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

Traverse Internet Law Disclaimer

The facts are unproven allegations of the Plaintiff and all commentary is based upon the allegations, the truthfulness and accuracy of which are likely in dispute.

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. Traverse 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. Traverse 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. Traverse Internet Law Cross-Reference Number 1246.

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

Traverse Internet Law Disclaimer

The facts are unproven allegations of the Plaintiff and all commentary is based upon the allegations, the truthfulness and accuracy of which are likely in dispute.

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. Traverse 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. Traverse Internet Law Cross-Reference Number 1235.

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

Traverse Internet Law Disclaimer

The facts are unproven allegations of the Plaintiff and all commentary is based upon the allegations, the truthfulness and accuracy of which are likely in dispute.

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. Traverse 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. Traverse Internet Law Cross-Reference Number 1227.

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

Traverse Internet Law Disclaimer

The facts are unproven allegations of the Plaintiff and all commentary is based upon the allegations, the truthfulness and accuracy of which are likely in dispute.


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. Traverse 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. Traverse 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. Traverse Internet Law Cross-Reference Number 1209.