Traverse Internet Law Federal Court Report: November 2009 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.


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. Traverse 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. Traverse Internet Law Cross-Reference Number 1381.

Traverse Internet Law Federal Court Report: October 2009 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.

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. Traverse 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. Traverse Internet Law Cross-Reference Number 1369.

TraverseInternet Law Federal Court Report: September 2009 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.


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. Traverse 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. Traverse Internet Law Cross-Reference Number 1360.

Traverse Internet Law Federal Court Report: August 2009 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.

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. Traverse Internet Law Cross-Reference Number 1349.

Traverse Internet Law Federal Court Report: July 2009 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.


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. Traverse Internet Law Cross-Reference Number 1339.

Traverse Internet Law Federal Court Report: June 2009 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.

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. Traverse Internet Law Cross-Reference Number 1330.

Traverse Internet Law Federal Court Report: May 2009 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.


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. Traverse 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. Traverse Internet Law Cross-Reference Number 1322.

Traverse Internet Law Federal Court Report: April 2009 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.


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. Traverse 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. Traverse Internet Law Cross-Reference Number 1313.

Traverse Internet Law Federal Court Report: March 2009 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.


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. Traverse Internet Law Cross-Reference Number 1302.

Traverse Internet Law Federal Court Report: February 2009 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.

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. Traverse 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. Traverse 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. Traverse 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. Traverse Internet Law Cross-Reference Number 1283.

Traverse Internet Law Federal Court Report: January 2009 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.


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. Traverse 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. Traverse Internet Law Cross-Reference Number 1272.

Traverse Internet Law Federal Court Report: December 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.

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