Friday, January 9, 2009

Traverse Internet Law Federal Court Report: December 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.


GIGI’S CUPCAKES, INC. AND GINA BUTLER v. GIGI’S CUPCAKES, LLC
MIDDLE DISCTRICT OF TENNESSEE (NASHVILLE)
3:08-CV-01182
FILED: 12/10/2008

Once again two companies operating in different states end up with conflicting business names, which happens often when “trademark clearance” for the use of a name has not been obtained from legal counsel. The interesting thing about this case is that both of the companies have registered trademarks. The Plaintiff’s mark is in “Gigi’s Cupcakes”, and the Defendant’s registered trademark is “Gigi’s”. Make sure that you get legal “clearance” to use a business, product, or service name to identify your goods or services.

Gigi’s Cupcakes, Inc. is a Tennessee corporation. Gigi’s Cupcakes, LLC is a New Jersey corporation. Both the Plaintiff and the Defendant apparently hold similar registered trademarks with the United States Patent and Trademark Office. The Plaintiff is suing the Defendant due to the Defendant’s registration and use of the “gigiscupcakes.com” domain name.

The Plaintiff has brought this action under the Federal Cybersquatting Act and is requesting the entry of preliminary and permanent injunctions requiring the Defendant to transfer the domain name to the Plaintiff, an award of damages, including loss profits, statutory damages of up to $100,000.00 for the domain name, and a recovery of costs and reasonable attorneys’ fees. Traverse Internet Law Cross-Reference Number 1259.


GRANITE GAMING GROUP II, LLC v. BARON LOMBARDO
DISTRICT OF NEVADA (LAS VEGAS)
2:08-CV-01701
FILED: 12/4/2008

The lawsuit doesn’t describe what use the Defendant is making of the domain name. Since it appears it was acquired back in the mid 1990s in good faith, the issue will be whether the domain name is being used in bad faith today. Merely holding a domain name passively may, or may not, constitute bad faith use under the Anti-Cybersquatting Act. If you own domain names, and you do not even have the domain name parked, but are merely holding it “passively”, there may still be liability. Keep in mind that damages are up to $100,000.00 per domain name for violation of the Federal Anti-Cybersquatting Act.

The Plaintiff owns the “Girls of Glitter Gulch” gentleman’s club in Las Vegas, Nevada, and holds a state registered trademark in the name. The Defendant is alleged to have acquired the domain name in 1996 on Plaintiff’s, or its predecessor’s, behalf. The Defendant then built a website but the website was taken down in July, 1998. Since that time the Defendant has refused to transfer the domain name to the Plaintiff.

The lawsuit includes counts for cybersquatting, state trademark infringement, common law trademark infringement, and conversion. The relief requested includes the entry of a preliminary and permanent injunction, and a monetary award of compensatory, consequential, statutory, exemplary, and punitive damages, an award of interest, costs and attorneys’ fees, and other relief. Traverse Internet Law Cross-Reference Number 1260.