Thelen Reid Brown Raysman & Steiner had well-laid plans to rechristen itself with the shorter and catchier “Thelen” — but the branding effort was held hostage by a lone Korean cybersquatter.
The marketing move, which launched Monday with a new logo and Web site, was threatened by the distant owner of the “thelen.com” domain name, Thelen lawyers say.
“He was a Korean gentleman who operated a number of Web sites,” said Robert Weikert, a Thelen partner who dealt with the matter. “He clearly knew it was us because he had [thelen.com] posted on his Web site, and when you clicked on it, it went to our home page at thelenreid.com!”
But if there’s one thing a Web entrepreneur should know, it’s this: Don’t register a domain name of a 600-lawyer law firm and expect nothing to happen. In short order, Weikert, a trademark and copyright lawyer, and associate Jonathan Swartz commenced proceedings against the man with the World Intellectual Property Organization, where Web domain disputes are resolved. The offense was cybersquatting, which boils down to using a domain name intending to profit from someone else’s trademark — often by selling it to the more appropriate owner.
“We did get pretty heavy-handed with him because there was a part of him — and I’m just speculating — that thought because he was not in the U.S. that maybe he was beyond our reach,” Weikert said. “The whole WIPO proceeding brought home to him that we weren’t going away.”
The squatter raised the white flag after a couple of months of back-and-forth and handed over the domain name last fall for no consideration, just as San Francisco’s Thelen Reid & Priest was merging with New York’s Brown Raysman & Steiner. The firm spent the ensuing year planning the new brand effort.
Surprisingly, it’s not the first time Thelen has faced the annoyance of a cybersquatter. Six years ago, a Texas man tried to get the firm to fork over $18,000 to buy the rights to a site he created with the handle thelanreid.com. He’d also created e-mail addresses using the misspelled firm’s name.
At the time, the cybersquatter said he was trying to promote an e-book whose lead character was a fictional private eye named “Thelan Reid.” But after Thelen filed a suit, the man gave up the domain name, said Weikert, who worked on that case.
With the domain name safe and sound, the firm is pursuing a strategy that many big firms are taking these days: shortening the long, multisurname firm name to one, easy-to-remember name — at least for conversational purposes. International giant Kirkpatrick & Lockhart Preston Gates Ellis branded itself “K&L Gates” earlier this year, for instance. Yet the longer moniker remains the firm’s official name, just as those names behind Thelen aren’t really going away, either.
The new nameplate features the longer name in smaller type sitting below the larger “Thelen” and beside the firm’s brand new logo, a blocky, yellow and gold “T.”
“The name Thelen has the advantage of being simple but distinctive, which will make it easier for the legal market to associate our messages with our firm,” firm Co-Chairman Stephen O’Neal said in a press release. “The market is already shortening our name in most media communications.”