Thursday, September 25, 2008

Traverse Internet Law Federal Court Report: August 2008 Domain Name Dispute Lawsuits

The facts are unproven allegations of the Plaintiff and all commentary is based upon the allegations, the truthfulness and accuracy of which are likely in dispute.

FILED: 8/13/2008

The Plaintiff admits that the Defendant’s website contains “various descriptions of its business that are vague and confusing, particularly when compared to the goods and services offered by Plaintiff”. My instincts tell me that there may not be a high likelihood of confusion and the Plaintiff’s protection does not extend beyond the category of goods and services for which it is registered or operates, which appears to be mediation support and consulting services. Whenever you are launching a new website, using a new domain name, or selecting a new name for a product or service, always make sure that you get clearance so that you understand what issues might arise in your use of the name or mark.

Plaintiff alleges that is has been providing litigation support and consulting services to a nationwide client base since January of 2006. The Defendant Corporation was formed in January of 2008 and started using the same name and a nearly identical mark/logo. The Plaintiff alleges that Defendant is using its trademark protected name, “Nextpoint”, as the first metatag for Defendant’s website, which results in Google returning results that are for the Defendant’s website rather than the Plaintiff’s website.

The Plaintiff has alleged unfair competition, trademark dilution, cybersquatting, state anti-dilution, state deceptive trade practices, state deceptive business practices, common law unfair competition and common law trademark infringement. Preliminary and permanent injunctive relief is requested and the Plaintiff has set forth in great detail the exact relief it is requesting in two pages of its lawsuit. Plaintiff is also requesting an award of monetary damages including Defendant’s profits, triple compensatory damages, punitive damages, interest, attorney’s fees, costs and disbursements and whatever else the court deems proper. Traverse Internet Law Cross-Reference Number 1207.

FILED: 8/07/2008

This is a perfect example of the problems with conducting business on the web today. A small music store in Illinois decides to launch a website. It runs head-on into a small music store with an online presence in Alabama. “Andy’s Music” is not the most unique or distinctive name in the world. The case does bring home, again, the importance of “trademark clearance” and the potential ramifications if your name conflicts with another business name in the U.S. This action could have been brought on a common law trademark claim without even a federal or state registered mark, so a cursory check at the USPTO does not suffice. But this case really makes you wonder how many trademark infringement claims we’ll be seeing in the future. Once you take your biz to the web, the whole game changes.

Plaintiff registered the name “Andy’s Music” on October 2, 2007 and “Andy’s Music Online” for use in connection with musical instruments on February 26, 2008. The Plaintiff claims it has continually used the “Andy’s Music” mark since 1977, and the “Andy’s Music Online” since 2000. The Defendant is being sued because it is using “Andy’s Music”.

The lawsuit alleges federal trademark infringement and federal unfair competition. The Plaintiff asks for injunctive relief against the use of the name and related trademarks. The Plaintiff is also requesting an accounting and an award of all profits, damages, an award of prospective damages for corrective advertising, its court costs and reasonable attorney’s fees and expenses, and interest on all sums awarded. Traverse Internet Law Cross-Reference Number 1208.

FILED: 8/06/2008

What do you do when you have someone outside the U.S. cybersquatting? One answer is to file a lawsuit against the domain name either in the registrar’s or registry’s jurisdiction. The Eastern District of Virginia, Alexandria Division, is a common jurisdiction for “in rem” actions like this. The odd thing is the order to transfer the domain name to an organization other than the plaintiff.

Volkswagen alleges in this lawsuit that the case involves “quintessential domain name cyberpiracy”. The domain name “” is registered by an unknown person living in Russia who is not subject to suit in U.S. federal courts and who is hosting a commercial website at that address allegedly designed to appear as if it is operated by Volkswagen itself. The website advertises counterfeit and infringing goods, as well as Volkswagen’s direct and indirect competitors, according to the allegations in the lawsuit.

The claim for relief includes one count of “cyberpiracy”, which is really a violation of the Anti-Cybersquatting Consumer Protection Act, which is part of the U.S. trademark law. The plaintiff requests that VeriSign, the dot com registry, be ordered to change the registrar of the Defendant domain name ultimately to the Plaintiff. Traverse Internet Law Cross-Reference Number 1209.

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