Wednesday, May 19, 2010

Traverse Internet Law Federal Court Report: April 2010 Domain Name Dispute Lawsuits

Traverse Internet Law Disclaimer

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: 4/23/2010

We get this question all the time: “Can I buy domain names using the trademark of the company for which I am marketing its products or services?” The first step is to look at the contract you entered into and determine whether your business has agreed not to do so, or has received permission to use the trademark. Oftentimes this issue is spelled out in detail in the contract. In those instances in which there is no reference to the use of the trademark, to the extent the trademark is required to reasonably identify the goods it is likely you have permission to use the trademark in a description. Can you go out and purchase a domain name with the trademark? Generally speaking you cannot do so if your use is in “bad faith”. So the “simple” answer is that the ability to use trademarks and acquire domain names for authorized marketing of a business's products, services or goods can be very complicated.

The Plaintiff is the creator of a unique ultrasonic surgical system used by surgeons to perform ultrasound-assisted liposuction. Sound Surgical is the owner of registered trademarks in the name “VASER” and “VASER Lipo”. The Defendant is a physician with a medical practice in Florida who, according to the Plaintiff, entered into a license to use the VASER Lipo system and agreed not to use any trademark owned by the Plaintiff without prior approval. Defendant is alleged to have acquired eight domain names with the term “vaser lipo”, or close derivations of that term, and is using those domain names to direct traffic to his medical practice website.

Plaintiff alleges trademark infringement, federal unfair competition, state unfair competition, and cybersquatting. Plaintiff requests preliminary and permanent injunctive relief, transfer of all domain names registered by Defendants using Plaintiff’s marks, disgorgement of profits, cost for corrective advertising, compensatory damages, treble damages, punitive damages, court costs and attorneys’ fees. Traverse Internet Law Cross-Reference Number 1419.

FILED: 4/15/2010

Microsoft has been active for a long time in protecting its trademark by suing domain name owners who appear to be cybersquatting. Companies that don’t police the web and don’t act reasonably to enforce their rights in a trademark can either be deemed to have potentially abandoned the trademark or passively abandoned it by a failure to enforce its rights. That’s why “escalator” is no longer the name of a specific product and that is why Coke is so aggressive in making sure that when someone orders its product a Pepsi is not delivered.

Defendant Amish Shah has allegedly registered, and is using, dozens of domain names that include Microsoft’s trademark protected terms. The websites to which the domain names resolve sell emoticon products not affiliated with Microsoft.

The complaint alleges cybersquatting and contributory cybersquatting, trademark and contributory trademark infringement, false designation and contributory false designation of origin, dilution and contributory dilution, unfair business practices, Washington common law unfair competition, and Washington common law unjust enrichment. Microsoft requests that the Court issue temporary and permanent injunctive relief against Defendants, the forfeiture or cancellation of the infringing domain name, actual damages, treble damages, an award of all gains, profits, and advantages derived from the Defendants’ unlawful acts, statutory damages in the amount of $100,000 for each infringing domain name, and attorneys’ fees and costs. Traverse Internet Law Cross-Reference Number 1420.