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.