a dormant web site against claims of trademark infringement.

“We have the ability to take on fairly complex litigation and go against the big guns,” said Latif Oduola-Owoo, one of the three attorneys who left King & Spalding to start Essentia Legal in a mall storefront on Camp Creek Parkway.

The three attorneys, Oduola-Owoo, Michael Mason and Robert Arrington, are corporate litigators who’ve decided to take the experience they had at the big firm and use it to represent people who normally “don’t have access to good quality lawyers.”

Their first case after hanging out the shingle in July, was defending Dwayne Marshall, the owner of the web site:  we the people.com.

Marshall, an Emory University graduate and community activist, was being sued by We The People, LLC, a legal document preparation company.  The company claimed Marshall was infringing on its trademark, and argued that he should have to surrender the web site to the company.

“We didn’t think it was fair they should be able to take the website like that,” Oduola-Owoo said.  “This is going to be a significant case, because, believe it or not, people are having their web sites taken every day.  They’re being taken by these big companies with trademark claims.

Marshall registered the domain name for his web site in the late 1990s, in an attempt to set up a political site.  He paid a designer and did some work on the project, but then put it on hold for lack of funding.  He kept the name, but “parked” the inactive site with Network Solutions.

What Marshall didn’t know, according to Oduola-Owoo, was that he’d agreed to let Network Solutions use his site for advertising.  Somewhere in the bowels of the terms of use agreement, he had signed off on “domain name monetization.”  He was paying network Solutions to host his inactive web site on its servers, and they were using it too, for advertising.

The use of Marshall’s website wouldn’t have been a problem, except the ads on wethepeople.com were for competitors of We The People, LLC, and seemed to be intended to look like the legal-document company was promoting its business rivals.  Or, that the business rivals were trying to create some confusion with the similar name.

We the People, LLC, filed a complaint of trademark infringement with the National Arbitration Forum.  Marshall hired Essentia Legal, the self described “new kids in the neighborhood,” to fight back.

“They tried to use the opportunity to seize the web site from him,” Oduola-Owoo said.  “They didn’t make him an offer, they tried to take it.  ‘We the People’ are the first three words of the constitution, so, as a politician, he sees value of this domain name [and wants to keep it].”

The three-member panel of the National Arbitration Forum decided in Marshall’s favor last month, ruling that he didn’t infringe on the trademark, and didn’t register the domain or use it in a “bad faith” attempt to cause any confusion.

The panel, in a 2 to 1 decision, found the name wethepeople.com wasn’t confusingly similar, or identical to the trademark of We The People, LLC, because the legal document company’s trademark includes a picture of the Liberty Bell.

The panel found “the domain name is neither identical nor confusingly similar.” The panel also ruled that Marshall wasn’t trying to disrupt the legal document company.  “A reasonable bystander looking at the domain name would not be confused,” according to the arbitrators’ finding. Oduola-Owoo said the first win for the College Park firm has helped them make their mark and demonstrate their model of litigation. He said the case should also serve as a warning to people who own web site domain names they’ve parked.

“If Mr. Marshall had known about the conflict in the advertising on his web site,” Oduola-Owoo said, “or had consented to it in any way, even by ignoring it and not asking to have the ads removed, he would have lost the web site.”