Tuesday, May 26, 2009

Traverse Internet Law Federal Court Report: April 2009 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: 4/02/2009

There is a difference between a “sucks” site and “gripe” site. “Sucks” sites often have economic or commercial motivation behind them, while a legitimate “gripe” site is motivated by the honest desire of the complainant to warn the public. In this case, there was a commercial use in the form of pay-per-click advertising or other commercial links to competitors hosted on the domain name. The fact that an “investment company” in Hong Kong acquired the domain name suggests, in and of itself, an economic motivation and not an underlying desire to protect the public through the dissemination of accurate information. This is a distinction that has not yet fully been recognized by the courts. Suffice it to say, anytime you are dealing with a “sucks” site or other derogatory website attacking your business, the first analysis is determining what the motivation of the owner of the site might be. There are very often commercial motivations that are not protected by free speech considerations in “sucks” sites, although in this instance the true motivation of the owner remains to be seen.

The Plaintiff is an investment company headquartered in Hong Kong. The Defendant is an airline organized under the laws of France. The Plaintiff lost a domain name dispute arbitration decision and the registrar of “airaustralsucks.com” was ordered to transfer the domain name to the airline. The “investment company” in Hong Kong has sued to set aside this decision.

The lawsuit requests that the court declare the Plaintiff’s registration and use of the domain name are lawful, and in effect overturn the domain name dispute decision, and award costs and reasonable expenses, including attorneys’ fees. Traverse Internet Law Cross-Reference Number 1312.

FILED: 4/01/2009

Keep in mind that a registered trademark is not required for there to be trademark infringement or domain name cybersquatting. Often times the name that you might use for your business, product, or service is protected by “common law trademark” and this triggers a broad range of potential protections for you to prevent competitors from siphoning off your business.

The Plaintiff, ESPN, is the cable television holding company focused on sports entertainment. ESPN founded the “X Games”. The Defendant claims to be the largest independently owned producer of motor sports events in the country. The Defendant has been operating events across the country by the name of “Monster X Games” and has acquired the domain name “www.monsterxgames.com” which leads to the Defendant’s homepage.

The lawsuit includes a claim for trademark infringement, unfair competition, violation of the anti-cybersquatting consumer protection act, trademark dilution, California common law trademark infringement, and false advertising under California law. ESPN is requesting the issuance of a preliminary and permanent injunction prohibiting the use of this name, an award of compensatory damages, the Defendant’s profits, punitive damages, the cost of the action and reasonable attorneys’ fees. Traverse Internet Law Cross-Reference Number 1313.