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.
