TheDomains.com digs up a recent case involving the 811 phone number that has a strong claim to a place on the 2009 Wall of Shame.   The 811 number was established to reduce the risk that excavation operations will dig up buried utility wires, pipes or other important items that are best left underground.

The domains in question are alabama811.com, al811.com, la811.com, louisiana811.com, tennessee811.com, tenn811.com, and tn811.com.

A group called the ‘Common Ground Alliance’ has a design mark for ‘811′ that shows a shovel digging into the ground.     But the complainants are not the trademark holder, nor do they claim any connection to the trademark holder.   The Complainants are groups within each state assigned to operate the 811 number.

The sole panelist Lyon finds that the 811 operators have common law rights to the ‘811′ mark even though the Common Ground Alliance has pre-existing trademark rights to ‘811′ – and the Complainants’ services weren’t yet operational.   It’s hard to find common law rights based on use when there isn’t use yet – but Lyon managed to come to this conclusion.

Lyon also finds bad faith use even though the Registrant made no use of the domain.   The only use was a standard “Under Construction” page provided by the registrar which the Registrant would not have benefited from.

Lyon finds that the Complainants have common law rights for a similar use in a mark that someone else owns.   Lyon then orders the transfer of the domains – not to the owner of the registered trademark – but to the groups that don’t have the trademark.

Hard to make sense of this one unless one assumes that Lyon started from a desire not to have any domains related to this public service in private hands and advanced any tenuous reasons he could in support of this conclusion.

Detailed write-up at TheDomains.com