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

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


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. Traverse Internet Law Cross-Reference Number 1441.

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

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


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. Traverse Internet Law Cross-Reference Number 1436.

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

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


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. Traverse Internet Law Cross-Reference Number 1428.

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

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


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. Traverse 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. Traverse Internet Law Cross-Reference Number 1420.

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

Traverse Internet Law Disclaimer

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

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. Traverse 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. Traverse Internet Law Cross-Reference Number 1414.

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

Traverse Internet Law Disclaimer

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


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. Traverse Internet Law Cross-Reference Number 1402.

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

Traverse Internet Law Disclaimer

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

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. Traverse 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. Traverse 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.Traverse Internet Law Cross-Reference Number 1398.

Traverse Internet Law Federal Court Report: December 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.

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. Traverse 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. Traverse Internet Law Cross-Reference Number 1396.