Wednesday, April 7, 2010

Traverse Internet Law Federal Court Report: March 2010 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: 3/31/2010

Two of the Defendants reside in Luxembourg but this lawsuit was filed in the Federal court in Maryland. Many people think that simply because someone is overseas there is no legal remedy against alleged misconduct. Reality tells us that overseas individuals and corporations can be sued in the United States, a monetary judgment obtained, and the judgment can then be collected against third parties over which the United States has jurisdiction. Many companies and individuals from all around the world use Google AdSense to carry advertising. The entities are paid by Google, a U.S. Corporation. It doesn’t take much imagination to see how the payments from Google could be “garnished” through legal process issued in just about any state. In other words, if you have a monetary judgment against a foreign entity, you can get paid what you are due from parties subject to United States jurisdiction.

Games Workshop Limited is a United Kingdom Corporation and claims a registered trademark in “Warhammer” under which it sells games, models, parts and equipment for electronic games. The Defendants are alleged to be using the “” domain name to host a site which carries competing advertising.

Causes of action include trademark infringement, false designation of origin, dilution, cybersquatting, violation of Maryland Consumer Protection Act, common law unfair competition, and common law trademark infringement. The Plaintiff requests preliminary and permanent injunctive relief, transfer of the infringing domain name, statutory damages, actual damages, treble damages, and reasonable attorneys’ fees and costs. Traverse Internet Law Cross-Reference Number 1416.

FILED: 3/19/2010

If the Lego mark is famous, they can prevent virtually anyone from using it for a commercial purpose. But why wouldn’t Lego approach this Defendant and propose a license for the use of the name in exchange for a clear disclaimer and link to Lego’s own online properties? There must be more to this case than the lawsuit tells. For the online world, the important point is that famous trademarks extend across all categories of services and products. Coca-Cola can prevent you, for instance, from opening a car wash called “Coca-Cola”. Don’t use famous marks in any of your advertising. And don’t allow any of your affiliate marketers to use famous trademarks in advertising your products or services.

The Plaintiff is a Denmark business that is the licensee of the rights to distribute Lego in the United States. Defendant operates a website at “”. The Defendant is alleged to be using the domain name in connection with services of a youth-targeted community education and outreach organization.

The lawsuit alleges trademark infringement, false designation of origin, trademark dilution, cybersquatting, and deceptive trade practices. The Prayer for Relief requests immediate and permanent injunctive relief, an order requiring Defendants to cancel any and all registrations for the infringing domain names, an order requiring the domain name registrar to transfer the infringing domain names to the Plaintiff, an accounting of profits, actual damages, treble damages, costs and attorneys’ fees. Traverse Internet Law Cross-Reference Number 1414.