Dozier Internet Law on Domain Names

Dozier Internet Law Federal Court Report: January 2012 - Domain Name Dispute Lawsuits

2012-01-19T09:20:00.000-08:00

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.

TWO MEN AND A TRUCK/INTERNATIONAL, INC. v. SKY MOVING AND STORAGE, INC., ET AL.
SOUTHERN DISTRICT OF FLORIDA (FT. LAUDERDALE)
0:11-CV-62667-WJZ
FILED: 12/15/2011

The economic cost of getting caught cybersquatting is huge and if you are in the business of buying any domain names you need to be careful not to infringe on the trademark, either registered or common law, of potential competitors.

The Plaintiff is the largest franchised local moving company in the United States. Defendants allegedly acquired confusing domain names similar to the name used by the Plaintiff.

The lawsuit alleges infringement of federally registered trademarks, false designation of origin, unfair competition, and trademark dilution. The prayer for relief requests Defendants be enjoined from the use of infringing marks, asks for compensatory and punitive damages, costs and reasonable attorneys’ fees, and any other relief as the Court deems just and proper. Dozier Internet Law Cross Reference Number 1542.

Dozier Internet Law Federal Court Report: December 2011 - Domain Name Dispute Lawsuits

2011-12-22T10:03:00.000-08:00

Dozier 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.

A FLOWER PATCH, INC. v. JUSKA, ET AL.
SOUTHERN DISTRICT OF FLORIDA (WEST PALM BEACH)
9:11-CV-81315-KLR
FILED: 11/30/2011

The Plaintiff is suing due to its claim for “common law trademark infringement”. Given the lack of state or federal registration of the trademark it could be very difficult for this Plaintiff to prove trademark rights in such a generic phrase.

The Plaintiff is a Florida corporation and has used the term “A Flower Patch” in commerce for thirty-three years. The Defendants acquired the domain name “aflowerpatch.com” and are using it to compete against the Plaintiff.

The lawsuit alleges cybersquatting, federal trademark infringement, unfair competition, and trademark dilution. Plaintiff demands judgment against Defendants for damages, treble damages, Defendants’ profits, and attorneys’ fees and costs. Dozier Internet Law Cross Reference Number 1535.

Dozier Internet Law Federal Court Report: November 2011 - Domain Name Dispute Lawsuits

2011-11-15T12:18:00.000-08:00

Dozier 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.

ABERCROMBIE & FITCH TRADING CO. v. LIN, ET AL.
SOUTHERN DISTRICT OF FLORIDA (FT. LAUDERDALE)
0:11-CV-62338-WJZ
FILED: 10/31/2011

You should only buy domain names when you have cleared them with your legal counsel or you are adequately familiar with the laws so that you do not put you and/or your company at risk. Remember that the damages per domain name for cybersquatting are up to $100,000.

Abercrombie is engaged in the business of manufacturing and distributing clothing and related materials throughout the world. The Defendants have registered allegedly confusingly similar domain names that include the Abercrombie name in many ways.

The lawsuit alleges trademark counterfeiting and infringement, false designation of origin, and cybersquatting. Prayer for relief requests preliminary and permanent injunctive relief from use of infringing marks and domain names, all profits and damages resulting from trademark infringement and cybersquatting activities, costs and reasonable attorneys’ fees, investigative fees, and any other relief as the Court deems just and equitable. Dozier Internet Law Cross Reference Number 1534.

Dozier Internet Law Federal Court Report: October 2011 - Domain Name Dispute Lawsuits

2011-10-31T07:25:00.001-07:00

Dozier 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.

QUALITY CALIBRATION SERVICE, INC. v. QUALITY CALIBRATION SERVICES, INC.
EASTERN DISTRICT OF WISCONSIN (MILWAUKEE)
2:11-CV-00895
FILED: 9/23/2011

Make sure that your company does a complete and thorough “clearance” for any names it intends to use. Typically these types of clearances are conducted by attorneys and will provide you with adequate assurances of the risks associated with using a name.

The Plaintiff has offered calibration, repair, testing and measurement services using the “quality calibration service” trademark since 1984. It also owns a federal trademark registration for the term. The Defendant is alleged to be using the same name for its company and has acquired the domain name “qualitycalibrationservices.com”.

The lawsuit alleges trademark infringement, false designation and unfair competition. Prayer for relief requests permanent injunctive relief, an order requiring Defendant to transfer ownership of the infringing domain name, removal of infringing trademarks, compensatory and punitive damages and any other relief as the Court deems just and equitable. Dozier Internet Law Cross Reference Number 1528.

Dozier Internet Law Federal Court Report: September 2011 - Domain Name Dispute Lawsuits

2011-09-28T13:31:00.000-07:00

Dozier 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.

TRUECAR, INC. v. TRUCAR.COM
WESTERN DISTRICT OF WASHINGTON (SEATTLE)
2:11-CV-01403
FILED: 8/24/2011

This is a typical process used to obtain a domain name when dealing with a Defendant that cannot easily be reached by the U.S. Courts.

The Plaintiff brings an in rem action to obtain the domain name “Trucar.com” from the Defendant. Plaintiff alleges he has a trademark in the domain name and the Defendant is unavailable.

The lawsuit alleges a violation of the Anticybersquatting Consumer Protection Act and requests that the infringing domain name be transferred to the Plaintiff along with any further award the Court deems just and proper. Dozier Internet Law Cross Reference Number 1521.

Dozier Internet Law Federal Court Report: August 2011 - Domain Name Dispute Lawsuits

2011-08-04T12:08:00.000-07:00

Dozier 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.

SPRINKLES CUPCAKES, INC. v. PINK SPRINKLES, LCC
DISTRICT OF CONNETICUT (NEW HAVEN)
3:11-CV-01117
FILED: 7/15/2011

This is a pretty weak claim but it is fairly typical of the types of claims being asserted dealing with the Internet on a regular basis. When you do a “trademark clearance” you can determine what potential claims, if any, exist out there in commerce that could conflict with your product or business name.

The Plaintiff and Defendant are cupcake companies. The Plaintiff is a retailer in Beverly Hills and she has been featured on many television shows. The Defendant is an unrelated cupcake company that uses a name that is allegedly confusingly similar.

Sprinkles Cupcakes alleges trademark infringement, false designation or origin, cybersquatting, and unfair trade practices. Requests in the lawsuit include preliminary and permanent injunctive relief, transfer of the infringing domain name, destruction of any infringing marketing materials, maximum statutory damages, punitive damages, actual damages, attorneys’ fees and costs and any further relief the court deems proper. Dozier Internet Law Cross Reference Number 1518.

Dozier Internet Law Federal Court Report: July 2011 - Domain Name Dispute Lawsuits

2011-07-06T09:21:00.000-07:00

Dozier 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.

JON R. TOLLESFSON v. DEANN MARIE PLADSON
SOUTHEASTERN DISTRICT OF NORTH DAKOTA
3:11-CV-00062
FILED: 6/27/2011

In my opinion it is a very sleazy tactic to attack the attorney representing an adverse party in a case. Here you have a classic example of someone who is attacking the messenger. I expect you might see a counterclaim for damages coming back in this case since in the UDRP proceeding an arbitrator cannot award damages but simply transfer the domain name.

Tollefson is a CPA and the Defendant is his wife’s attorney in his divorce. He allegedly purchased the attorney’s name as a domain name and then launched an extensive exposé pointing out how his wife’s attorney was unethical. A UDRP proceeding transferred the domain name to the attorney. This suit requests that the domain name not be transferred based on free speech grounds.

The lawsuit alleges reverse domain name hijacking and requests for a judgment affirming the Plaintiff’s rightful ownership in the domain name and injunctive relief against the enforcement of the previous UDRP decision. Dozier Internet Law Federal Court Report Cross-Reference Number 1503.

LERAF, INC. d/b/a GRAFFLE, INC. v. OMNI DEVELOPMENT, INC. d/b/a THE OMNI GROUP
NORTHERN DISTRICT OF ILLINOIS (CHICAGO)
1:11-CV-04323
FILED: 6/24/2011

There are plenty of ways to transfer a domain name or hold it in escrow. This method of allowing the seller to retain effective control of the domain name until payment is made in full is obviously not a good idea.

The Plaintiff purchased a domain name for its business but a prior registrant was to continue to serve as the administrative contact until all purchase funds had been transferred to the prior registrant. The prior registrant was served with a WIPO UDRP domain name dispute, didn’t tell the purchaser, lost the domain name, took the last payment and then told the purchaser that the domain name was no longer his to transfer.

Plaintiff requests a declaratory judgment from the Court that their registration and use of the domain name in question does not violate the Lanham Act or the UDRP and the cancellation of the Defendant’s trademark in the disputed mark. Graffle prays for preliminary and permanent injunctive relief preventing Omni from interfering with Graffle’s registration and/or use of the domain name along with attorneys’ fees and costs. Dozier Internet Law Federal Court Report Cross-Reference Number 1506.

Dozier Internet Law Federal Court Report: June 2011 - Domain Name Dispute Lawsuits

2011-06-13T11:57:00.000-07:00

Dozier 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.

TERESA ILEEN CAZIER v. C. FREDERICK PAYNTER, ET AL.
WESTERN DISTRICT OF TEXAS (SAN ANTONIO)
5:11-CV-00399
FILED: 5/20/2011

As an online business you should be able to recognize the risks associated with using just about any name on the Internet today. “America’s Best Flags”, whether generic or descriptive, is very likely not trademark protectable unless it has acquired a secondary meaning in the marketplace. It very likely has not acquired that sort of meaning in the minds of the public but this again shows the extent to which businesses are attempting to protect their names, even when the names are not seemingly protectable under trademark law.

In the 1990’s the Plaintiff started a flag and flagpole retail business named “America’s Best Flags”. The Defendants are alleged to have obtained the domain name “americasbestflags.com” in May of 2006 and when the Defendants received a demand letter they acquired even more domain names that were arguably confusingly similar to the Plaintiff’s business name.

Counts alleged in the lawsuit include false designation or origin, unfair competition, common law unfair competition, and trade name infringement. The Plaintiff requests injunctive relief against the Defendants along with compensatory damages, transfer of the infringing domain names, prejudgment and post-judgment interest, exemplary damages, and attorneys’ fees and costs. Dozier Internet Law Cross-Reference Number 1494.

FACEBOOK, INC. v. TEACHBOOK.COM LLC
NORTHERN DISTRICT OF ILLINOIS (CHICAGO)
1:11-CV-03052
FILED: 5/06/2011

This case is a good example of the very subjective nature of trademark infringement. Facebook will have to conduct surveys that cost over $100,000 to establish that “Teachbook” is confusingly similar to consumers. Then Teachbook will have to pay an expert a huge sum to rebut or dispute the survey evidence. These cases are often simply a battle of finances and while most of us would believe that “Teachbook” is not confusingly similar to “Facebook” the realities of litigation will likely dictate Teachbook no longer being able to use its name.

Everyone knows what Facebook is. Teachbook is a Facebook type website designed for teachers because many schools prohibit teachers from maintaining social networking profiles on Facebook. Facebook has sued because it believes that the term “Teachbook” is confusingly similar to its name and infringes on its trademark.

Facebook alleges federal trademark infringement, federal trademark dilution, federal false designation of origin, common law trademark infringement, common law unfair competition, cybersquatting, violation of the Illinois Uniform Deceptive Trade Practices Act, and trademark dilution. The lawsuit requests preliminary and permanent injunctive relief, that the Court declare that the Teachbook trademark application void, and accounting and disbursement of revenues and profits, actual damages, treble damages, punitive damages, transfer of the teachbook.com domain name to Facebook, and costs and reasonable attorneys’ fees. Dozier Internet Law Cross-Reference Number 1495.

Dozier Internet Law Federal Court Report: May 2011 - Domain Name Dispute Lawsuits

2011-05-05T12:09:00.000-07:00

Dozier 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.

McMAHAN LAW FIRM v. RICHARD LATHAM
EASTERN DISTRICT OF TENNESSEE (CHATTANOOGA)
1:11-CV-00102
FILED: 4/20/2011

If you have been following the case reviews over the past year you will have seen this issue arise time and time again. Do not allow your web developer, web host, or employee to register your company domain name without making sure that the registrant (owner) is your business.

The Plaintiff is a law firm located in Tennessee. The Defendant was a web developer/host identified as “Plaintiff’s computer support person”. The Defendant is alleged to have purchased the law firm’s domain name and put it in his own personal name. Upon the contract ending the Defendant has demanded payment for the domain name.

The lawsuit alleges cybersquatting and tortious interference with business advantage. McMahan Law Firm requests that the Court grant temporary and permanent injunctive relief, statutory damages, transfer of the infringing domain name, costs, and attorneys’ fees. Dozier Internet Law Cross-Reference Number 1490.

Dozier Internet Law Federal Court Report: April 2011 - Domain Name Dispute Lawsuits

2011-04-21T09:29:00.000-07:00

Dozier 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.

ACUMEN ENTERPRISES INC. v. JONATHAN MARK MORGAN
NORTHERN DISTRICT OF TEXAS (DALLAS)
3:11-CV-00619
FILED: 03/28/2011

Okay, this might be a case of cybersquatting although the Defendant only used the domain name as a tool for his own job search and it does not appear to be competing commercially with the Plaintiff. But the more interesting thing about this case is that an apparently sophisticated business operating for almost 10 years apparently never thought to spend the $8.00 to register its business name as a domain name. Make sure you register your business name, and close typos of your name, so that you can avoid this type of embarrassing and financially expensive problem.

Acumen Enterprises, the Plaintiff, was formed in November 2011, and for the fiscal year ending March 31, 2010, claims total revenues of over $6 million and 50 employees. It operates by the name “Acumen Enterprises”. The Defendant is being sued for cybersquatting because on July 21, 2010 it registered the domain name “acumenenterprises.com” and this was apparently available because the Plaintiff was using “acumen-enterprises.com”.

The lawsuit includes claims for federal trademark infringement, federal unfair competition, cybersquatting, common law trademark infringement and unfair competition, tortious interference with business relationships, and common law tort of passing off. The Plaintiff requests that the court grant them extensive preliminary and permanent injunctive relief along with transfer of the infringing domain name, a judgment for $100,000 statutory damages per infringing domain name, reasonable attorneys’ fees and costs, treble damages, and any additional relief the Court deems equitable. Dozier Internet Law Cross-Reference Number 1483.

Dozier Internet Law Federal Court Report: March 2011 - Domain Name Dispute Lawsuits

2011-03-29T08:27:00.000-07:00

Dozier 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.

ABERCROMBIE & FITCH TRADING CO. v. VEKEY LI and DOES 1-10
SOUTHERN DISTRICT OF FLORIDA (FT. LAUDERDALE)
0:11-CV-60340
FILED: 2/16/2011

Faced with this type of a problem your company may decide it is better to file a lawsuit “in rem” to obtain the domain name and effectively shut-down the business. Otherwise, you will be faced with having to serve individual Defendants in China who are probably using aliases. The odds of identifying these people and getting them served are very low. The goal when faced with any cyber-squatting situation is to get the domain name out of play as quickly as possible, particularly when dealing with Defendants who appear to be in “China”, but could be Iranians operating through a Russian province, for instance.

Abercrombie distributes high quality luxury goods. The Defendants are allegedly offering for sale counterfeit Abercrombie branded products. Defendants are alleged to have acquired domain names that are almost identical to many of the Abercrombie trademarks. The Defendants are individuals and/or business entities of unknown make-up who likely reside in the People’s Republic of China.

The lawsuit includes trademark counterfeiting, trademark infringement, false designation or origin, and cyberpiracy. The prayer for relief requests preliminary and permanent injunctive relief, transfer of all infringing domain names, that subject domains be placed on registry hold status, cease of access to the Defendants’ websites, actual damages, treble damages, costs, attorneys’ fees, pre-judgment interest, and any other relief the Court deems proper. Dozier Internet Law Cross-Reference Number 1478.

Dozier Internet Law Federal Court Report: February 2011 - Domain Name Dispute Lawsuits

2011-02-22T10:44:00.000-08:00

Dozier 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.

EXTREME SPORTS DIVA, LLC v. ELIZABETH MARTTILA
WESTERN DISTRICT OF WISCONSIN (MADISON)
3:11-CV-00032
FILED: 1/14/2011

Once again you have a situation in which there is a dispute about who first used a name. This is very common since the Internet expands the marketplace of a small business in a small town so it can sell throughout the United States. All too often this large geographical area means that the small mom and pop shop in the small town bumps into another company that is using the same name for the sale of the same products or services. That is why you do trademark clearances before using a name.

The Plaintiff is a specialty apparel company that designs, markets and sells the “Sled Divas®” line of women’s and girl’s clothing and accessories. Defendants compete in at least one market segment, that being woman’s apparel in the snow-mobiling sport. Plaintiff had received demands from the Defendant to cease and desist the use of its “Sled Divas” name and now files this declaratory judgment action since it claims it was using the name first.

Plaintiff alleges violation of the Lanham Act, unfair competition, and cybersquatting. Plaintiff requests the turnover of the infringing domain name, actual damages, compensatory damages, punitive damages, and reasonable attorneys’ fees. Dozier Internet Law Cross-Reference Number 1467.

Dozier Internet Law Federal Court Report: January 2011 - Domain Name Dispute Lawsuits

2011-02-16T08:39:00.000-08:00

Dozier 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.

THE POPCORN FACTORY, INC. v. PEACE, LOVE, POPCORN, LLC and GARY PAPARELLA
NORTHERN DISTRICT OF ILLINOIS (EASTERN DIVISION)
1:10-CV-08125
FILED: 12/22/10

The party first using a trademark is often the winner in these contests. This is why “trademark clearance” is essential when selecting a name for a business because such a process identifies these types of problems in advance.

The Defendant is alleged to be using the term “Love Peace Popcorn” as its business name. Plaintiff claims it was the original user of the term and owns common law trademark rights to it. When Plaintiff received a “cease and desist” letter from the Defendant it brought this lawsuit to establish that the Defendant was the actual party infringing on its mark and not the other way around.

The Plaintiff alleges violation of the Anticybersquatting Consumer Protection Act, unfair competition, deceptive trade practices, and common law infringement. They request that Defendants’ federal registration in the mark be cancelled, permanent injunctive relief, transfer of infringing domain names, cancellation of social networking accounts using the mark, an accounting of profits, actual damages, treble damages, statutory damages, costs and attorneys’ fees. Dozier Internet Law Cross-Reference Number 1459.

Dozier Internet Law Federal Court Report: December, 2010 - Domain Name Dispute Lawsuits

2011-02-09T07:42:00.000-08:00

Dozier 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.

OASIS CHILDREN’S SERVICES, LLC v. OASIS COMMUNITY CORPORATION
SOUTHERN DISTRICT OF NEW YORK (FOLEY SQUARE)
1:10-CV-08803
FILED: 11/22/2010

Your right to acquire and use a domain name when doing business cooperatively with a third party, whether you are an affiliate marketer or a franchisee or licensee, is governed by your agreement with the owner of the trademark. Once the term of the agreement ends, i.e. your business relationship ends, you have to abandon most commercial use of the trademark. This means that if you have bought domain names you need to not only take them out of commercial use, but also recognize that if you are “parking” the domain names with no ads whatsoever you still may have the obligation to transfer those to the licensor.

Plaintiff operated summer camps in New York City and New Jersey under the trademark “Oasis”. Defendant licensed the right to use the “Oasis” mark in connection with similar after-school services offered in the New York City area. The license has expired, according to the Plaintiff, but the Defendant continues to use the name in at least two domain names.

Plaintiff alleges unfair competition, cybersquatting, copyright infringement, violation of the New York Anti-Dilution Statute, unfair competition, and breach of contract. Plaintiff requests that the Court grant preliminary and permanent injunctive relief, transfer of the infringing domain names, destruction of all infringing materials, an accounting of Defendant’s profits, compensatory damages, actual damages, punitive damages, costs, and reasonable attorneys’ fees. Dozier Internet Law Cross-Reference Number 1455.

Dozier Internet Law Federal Court Report: November, 2010 - Domain Name Dispute Lawsuits

2011-02-02T09:28:00.000-08:00

Dozier 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.

JANNA BULLOCK v. BULLOCKJANNA.COM and BULLOCK-JANNA.COM
EASTERN DISTRICT OF VIRGINIA (ALEXANDRIA)
1:10-CV-01197
FILED: 10/21/2010

This is the second lawsuit involving the same Defendant who keeps purchasing domain names of the Plaintiff. The cost of litigating in federal court is substantially greater than pursuing a UDRP arbitration proceeding. Keep in mind that when you have a domain name infringing upon your trademark sometimes these matters can be resolved without even initiating arbitration or a lawsuit by going to a web host, payment processor, domain registrar or registry, Google, or another business involved with the website.

Janna Bullock is renowned for her architectural design work in New York and Russia and is a philanthropist. The Defendant domain names are apparently owned by a Russian. The websites at the Defendant domain names contain the Plaintiff’s signature as well as certain photographs of the Plaintiff. This lawsuit is against the domain names only and attempts to have the court order the transfer of the names to the Plaintiff.

The lawsuit claims violation of the Anticybersquatting Consumer Protection Act and requests that the infringing domain names be transferred to Plaintiff. Dozier Internet Law Cross-Reference Number 1449.

Dozier Internet Law Federal Court Report: September 2010 Domain Name Dispute Lawsuits

2011-01-26T07:16:00.000-08:00

Dozier 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.

CORONA CIGAR COMPANY v. THE WINNER’S CIRCLE CIGAR LOUNGE, LLC
MIDDLE DISTRICT OF FLORIDA (ORLANDO)
6:10-CV-01460
FILED: 9/30/2010

When you are ready to select a business, product or service name you should have your lawyer conduct a “trademark clearance” search to make sure that you are legally entitled to use the name without infringing on a third party’s trademark.

Corona Cigar Company is a Florida corporation operating retail stores and lounges that promote and sell cigars and related products. Defendant is a New Jersey corporation using the “Corona Cigar” trademark in its domain name, “thecoronacigarlounge.com”.

Claims against the Defendant include trademark infringement, cybersquatting, and unfair competition. The Plaintiff requests permanent injunctive relief, actual damages, compensatory damages, removal of all infringing content from the web, transfer of the infringing domain name, an accounting and disgorgement of Defendant’s profits, punitive damages, and reasonable attorneys’ fees, costs, and expenses. Dozier Internet Law Cross-Reference Number 1444.

Dozier Internet Law Federal Court Report: August 2010 Domain Name Dispute Lawsuits

2011-01-18T11:25:00.000-08:00

Dozier 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.

CITY OF LA CROSSE v. DAVID ALBERTO MONTEALEGRE
WESTERN DISTRICT OF WISCONSIN (MADISON)
3:10-CV-00480
FILED: 8/24/2010

If you are going to allow a technology employee or web host to register domain names for your business make sure you have access to the registrar’s account so that you can change registrant information at will. These types of problems in which an individual has control of a domain name are very common.

The City of La Crosse, Wisconsin is suing its former director of technology for the purpose of obtaining city domain names Mr. Montealgre now possesses. The Defendant has been indicted for bankruptcy fraud and his services have been terminated by the City of La Crosse but he has failed to turn over the registration of all of the domain names he was maintaining for the city.

Plaintiff claims cybersquatting, unjust enrichment, and breach of fiduciary duty and requests that the domain names in question are transferred to the City of La Crosse along with any other domain names purchased for the city or with city funds and that Defendant be held responsible for Plaintiff’s attorney fees and costs. Dozier Internet Law Cross-Reference Number 1448.

Dozier Internet Law Federal Court Report: July 2010 Domain Name Dispute Lawsuits

2010-08-20T07:25:00.000-07:00

Dozier 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.

H-D MICHIGAN, LLC and HARLEY-DAVIDSON MOTOR COMPANY GROUP, LLC v. CHRISTOPHER AYALA
DISTRICT OF NEVADA (LAS VEGAS)
2:10-CV-01187
FILED: 7/19/2010

There are circumstances in which you can use the name of a company nominatively to identify the source and quality of goods or services even without a reseller agreement from the company. It appears that most cybersquatting decisions are now coming down on the side that you cannot include the name of the company in the domain name, but this is a hotly contested arena in which decisions are falling on both sides.

Plaintiff Harley-Davidson Motor Company Group is the famous motorcycle company. Defendant has never been an authorized Harley-Davidson dealer. Harley-Davidson alleges that the Defendant registered the domain “shopharleyroads.com” and is using it as a website.

Defendant is accused of trademark infringement, false designation of origin, unfair competition, federal unfair competition comprising false and misleading statements of fact, trademark dilution, cybersquatting, common law trademark infringement, common law unfair competition, and misappropriation. The Prayer for Relief requests permanent injunctive relief, an order directing Defendant to destroy all unauthorized materials infringing on the Plaintiffs’ marks, an order directing Defendant to remove all references to Plaintiffs’ marks from his website, transfer of infringing domain names to Plaintiff, an accounting of Defendants profits, statutory damages in the amount of $300,000, punitive damages, costs and attorneys’ fees, and other relief the Court may deem appropriate. Dozier Internet Law Cross-Reference Number 1441.

Dozier Internet Law Federal Court Report: June 2010 Domain Name Dispute Lawsuits

2010-08-10T08:22:00.000-07:00

Dozier 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.

DIAL CORPORATION v. DAVID G. BROWN
NORTHERN DISTRICT OF TEXAS (FORT WORTH)
4:10-CV-00456
FILED: 6/25/2010

In this case the Defendant allegedly asked for nine cases of product to be shipped to him in exchange for the transfer of the domain name “rightguard.us”. Instead, he got served with a lawsuit.

Dial Corporation is a large consumer products company. The Defendant is alleged to have registered many domain names that are close misspellings or exact representations of the soap and deodorant products sold by the Plaintiff.

The lawsuit requests that each of the infringing domain names be preliminarily and permanently transferred to Plaintiff and that Defendant’s registration for each domain name be cancelled or forfeited. Further relief requested includes preliminary and permanent injunctive relief, destruction of all infringing materials in the Defendant’s possession, statutory damages, reasonable attorneys’ fees, an assessment of costs and interest, and granting such other and further relief the Court deems just. Dozier Internet Law Cross-Reference Number 1436.

Dozier Internet Law Federal Court Report: May 2010 Domain Name Dispute Lawsuits

2010-06-28T08:47:00.000-07:00

Dozier 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.

VOLUSION, INC. v. NETWORK SOLUTIONS, LLC
WESTERN DISTRICT OF TEXAS (AUSTIN)
1:10-CV-00361
FILED: 5/25/2010

Trademark infringement requires either actual confusion or a likelihood of confusion among the consuming public. This could be a very subjective evaluation and if you are a small business looking to avoid incurring a big expense in litigation make sure that you stay very far away from competitors’ trademarks.

Volusion is a California corporation involved in technology and e-commerce. Defendant Network Solutions sells webhosting and domain names to customers and allegedly approached Volusion about being able to sell its products or services to Network Solutions’ customers. Those solicitations were rejected by Volusion, and it is alleged that Network Solutions undertook the use of the domain name “smallvolution.com” and started selling products that competed with those offered by the Plaintiff.

Charges alleged against Network Solutions include trademark infringement, unfair competition and misappropriation, common law trademark infringement, common law unfair competition, trademark dilution, injury to business reputation, trade name, and dilution, cybersquatting, and common law unjust enrichment. Volusion is requesting preliminary and permanent injunctive relief, the removal and destruction of all infringing materials, actual damages, treble damages, punitive damages, the forfeiture and cancellation of the domain name “smallvolution.com” or transfer of the domain name to Volusion, pre-judgment and post-judgment interest, costs, disbursements, attorneys’ fees, and any other relief the court deems just and equitable. Dozier Internet Law Cross-Reference Number 1428.

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

2010-05-19T08:24:00.000-07:00

Dozier 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.

SOUND SURGICAL TECHNOLOGIES LLC v. LEONARD A RUBINSTEIN, ET AL.
MIDDLE DISTRICT OF FLORIDA (TAMPA)
8:10-CV-00970
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. Dozier Internet Law Cross-Reference Number 1419.

MICROSOFT CORPORATION v. AMISH P SHAH, ET AL.
WESTERN DISTRICT OF WASHINGTON (SEATTLE)
2:10-CV-00653
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. Dozier Internet Law Cross-Reference Number 1420.

Dozier Internet Law Federal Court Report: March 2010 Domain Name Dispute Lawsuits

2010-04-07T06:13:00.000-07:00

Dozier 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.

GAMES WORKSHOP LIMITED v. CURSE, INC., ET AL.
DISTRICT OF MARYLAND (BALTIMORE)
1:10-CV-00787
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 “warhammeralliance.com” 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. Dozier Internet Law Cross-Reference Number 1416.

LEGO JURIS A/S v. PROJECT LEGOS, INC.
DISTRICT OF MINNESOTA
0:10-CV-00862
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 “www.projectlegos.com”. 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. Dozier Internet Law Cross-Reference Number 1414.

Dozier Internet Law Federal Court Report: February 2010 Domain Name Dispute Lawsuits

2010-03-19T07:07:00.000-07:00

Dozier 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.

RETROSPECS & CO. – AUTHENTIC EARLY AMERICAN EYEWEAR v. RETROSPECS, U.K., ET AL.
CENTRAL DISTRICT OF CALIFORNIA (LOS ANGELES)
2:10-CV-01336
FILED: 2/23/2010

The important point to note is that the U.S. Plaintiff claims that the U.K. Defendants have progressively encroached into the United States with their business dealings. As the global economy develops, there will be more instances of clashing and conflicting trademarks. Remember that most trademarks receive protection only in the geographic areas in which they are used. If you are a small U.K. retailer, you launch a website, and start shipping into the United States, you are now doing business in the United States and may be infringing on the trademark of a U.S. company.

RetroSpecs & Co is a California corporation involved in the sale of antique eyewear including eyeglass frames and sunglasses. RetroSpecs U.K is organized under the laws of the United Kingdom involved in the business of selling “vintage” eyewear as a competitor of the Plaintiff. The Defendant is using the “RetroSpecs” name in its domain name.

Plaintiff alleges trademark infringement and unfair competition and requests actual damages, an accounting of profits, injunctive relief, attorneys’ fees and costs. Dozier Internet Law Cross-Reference Number 1402.

Dozier Internet Law Federal Court Report: January 2010 Domain Name Dispute Lawsuits

2010-03-16T08:39:00.000-07:00

Dozier 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.

PETROLIAM NASIONAL BERHAD v. PETRONASTOWER.NET
NORTHERN DISTRICT OF CALIFORNIA (SAN FRANCISCO)
3:10-CV-00431
FILED: 1/29/2010

All because the owner of a domain name is either overseas or cannot be identified does not preclude a trademark owner from getting the domain name through this type of a lawsuit.

The Plaintiff owns the Petronas Twin Towers in Malaysia, the largest free standing towers in the world. The Defendant is alleged to have purchased the domain name “petronastower.net” at which the Defendant is allegedly hosting an obscene and highly offensive pornographic website. This is an in rem action merely to obtain possession of the domain name.

The lawsuit includes a claim for cyberpiracy and requests that Go Daddy, as the domain name registrar, and VeriSign, as the domain name registry, immediately transfer all rights, title, and interest in the domain name “Petronastower.net” to Petronas and an order from the Court forever cancelling the domain name. Dozier Internet Law Cross-Reference Number 1396.

MGM MIRAGE v. DAN LEI, ET AL.
DISTRICT OF NEVADA (LAS VEGAS)
2:10-CV-00074
FILED: 1/20/2010

It’s one thing to have a domain name consisting of a competitive trademark. It’s far worse to use the competitor’s trademark and images on your site to mislead the public. You would think seventy years after Bugsy Siegel learned his lesson, everyone would know that the most foolish thing you can do is steal from a Las Vegas casino.

MGM Mirage is the casino in Las Vegas and the Defendants allegedly own domain names with the MGM name in them. The domain names point to an online sports book website that uses the MGM trademark and images of MGM casinos on its site.

The lawsuit includes claims for federal trademark infringement, cybersquatting, unfair competition, federal trademark dilution, state trademark infringement, state trademark dilution, common law trademark infringement, deceptive trade practices, and intentional interference with prospective economic advantage. Plaintiff is requesting the issuance of preliminary and permanent injunctions prohibiting the use of the marks and requiring transfer of the domain names, as well as an award of compensatory damages, consequential damages, statutory damages, exemplary damages, punitive damages, and an award of interest, cost, and attorneys’ fees. Dozier Internet Law Cross-Reference Number 1397.

MINE O’MINE, INC. v. MICHAEL D. CALMESE, ET AL.
DISTRICT OF NEVADA (LAS VEGAS)
2:10-CV-00043
FILED: 1/12/2010

If you think that a person cannot have a trademark in his own name, you are incorrect. Treat high profile or famous people’s names just like the name of a company that owns a trademark. You don’t even have to have a registered trademark to bring a lawsuit for trademark infringement. Considering the six-figure statutory damage provision in federal law coupled with the requirement that a losing Defendant pay the trademark owner’s legal fees, playing in this arena can become very expensive, very quickly. It’s got to be very painful to be the target of a Shaquille O’Neal slam dunk, whether on a basketball court or in a federal court.

The Plaintiff is actually Shaquille O’Neal, the basketball player. Defendants are alleged to be buying up domain names containing variations of Shaquille O’Neal’s name.

The lawsuit alleges trademark infringement, unfair competition, trademark dilution, cybersquatting, common law trademark infringement, and violation of the right of publicity. Plaintiff requests preliminary and permanent injunctive relief, transfer of the infringing domain names to Plaintiff, and an award of compensatory, consequential, statutory, exemplary, and punitive damages in an amount to be determined at trial as well as attorneys’ fees and costs.Dozier Internet Law Cross-Reference Number 1398.

Dozier Internet Law Federal Court Report: December 2009 Domain Name Dispute Lawsuits

2010-01-26T09:47:00.000-08:00

Dozier 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.

GEORGE HENDERSON LAW CORPORATION v. LABNET, INC. AND DOES 1-20
CENTRAL DISTRICT OF CALIFORNIA (LOS ANGELES)
2:09-CV-09165
FILED: 12/14/2009

LABNET, INC. v. GEORGE HENDERSON LAW CORPORATION AND THE LAW OFFICES OF GEORGE HENDERSON
DISTRICT OF COLORADO (DENVER)
1:09-CV-02963
FILED: 12/18/2009

When you have a very weak trademark it is best to be very conservative in handling enforcement actions against potential infringers. Remember, the less meritorious your case, the more likely it is that someone is going to challenge you and your trademark.

George Henderson Law Corporation, the Plaintiff in the first case, is a law firm. LabNet, Inc., the Defendant in the first case and the Plaintiff in the second case, is an entity that claims a trademark in the term “work law”. The law firm received a cease and desist letter from LabNet claiming ownership of the term “work law” as a trademark, particularly in the context of being contained in domain names the law firm was using. George Henderson Law Corporation filed suit in the Federal Court in California on December 14, 2009, and LabNet filed suit in the Federal Court in Colorado on December 18, 2009.

The lawsuit filed by George Henderson Law Corporation includes requests for extensive declaratory judgments ruling LabNet’s trademarks as invalid and that Plaintiff’s use of the mark is fair and requests for attorneys’ costs and fees in an amount to be determined at trial and additional and further relief based on the rulings of the declaratory judgments and that the Court deems to be just and proper.

In the lawsuit filed by LabNet, Defendants have been sued for infringement of a federally registered trademark, common law trademark infringement, false designation of origin, unfair competition, trademark dilution, violation of the Anti-Cybersquatting Consumer Protection Act, and violation of the Colorado Consumer Protection Act. The Plaintiff requests indemnification against all third party claims, temporary, preliminary, and permanent injunctive relief, that Defendants cease and desist any and all use of Plaintiff’s marks, that Defendants be adjudged to have violated the Lanham Act and Colorado Consumer Protection Act, an accounting of Defendant’s gains as a result of wrongful acts against Plaintiff, actual damages, punitive and exemplary damages, ordering Defendants to send letters to clients indicating no association whatsoever to Plaintiff, destruction of Defendant’s infringing products and services, granting Plaintiff the remedies provided by 15 U.S.C. §§ 1116 and 1118, costs, reasonable attorneys’ fees, and such other and further relief that the Court may deem just and equitable. Dozier Internet Law Cross-Reference Number 1397, 1398.

JEFFREY WALTER v. VILLE DE PARIS
SOUTHERN DISTRICT OF TEXAS (HOUSTON)
4:09-CV-03939
FILED: 12/08/2009

Even if you lose a UDRP proceeding, a lawsuit can be filed and most Courts will totally disregard the UDRP proceeding and determine the case all over again on the merits and the Court’s view of the law.

The Plaintiff owns the domain name “parvi.org”. The Defendant is the city of Paris, France. Paris brought a UDRP proceeding and prevailed. This lawsuit was brought to establish rights by the Plaintiff in the domain name to the exclusion of the Defendant.

The lawsuit filed by Plaintiff includes claims for reverse domain hi-jacking, tortuous interference, and conversion. The Plaintiff requests declaration by the Court that Plaintiff’s registration of the domain name is lawful and does not infringe on any trade or service mark right the Defendant may claim in the United States, that the UDRP decision was an improper interpretation of the contractual rights of Plaintiff, actual damages according to proof at trial but no less than $100,000, punitive damages according to proof at trial, reasonable attorneys’ fees, costs and expenses, and such other and further relief as the Court deems just and proper. Dozier Internet Law Cross-Reference Number 1396.

Dozier Internet Law Federal Court Report: November 2009 Domain Name Dispute Lawsuits

2009-12-30T06:12:00.000-08:00

Dozier 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.

BELLAGIO, LLC AND MIRAGE RESORTS, INC. v. DOMINIC TORRINO AND GEORGIO STAMATIS MAILLIS
DISTRICT OF NEVADA (LAS VEGAS)
2:09-CV-02240
FILED: 11/23/2009

This case is a classic example of the damages that can ensue from improperly squatting on a domain name. There is no law preventing a trademark owner from suing you for cybersquatting and trademark infringement after it has prevailed in a domain name dispute. If you ever receive a “cease and desist” letter demanding that you turn over a domain name be aware that simply transferring the domain name to a trademark owner does not necessarily end your legal exposure. This case is a perfect lesson in that respect.

Bellagio is the Las Vegas casino with many registered trademarks. The Defendants registered and used “bellagiolimousines.com”. The website initially featured a photograph of the famous Bellagio fountains on its homepage. Bellagio won a domain name dispute decision and has filed this lawsuit after receiving the National Arbitration Forum decision in its favor.

The lawsuit includes claims for cybersquatting, federal trademark infringement, unfair competition, false designation of origin, federal trademark dilution, state trademark infringement, state trademark dilution, common law trademark infringement, deceptive trade practices, and intentional interference with prospective economic advantage. Plaintiffs are requesting the issuance of preliminary and permanent injunctions prohibiting the use of the marks and requiring transfer of the domain names, as well as an award of compensatory damages, consequential damages, statutory damages, exemplary damages, punitive damages, and an award of interest, cost, and attorneys’ fees. Dozier Internet Law Cross-Reference Number 1380.

JAR GROUP, INC. AND SQUIRT GUN MARKETING, INC. v. KAREN WHITE, ET AL.
EASTERN DISTRICT OF NEW YORK (BROOKLYN)
1:09-CV-05101
FILED: 11/20/2009

Qwest has apparently been pulled into this dispute under a claim for “aiding and abetting breaches of fiduciary duties”. The Plaintiffs are attempting to impute liability for damages to Qwest because its representative allegedly provided the Defendants with knowing and substantial assistance in breaching the fiduciary duty owed to the Plaintiffs to act honorably and in good faith. The lesson to be learned here is that you need to be very careful about who you deal with in the online affiliate marketing industry. Due diligence and vetting of relationships is critical. No one knows whether the Defendants did anything wrong in this case because the lawsuit is mere allegations of misconduct. But a “business divorce”, which appears to be the situation in this case, can get very ugly.

Defendant is alleged to have registered and used “squirtgunmediagroup.com”, which is confusingly similar to the Plaintiffs’ distinctive trademark of “Squirt Gun Marketing” and the Plaintiffs’ domain name, “squirtgunmedia.com”. All of the parties are involved in the online affiliate marketing industry.

The lawsuit alleges unfair competition, dilution, trademark infringement, violations of the Anti-Cybersquatting Consumer Protection Act, breaches of fiduciary duties, theft of corporate opportunities, tortious interference with contractual relations, breaches of contract, and aiding and abetting breaches of fiduciary duties. Plaintiffs request that the court declare the Plaintiffs’ website, domain name, and trade name are the property of the Plaintiffs, enter permanent injunctive relief against the Defendants, and award actual damages, compensatory damages, and costs and reasonable attorneys’ fees. Dozier Internet Law Cross-Reference Number 1381.

Dozier Internet Law Federal Court Report: October 2009 Domain Name Dispute Lawsuits

2009-11-25T11:58:00.000-08:00

Dozier 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.

BMW OF NORTH AMERICA, LLC AND BAYERISCHE MOTOREN WERKE AG v. STEPHEN V. TACKETT
CENTRAL DISTRIC OF CALIFORNIA (LOS ANGELES)
2:09-CV-07846
FILED: 10/28/2009

The lesson here is simple. Don’t ignore cease and desist and demand letters. It’s true that cease and desist letters are vastly over used and there is often never any intent by the sender to undertake legal action. But in many instances a lawsuit does follow. Even if you comply with the demands of the cease and desist letter you are well advised to obtain a release in return for compliance so that you can not be sued. Compliance with a cease and desist or a legal demand letter generally stops damages from the date of your compliance, but has little legal effect on the already existing claim for cybersquatting, trademark infringement, or the like. Consequently, take the legal letter seriously and obtain a full release in return for acceding to the demands.

The Plaintiff is the famous automobile manufacturer involved in the business of designing, manufacturing, distributing and servicing motor vehicles under the “BMW” trademark. Defendant himself and through his agents acquired approximately 30 domain names with the term “BMW” contained in them. The Plaintiff sent three cease and desist letters requesting that the Defendant immediately stop using the domain names. The Defendant hosts at least two “BMW” websites that purportedly provide information on new BMWs, pre-owned BMWs, financing, insurance, warranties, and other automobile related products and services.

The lawsuit claims federal trademark infringement, federal unfair competition, false designation of origin and trade name infringement, violation of the Anti-Cybersquatting Consumer Protection Act, trademark infringement and unfair competition under California common law, and violation of California unfair competition statute. The prayer for relief requests preliminary and permanent injunctive relief, an order preventing Defendant’s use or transfer of the infringing domain names, an accounting of Defendant’s profits and Plaintiff’s losses resulting from the Defendant’s activities, payment of any such losses to the Plaintiff, statutory damages of $100,000 per domain name, punitive and exemplary damages, treble damages, transfer of all domain name registrations to the Plaintiff, and any other such relief the Court deems appropriate. Dozier Internet Law Cross-Reference Number 1366.

BERNARD BERRIAN v. RYAN M. PERKINS
EASTERN DISTRICT OF CALIFORNIA (FRESNO)
1:09-CV-01761
FILED: 10/06/2009

Some domain owners believe that you can just purchase a domain name of a living person and there are no trademark rights that can be enforced. But if the individual’s name is inherently distinctive or has acquired secondary meaning, and the individual is using his name commercially then a common law trademark likely arises. In addition, some states now have specific laws that prohibit the use of a name of a living individual for commercial purposes without permission. Bruce Springsteen lost a domain name case many years ago because he did not hold a registered trademark in his name. That outcome would be different today.

The Plaintiff is an NFL football player currently with the Minnesota Vikings. Defendant is alleged to have registered the domain names “bernardberrian.com” and “booberrian.com” without Plaintiff’s consent. Plaintiff claims that the Defendant demanded payment for the domain names, including an autographed football and football tickets to an NFL game. If such payment was not forthcoming, the Defendant threatened to transfer the domain names to a business associate who was a citizen of the Republic of China so as to prevent the Plaintiff from obtaining the names.

The lawsuit claims violation of the Anti-Cybersquatting Consumer Protection Act and cyberpiracy. The prayer for relief requests actual damages including prejudgment and post-judgment interest, treble damages, preliminary and permanent injunctive relief, an order directing the Defendant to forfeit, cancel, or transfer the domain names to the Plaintiff, punitive damages, an award of attorneys’ fees and costs and any other relief the court deems just and equitable. Dozier Internet Law Cross-Reference Number 1369.

Dozier Internet Law Federal Court Report: September 2009 Domain Name Dispute Lawsuits

2009-10-15T07:52:00.000-07:00

Dozier 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.

JOHN G. BRANCA, ET AL. v. HEAL THE WORLD FOUNDATION, ET AL.
CENTRAL DISTRICT OF CALIFORNIA (LOS ANGELES)
2:09-CV-07084
FILED: 9/29/2009

Just yesterday Michael’s Jackson’s estate settled a copyright infringement claim with Paul Anka in which Anka will be paid 50% of proceeds from the release of Michael Jackson’s newest single. Mr. Anka had co-written the song but the estate had refused to credit Mr. Anka. With this lawsuit it becomes increasingly apparent that the intellectual property issues relating to Mr. Jackson’s estate will continue for many, many years. In this instance it appears that the Defendants were allowed to operate for many years during Mr. Jackson’s life and only in his death are the issues of infringement being pursued. The lesson to be learned is clear: maintain an inventory of your intellectual property and keep it updated with information as to ownership, licensing, and enforcement activities.

The Plaintiffs are the special co-administrators of the estate of Michael Jackson. The Defendants are alleged to be using the “Heal the World” trademark owned by Mr. Jackson’s estate to operate an organization that purports to carry on the work of Jackson’s Foundation and is allegedly making numerous false representations regarding affiliations with Mr. Jackson and related charities. The ongoing trademark infringement, according to the lawsuit, also involves the acquisition of several domain names that infringe on Mr. Jackson’s intellectual property and trademark holdings.

The lawsuit claims trademark infringement, unfair competition and false designation of origin, trademark infringement and unfair competition under California common law, violation of the statutory and common law right of publicity, cancellation of registered trademarks based on false suggestion of a connection, and violations of the Anti-Cybersquatting Consumer Protection Act. The prayer for relief in the case requests preliminary and permanent injunctive relief, delivery to Plaintiffs of any and all materials bearing the MJJ marks, an award of attorneys’ fees and costs and any other relief the court deems just and equitable. Dozier Internet Law Cross-Reference Number 1359.

MINDS AND MACHINES, LLC, ET AL. v. GELILA PUCK AND WOLFGANG PUCK
WESTERN DISTRICT OF WASHINGTON (SEATTLE)
2:09-CV-01237
FILED: 9/01/2009

Domain names are about to become much more complex in nature. There are new top-level domain names that may become available. ICANN (the governing body for domain names) has created an application process by which an interested party may seek to become a registry operator for a new top-level domain name of its choice. The application process is widely expected to begin in 2010. This is a development that everyone needs to be paying attention to for obvious reasons.

Minds and Machines, LLC, a California company and Top Level Domain Holdings, Ltd., a British Virgin Islands company, appear to be leading providers of services to apply for and develop new top-level Internet domain names. One of the top-level domain names it is involved with is “.food”. The Plaintiffs are suing Wolfgang Puck, the famous chef, and his wife under rather complex factual circumstances relating to an alleged joint business enterprise to promote the “.food” top-level domain name.

The Defendants have been sued for breach of contract and tortious interference and fraud (alleged against Gelila Puck only). Plaintiff has requested extensive declaratory relief, the entry of a temporary and permanent injunction against the Defendants, actual damages, and attorneys’ fees and costs. Dozier Internet Law Cross-Reference Number 1360.

Dozier Internet Law Federal Court Report: August 2009 Domain Name Dispute Lawsuits

2009-09-30T06:52:00.000-07:00

Dozier 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.

UNITEDHEALTH GROUP INCORPORATED v. JOHN DOE a/k/a “DWIGHT COPPES”
DISTRICT OF MINNESOTA
0:09-CV-02274
FILED: 8/28/2009

More and more cybersquatting lawsuits are being filed through rather creative interpretations of trademark law. In this instance, “Unitedhealth” believes that the domain name containing “healthcare-united” is confusingly similar. From a domain name/cybersquatting standpoint, that is not the strongest argument. You should be aware that the use of a business’s exact trademark is not required for there to be trademark infringement or cybersquatting. Most uses are not exact copies of the trademark and the question of what exactly confuses the public is very much open to debate. Consequently, you may believe that you cannot obtain relief from domain name misuse when you can do so. And you may feel like you should be able to obtain a domain name when you cannot do so.

The Plaintiff is a Minnesota corporation engaged in the business of providing insurance and health related services since 1984. The Defendant, using an alias, acquired the domain name “healthcare-united.biz”. The Plaintiff alleges that the site is a phishing site being used to solicit bank account information and defraud consumers by deceiving Unitedhealth’s customers into believing that Defendant’s website is affiliated with Unitedhealth.

The Defendants have been sued for federal trademark infringement, common law trademark infringement, federal trademark counterfeiting, federal dilution, unfair competition, false advertising, cybersquatting, common law trademark infringement, dilution under state law, common law unfair competition, common law passing off, deceptive trade practices under the Minnesota Deceptive Trade Practices Act, and unjust enrichment. Plaintiff has requested preliminary and permanent injunctive relief, an order requiring Defendant to provide Plaintiff with detailed report on traffic to “healthcare-united.biz”and submit any and all domain names that contain the infringing mark to the court, actual damages, treble damages, statutory damages, attorneys’ fees, costs, and interest, and other relief the court deems just and proper. Dozier Internet Law Cross-Reference Number 1349.

Dozier Internet Law Federal Court Report: July 2009 Domain Name Dispute Lawsuits

2009-08-17T07:29:00.000-07:00

Dozier 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.

MRS. FIELDS’ BRAND v. BATTERS & DOUGHS AND JOHN EDWARDS
CENTRAL DISTRICT OF UTAH
2:09-CV-00652
FILED: 7/27/2009

Who would have thought that a 1-800 number could be registered as a trademark? It is almost to the point that if you are going to acquire a domain name you need to conduct a full trademark search since trademark infringement can be based on unregistered or “common law” rights, which means that a search of the trademark office might not even reveal problems. This is an area that requires great care.

Mrs. Fields’ is the cookie company with over 290 locations in the U.S. It holds an incontestable trademark registration in “1-800-Cookies”. The Defendants are alleged to have acquired the domain name “1800cookies.com” and are using it to divert traffic to a competing website.
The Defendants have been sued for cybersquatting, federal trademark infringement, common law trademark infringement, trademark dilution, false designation of origin, unfair competition, and common law unfair competition. Plaintiff has requested preliminary and permanent injunctive relief, an order transferring the domain name “1800cookies.com” to Plaintiff, compensatory damages, statutory damages, and treble damages. Dozier Internet Law Cross-Reference Number 1339.

Dozier Internet Law Federal Court Report: June 2009 Domain Name Dispute Lawsuits

2009-07-06T12:15:00.000-07:00

Dozier 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.

FIRST AMERICAN CORPORATION v. eNOM INC., ET AL.
WESTERN DISTRICT OF WASHINGTON (SEATTLE)
2:09-CV-00762
FILED: 6/02/2009

This is a prime example of what can go wrong when transferring a domain name. Apparently a registrar obtained possession of the domain name in the process of transferring it to the Plaintiff pursuant to a UDRP arbitration decision. Somehow, the Defendants convinced the registrar to transfer it back to them. Timing is of the essence. The moment a domain name is transferred to a registrar and placed in your business name it should be transferred from that registrar to your own registrar account. The quicker you get possession of the domain name with your own registrar the better off you are going to be.

The First American Corporation is a California corporation with its roots dating back to the 1800s. It has been publicly traded on the New York stock exchange since 1993 and is a leading provider of real estate title and settlement services, mortgage services, and numerous other financial services. The Defendants are alleged to have acquired or participated in the acquisition of the “firstamerican.com” domain name. A domain name arbitration process resulted in a decision from an arbitrator that the domain name must be transferred to the Plaintiff. In the process of doing so, eNom, Inc., acting as a registrar allegedly obtained possession of the domain name and then returned it to the Defendants.

The lawsuit claims cybersquatting, contributory cybersquatting, trademark infringement, unfair competition and false advertising, trademark dilution, Washington state unfair competition, common law unfair competition, common law fraud, breach of contract, tortious interference with a contract or business expectancy, conversion, contributory false advertising, contributory trademark dilution, contributory unfair competition, and contributory common law unfair competition. The prayer for relief in the case requests the transfer of the domain name to the Plaintiff, preliminary and permanent injunctive relief, statutory, compensatory, and punitive damages, and an award of costs. Dozier Internet Law Cross-Reference Number 1330.

Dozier Internet Law Federal Court Report: May 2009 Domain Name Dispute Lawsuits

2009-06-12T10:58:00.000-07:00

Dozier 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.

ADAM L. SCHMITT v. ADAM J. SCHMITT
CENTRAL DISTRICT OF ILLINOIS (URBANA)
2:09-CV-02119
FILED: 05/21/2009

Basically this lawsuit is against the Defendant because he appears to have used his own name in publishing his music and registering under his own name on websites. Can an artist with a very common name prevent everyone else in the world with that name from publicly practicing their craft without using an alias? Doubtful. The lesson to be learned in this case is that when you are conducting commerce on the web you need to understand the landscape before you start using a business name, or in this case even your personal name. Ultimately the Defendant may prevail, but the cost of litigation is huge.

Plaintiff Adam Schmitt has recorded and sold music composed and sung or played by himself and others since 1990 as a solo artist, singer, song writer, and musician. Defendant Adam Schmitt has within the past year begun to record and post his music on the Internet. The Plaintiff claims a common law trademark in the name “Adam Schmitt”.

The lawsuit alleges common law trademark infringement, dilution of a famous mark, “damage to Plaintiff’s reputation”, and cybersquatting. Plaintiff has requested injunctive relief, the disgorgement of profits after the presentation of an accounting by the Defendant, and an award of statutory damages of $100,000.00 for each domain name controlled by the Defendant. Dozier Internet Law Cross-Reference Number 1321.

AGASSI ENTERPRISES, INC. v. ANDRE-AGASSI.COM, ET AL.
DISTRICT OF NEVADA (LAS VEGAS)
2:09-CV-00850
FILED: 05/12/2009

This is an “in rem” action against the domain names and these types of lawsuits typically can only be filed in the location of the registrar or registry of the domain names. If the individuals appear in this case they will likely be added as individual Defendants and sued for money. Consequently, the likelihood of the individuals appearing is very low, which means that the issue of jurisdiction or venue will never be raised in this case unless the Judge decides to do it on his own.

The Plaintiff owns the exclusive right to use and sublicense the Agassi trademarks by virtue of an employment agreement with Andre Agassi in 1994. Andre Agassi is a renowned professional tennis player who captured eight Grand Slam titles, an Olympic Gold Medal, and a career Grand Slam, in his career. The Defendants are the domain names and this lawsuit alleges that the names were acquired in bad faith.

The only count in the lawsuit alleges cybersquatting and requests injunctive relief requiring the domain name registrar transfer the registrations of the Defendant domain names to the Plaintiff. This lawsuit was brought in the United States District Court in the district of Nevada. Dozier Internet Law Cross-Reference Number 1322.

Dozier Internet Law Federal Court Report: April 2009 Domain Name Dispute Lawsuits

2009-05-26T12:30:00.000-07:00

Dozier 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.

TIAN YI TONG INVESTMENTS LTD. v. AIR AUSTRAL
DISTRICT OF COLORADO (DENVER)
1:09-CV-00745
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. Dozier Internet Law Cross-Reference Number 1312.

ESPN, INC. v. MONSTER TRUCK ENTERTAINMENT, LLC.
EASTERN DISTRICT OF CALIFORNIA (SACRAMENTO)
2:09-CV-00906
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. Dozier Internet Law Cross-Reference Number 1313.

Dozier Internet Law Federal Court Report: March 2009 Domain Name Dispute Lawsuits

2009-04-17T11:36:00.000-07:00

Dozier 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.

ZUFFA, LLC v. ULTIMATEUFC.COM, ET AL.
DISTRICT OF NEVADA (LAS VEGAS)
2:09-CV-00590
FILED: 3/30/2009

The interesting thing about this case is that it has been filed in the United States District Court for the District of Nevada. All I will comment on this point is that the cybersquatting law only permits “in rem” lawsuits in the jurisdictions of the registrar or registree. While there are serious questions as to whether the Nevada court has jurisdiction, reality is that the Defendants are unlikely to ever appear and the UFC will end up with these domain names due merely to the cost of litigating the issue of jurisdiction and the merit of the Plaintiff’s contentions.

Zuffa, LLC does business as the Ultimate Fighting Championship, a private company that promotes mixed martial arts contests and exhibitions. Defendants are alleged to own certain domain names with the “UFC” registered trademark in the domain names.

This is an “in rem” action against the domain names themselves and not against the Defendants. The lawsuit alleges cybersquatting and requests an injunction requiring the domain name registrar to transfer the registrations to the Plaintiff. Dozier Internet Law Cross-Reference Number 1302.

Dozier Internet Law Federal Court Report: February 2009 Domain Name Dispute Lawsuits

2009-03-20T06:34:00.000-07:00

Dozier 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.

DOMINION ENTERPRISES v. DOMINIONENTERPRISES.ORG
EASTERN DISTRICT OF VIRGINIA (ALEXANDRIA)
1:09-CV-00172
FILED: 2/17/2009

Even though the owner of a domain name is unknown you still have the ability to file a lawsuit and obtain possession of the domain name through legal action at the geographic location of the registrar or registry.

Domain Enterprises is a partnership organized under the laws of Virginia and has, for almost twenty years, been a leading marketing services company serving a wide range of consumers and industries. Defendant, dominionenterprises.org, is a domain name owned by a third party. Plaintiff alleges that the registrant undertook an elaborate scheme to deceive consumers by registering the domain name and then launching a website that looked, for most material purposes, as if it was the Plaintiff’s own website.

This lawsuit was brought in the United States District Court for the Eastern District of Virginia as an “in rem” action, although the court relief is broad, the remedy sought is the transfer of the domain name to the Plaintiff. The Plaintiff has sued for a violation of the Anti-cybersquatting Consumer Protection Act, trademark infringement, and federal unfair competition. Dozier Internet Law Cross-Reference Number 1290.

HELLS ANGELS MOTORCYCLE CORPORATION v. FAWN MYERS., ET AL.
EASTERN DISTRICT OF CALIFORNIA (FRESNO)
1:09-CV-00261
FILED: 2/11/2009

To get a very clear perspective on how things have changed, even the Hell’s Angels is obtaining registered trademarks and using the courts to address intellectual property infringement. One might have historically surmised that a personal visit would achieve the objective at much lower costs.

The Plaintiff, Hells Angels Motorcycle Corporation, is a “non-profit mutual benefit corporation”. Defendant Fawn Myers is an individual residing in Visalia, California. The Defendant is alleged to have purchased over twenty domain names that infringed on the Plaintiff’s trademark and attempted to sell those on eBay.

The lawsuit claims “cyberpiracy”, trademark infringement, false designation of origin, dilution, California common law trademark infringement, and unfair competition. Extensive preliminary and permanent injunctive relief is requested including claims for compensatory damages, triple damages, statutory damages of up to $100,000.00 per domain name, reasonable attorneys’ fees, prejudgment interest, and court costs. Dozier Internet Law Cross-Reference Number 1286.

WEB MARKETING SERVICES, L.L.C. v. SHURFINE FOODS, INC.
EASTERN DISTRICT OF LOUISIANA (NEW ORLEANS)
2:09-CV-02449
FILED: 2/06/2009

One of the worst things you can do as a business is fire off a bunch of cease and desist letters or have someone else on your behalf make decisions and send out demand letters relating to alleged trademark infringement and/or cybersquatting issues. Not only does this approach put you at risk of attacks, but it also puts you at a very real risk of being sued in some foreign jurisdiction. In this case, a very weak trademark infringement claim was asserted by an Oregon corporation against a Louisiana business, and the Oregon corporation promptly got sued in Louisiana. For those of you who have never been to the state of Louisiana, “home cooking” is a specialty. Putting yourself in a position in which you are playing on the other party’s turf is not desirable.

The Plaintiff is the operator of the website “www.surepharmacy.com”. It is a Louisiana corporation. Shurfine Foods, the Defendant, is an Oregon corporation engaged in the business of providing wholesale retail grocery store products and operating retail grocery stores. “Shurfine” had allegedly threatened litigation against the Plaintiff because the Plaintiff’s operation at “surepharmacy” allegedly was trademark infringement on the “shurfine” trademark of the Defendant.

The Plaintiff filed suit requesting the court to declare that it is not infringing the trademarks of the Defendant. Dozier Internet Law Cross-Reference Number 1282.

PPG INDUSTRIES, INC. AND PPG ARCHITECTURAL FINISHES, INC. v. SHERWIN-WILLIAMS CO.
WESTERN DISTRICT OF PENNSYLVANIA (PITTSBURGH)
2:09-CV-00124
FILED: 2/02/2009

The clear lesson to be learned in this case is that even the big boys sometimes apparently fail to get “trademark clearance” prior to domain name purchases. Had a quality search been conducted, Sherwin-Williams certainly would have become aware of the use of the “trademark term” by the Plaintiff and likely avoided this litigation.

PPG is a distributor of architectural paint products and services in the United States and claims to own a common law trademark in the term “colors of inspiration”. The lawsuit alleges that PPG “owns a valid and subsisting U.S. trademark application”, which means that they have applied for a U.S. registered trademark but don’t have one yet. The Defendant is the well known paint retailer. Sherwin-Williams is alleged to have acquired domain names incorporating the “colors of inspiration” mark in 2007 and 2008 and is using the domain names in connection with an online color-matching service.

Plaintiff has sued for trademark infringement, unfair competition, cybersquatting, unfair business practices, and state trademark infringement. The relief requested includes a preliminary and permanent injunction prohibiting Defendant from using the trademark term, an award of monetary damages including profits, attorneys’ fees and costs, triple damages, statutory damages under the cybersquatting act, punitive damages, and an award requiring the transfer of the domain names to the Plaintiff. Dozier Internet Law Cross-Reference Number 1283.

Dozier Internet Law Federal Court Report: January 2009 Domain Name Dispute Lawsuits

2009-02-12T11:28:00.000-08:00

Dozier 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.

ADVANCE PUBLICATIONS INC., ET AL. v. DAUBEN INC. AND JOSEPH GLEN DAUBEN
NORTHERN DISTRICT OF TEXAS (DALLAS)
3:09-CV-00204
FILED: 1/30/2009

You don’t have to use the exact trademark of another party to be subject to a trademark infringement claim. Using a domain name that is a close misspelling of someone else’s trademark name can be trademark infringement if you are operating in the same category of goods and services.

The Plaintiffs are publishers of a number of high profile magazines an journals. In 2008 Forbes ranked Advanced Publications as the 41st largest private company in the United States. The Defendants allegedly purchased a number of domain names that are close misspellings of the Plaintiffs’ registered trademarks.

The lawsuit alleges federal trademark infringement, violations of the Anti-Cybersquatting Consumer Protection Act, violation of the Federal Dilution Act, unfair competition, injury to business reputation, and breach of contract. The lawsuit requests extensive injunctive relief as well as an award of statutory damages of $100,000.00 per domain name under the Anti-Cybersquatting Act, compensatory damages, punitive damages, triple damages, reasonable attorneys’ fees and its cost of the suit. Dozier Internet Law Cross-Reference Number 1271.

VERIZON CALIFORNIA INC., ET AL. v. LEAD NETWORKS DOMAIN PRIVATE LIMITED, ET AL.
EASTERN DISTRICT OF VIRGINIA (ALEXANDRIA)
1:09-CV-00093
FILED: 1/30/2009

Verizon was recently awarded $50,000.00 per domain name in what appears to be a similar case. This multi-million dollar judgment, while likely very difficult to collect, is an indication that the courts are deferring to the intent of Congress in assessing damages. The law provides for up to $100,000.00 per domain name and until recently the settlement figures in such situations per domain name was nowhere near the amount being awarded by the courts today. It is worthwhile to note that the previous case was a default judgment in which the Defendants did not appear.

Plaintiff is a well known wireless and hard-line telephone service provider and related companies. The Defendants are alleged to have purchased, and are using in a competitive manner, 241 domain names that are confusing similar to the Plaintiffs’ marks. These domain names are either misspellings of the “Verizon” trademark or use the exact trademark with other words.

The Plaintiff has sued for cybersquatting and contributory cybersquatting. Plaintiff has requested the transfer of the domain names, statutory damages of $100,000.00 per domain name, compensatory damages, triple damages, attorneys’ fees, interest and the cost of the lawsuit. Dozier Internet Law Cross-Reference Number 1272.

Dozier Internet Law Federal Court Report: December 2008 Domain Name Dispute Lawsuits

2009-01-09T12:36:00.000-08:00

Dozier 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.

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. Dozier 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. Dozier Internet Law Cross-Reference Number 1260.

Dozier Internet Law Federal Court Report: November 2008 Domain Name Dispute Lawsuits

2008-12-18T11:52:00.000-08:00

Dozier 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.

LEASE ACCEPTANCE CORP. v. BANK OF AMERICA CORPORATION
EASTERN DISTRICT OF NEW YORK (CENTRAL ISLIP)
2:08-CV-04673
FILED: 11/19/2008

The question often arises as to what options, if any, exist once you have lost a UDRP arbitration. Within 10 days you can file a lawsuit for a declaratory judgment attacking the arbitration decision. After such time, although it is not widely understood among domain name owners, you can also file a lawsuit attempting to recover a domain name from someone who has prevailed in a UDRP proceeding and has already gained possession of the domain name.

The Plaintiff filed suit against Bank of America after Bank of America won a UDRP proceeding and the domain name "www.uscapitaltrust.com" was ordered to be transferred to Bank of America.

This is a lawsuit for a declaratory judgment that the Plaintiff is the lawful owner of the domain name and that the Defendant has no right to own or have the registration of the domain name transferred to it or the registration cancelled. No damages are requested. Dozier Internet Law Cross-Reference Number 1244.

BELLAGIO LLC, ET AL v. SMART ANSWER S.A. AND SUSANNA GONZALES
DISTRICT OF NEVADA (LAS VEGAS)
2:08-CV-01569
FILED: 11/13/2008

No matter where you are located in the world, the fact remains that U.S. laws can be applied in U.S. courts against those infringing on trademarks.

Bellagio, LLC owns and operates the Bellagio Resort Hotel Casino in Las Vegas, Nevada. The Defendant is alleged to have purchased numerous domains containing the name of casinos owned by the Plaintiff between May 7th and May 18th, 2008 and linking those to a website that then provided links to an online gambling website. The Defendants appear to be residents of Panama.

The lawsuit is brought for alleged cybersquatting, trademark infringement, unfair competition under the federal trademark law, trademark dilution, Nevada state trademark infringement, Nevada State trademark dilution, common law trademark infringement, deceptive trade practices, and intentional interference with prospective economic advantage. The Plaintiffs have requested compensatory, consequential, statutory, exemplary, and punitive damages, together with an award of interest, costs, and attorneys' fees, and the issuance of both temporary and permanent injunctive relief against the Defendant's continued use of the domain names. Dozier Internet Law Cross-Reference Number 1245.

WILCOX ASSOCIATES, INCORPORATED, ET AL v. XSPECT SOLUTIONS, INC.
EASTERN DISTRICT OF MICHIGAN (DETROIT)
2:08-CV-14695
FILED: 11/05/2008

Domain owners may think that the only risk is losing the domain name in a UDRP ICANN arbitration proceeding. In fact, a lawsuit can be filed against the owner of a domain name seeking significant monetary damages without resorting to a UDRP arbitration, or even after arbitration has been decided. When faced with an alleged "cybersquatting" claim more and more clients are finding that merely transferring the domain name does not solve the problem. A full and final release of all claims should be the objective.

The Plaintiffs are an affiliated group of companies in the business of providing, developing, manufacturing, and selling dimensional metrology products, a type of measuring machine. The Defendant is in the same business. The Plaintiffs filed an ICANN domain name dispute and obtained the transfer of 42 domain names that were registered by XSpect that allegedly infringed on the Plaintiff's trademarks. Xspect is alleged to have continued to maintain ownership of other domain names, and this lawsuit was brought by the Plaintiffs for damages.

The lawsuit alleges trademark infringement, false designation of origin, false advertising, cybersquatting, and common law trademark infringement. The lawsuit requests damages and entry by the court of preliminary and permanent injunctive relief against the further use of these domain names, the Plaintiffs' related trademarks, and any domain names that are identical or confusingly similar to its trademarks. Dozier Internet Law Cross-Reference Number 1246.

Dozier Internet Law Federal Court Report: October 2008 Domain Name Dispute Lawsuits

2008-11-21T08:43:00.000-08:00

Dozier 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.

CASH4GOLD, LLC v. C.J. ENVIRONMENTAL, INC.
SOUTHERN DISTRICT OF FLORIDA (FT. LAUDERDALE)
0:08-CV-61622
FILED: 10/16/2008

Copyright infringement occurs when there is "substantial copying" of a creative work. What about the case in which insubstantial copying occurs but the overall "look and feel" of a competing website misleads consumers to think that website is your website? There are "unfair competition" laws that vary from state to state that often provide a very broad legal basis for asserting claims against unfair, yet not otherwise illegal, conduct.

Cash4Gold assesses the value of gold received and offers to pay customers based on the assessed value. The company eliminates middlemen and brokers so that it can effectively allow consumers to deal directly with a refiner that the Plaintiff works with in Florida. The Defendant is a direct competitor of the Plaintiff, replicates advertisements of the Plaintiff, uses icons that are identical in appearance to the Plaintiff's on its own website, uses copyright protected artwork of the Plaintiff on its website, and typo-squats on its domain name through close misspellings and then redirects the traffic to its own website.

The lawsuit alleges copyright infringement, federal unfair competition, violations of the Florida Deceptive and Unfair Trade Practices Act, state unfair competition, false advertising in violation of the federal trademark laws, and tortious interference with advantageous business relationships. Plaintiff requests an award of compensatory damages, court costs, expenses, reasonable attorneys' fees, and the entry of extensive court orders including post-judgment remedies. Dozier Internet Law Cross-Reference Number 1234.

ING BANK, FSB AND ING DIRECT BANCORP v. JOHN B. YUNITS
DISTRICT OF MASSACHUSSETTS (BOSTON)
1:08-CV-11746
FILED: 10/15/2008

Though ING may not have realized it, it was operating an affiliate marketing program. The practice of an affiliate marketer using the domain name of the advertiser is nothing new. The nature of the relationship, or the terms of the contract, will ultimately define whether an affiliate marketer can use the domain name of an advertiser. Of course, your business needs to implement tighter controls on affiliates than is present here.

ING provides banking services offered over a computer network to its customers nationwide and owns the trademark "ING Direct". As part of its banking services, ING offered an incentive program, by which existing ING customers can be paid for referring new customers to ING. There was a limit of 25 referrals allowed per customer. The Defendant is alleged to have created a domain name and related website at "www.INGDirect25.com", started generating referrals, and then manipulated ING's website so as to bypass the referral limitation. Over the course of the summer of 2008 the Defendant referred 918 new ING customers and was compensated for the referrals.

The Plaintiff sued for trademark infringement, trademark dilution, cybersquatting, Massachusetts state law trademark infringement and dilution, and conversion. The prayer for relief includes a request for the entry of preliminary and permanent injunctive relief against the further use of ING's trademark by the Defendant, an award of actual and statutory damages, attorneys' fees and costs. Dozier Internet Law Cross-Reference Number 1235.

Dozier Internet Law Federal Court Report: September 2008 Domain Name Dispute Lawsuits

2008-10-21T12:00:00.001-07:00

Dozier 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.

MARC RASMUSSEN v. SARASOTA ASSOCIATION OF REALTORS, INC.
EASTERN DISTRICT OF VIRGINIA
FILED: 9/15/2008
1:08-CV-00954

This case is a perfect example of how you handle a decision by the arbitration panel under the UDRP guidelines when a bad decision is reached, which appears to be happening more and more often. Note that you can bring a lawsuit like this against either the domain name and/or the parties contesting your rights to the domain name in the jurisdiction of the registrar, or registry.

Rasmussen lost a UDRP arbitration over his ownership of the "thesarasotamls.com" domain name. The arbitration panel ordered that the domain name be transferred to the Defendant. This "in rem" lawsuit followed in the United States District Court for the Eastern District of Virginia, Alexandria division, which is the location of Network Solutions, LLC, the registrar of this particular domain name and also the acting registry of many registrars.

This is a lawsuit not only over the domain name under "in rem" jurisdiction but also against the Defendant for declaratory and injunctive relief of non-infringement. The lawsuit also requests an award of attorney's fees, court costs, and other relief as the court deems proper and just. Dozier Internet Law Cross-Reference Number 1226.

H. JAY SPIEGEL & ASSOCIATES, P.C. v. STEVEN M. SPIEGEL
EASTERN DISTRICT OF VIRGINIA (ALEXANDRIA)
FILED: 9/12/2008
1:08-CV-00949

This type of lawsuit is becoming more prevalent. In this instance you have a trademark registered by the law firm and used in a very narrow geographic region. A website launched anywhere could arguably solicit legal services within that region and one of the more prevalent issues online relating to business names is the expansion of the geographic use of business names, which obviously leads to many more conflicts than in the pre-Internet days.

The Plaintiff, a law firm, filed suit against an individual with a similar name that launched a website at "www.spiegellaw.com". The content of the website allegedly caused confusion by associating the website with Plaintiff's law firm.

The lawsuit includes a count for federal trademark infringement, federal unfair competition, and trademark infringement and unfair competition under Virginia common law. The relief requested includes an award of damages, and the entry of an injunction enjoining and restraining the Defendant from using the domain name in connection with the advertisement or rendering of legal services online. There is no claim for cybersquatting asserted. Dozier Internet Law Cross-Reference Number 1227.

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

2008-09-25T11:44:00.000-07:00

Dozier 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.

NEXTPOINT, INC. v. NEXTPOINT NETWORKS, INC.
NORTHERN DISTRICT OF ILLINOIS (CHICAGO)
1:08-CV-04593
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. Dozier Internet Law Cross-Reference Number 1207.

ANDY’S MUSIC, INC. v. ANDY’S MUSIC, INC.
SOUTHERN DISTRICT OF ALABAMA (MOBILE)
1:08-CV-00463
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. Dozier Internet Law Cross-Reference Number 1208.

VOLKSWAGEN, AG, ET AL. v. VOLKSWAGENTALK.COM
EASTERN DISTRICT OF VIRGINIA (ALEXANDRIA)
1:08-CV-00819
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 “www.volkswagentalk.com” 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. Dozier Internet Law Cross-Reference Number 1209.

Dozier Internet Law Federal Court Report: Domain Name Dispute Lawsuits

2008-09-25T10:47:00.000-07:00

Dozier Internet Law and John W. Dozier Jr., Esq. have now moved the online version of the Dozier Internet Law Federal Court Report to the blogging environment. We'll continue to maintain the historical case filings and comments issued prior to September 1, 2008 on the main Dozier Internet Law website. This blog focuses exclusively on domain name dispute lawsuits. Enjoy...and stay informed!