Traverse Internet Law Federal Court Report: December 2011 - 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.


A FLOWER PATCH, INC. v. JUSKA, ET AL.
SOUTHERN DISTRICT OF FLORIDA (WEST PALM BEACH)
9:11-CV-81315-KLR
FILED: 11/30/2011

The Plaintiff is suing due to its claim for “common law trademark infringement”. Given the lack of state or federal registration of the trademark it could be very difficult for this Plaintiff to prove trademark rights in such a generic phrase.

The Plaintiff is a Florida corporation and has used the term “A Flower Patch” in commerce for thirty-three years. The Defendants acquired the domain name “aflowerpatch.com” and are using it to compete against the Plaintiff.

The lawsuit alleges cybersquatting, federal trademark infringement, unfair competition, and trademark dilution. Plaintiff demands judgment against Defendants for damages, treble damages, Defendants’ profits, and attorneys’ fees and costs. Traverse Internet Law Cross Reference Number 1535.

Traverse Internet Law Federal Court Report: November 2011 - 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.


ABERCROMBIE & FITCH TRADING CO. v. LIN, ET AL.
SOUTHERN DISTRICT OF FLORIDA (FT. LAUDERDALE)
0:11-CV-62338-WJZ
FILED: 10/31/2011

You should only buy domain names when you have cleared them with your legal counsel or you are adequately familiar with the laws so that you do not put you and/or your company at risk. Remember that the damages per domain name for cybersquatting are up to $100,000.

Abercrombie is engaged in the business of manufacturing and distributing clothing and related materials throughout the world. The Defendants have registered allegedly confusingly similar domain names that include the Abercrombie name in many ways.

The lawsuit alleges trademark counterfeiting and infringement, false designation of origin, and cybersquatting. Prayer for relief requests preliminary and permanent injunctive relief from use of infringing marks and domain names, all profits and damages resulting from trademark infringement and cybersquatting activities, costs and reasonable attorneys’ fees, investigative fees, and any other relief as the Court deems just and equitable. Traverse Internet Law Cross Reference Number 1534.

Traverse Internet Law Federal Court Report: October 2011 - 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.


QUALITY CALIBRATION SERVICE, INC. v. QUALITY CALIBRATION SERVICES, INC.
EASTERN DISTRICT OF WISCONSIN (MILWAUKEE)
2:11-CV-00895
FILED: 9/23/2011

Make sure that your company does a complete and thorough “clearance” for any names it intends to use. Typically these types of clearances are conducted by attorneys and will provide you with adequate assurances of the risks associated with using a name.

The Plaintiff has offered calibration, repair, testing and measurement services using the “quality calibration service” trademark since 1984. It also owns a federal trademark registration for the term. The Defendant is alleged to be using the same name for its company and has acquired the domain name “qualitycalibrationservices.com”.

The lawsuit alleges trademark infringement, false designation and unfair competition. Prayer for relief requests permanent injunctive relief, an order requiring Defendant to transfer ownership of the infringing domain name, removal of infringing trademarks, compensatory and punitive damages and any other relief as the Court deems just and equitable. Traverse Internet Law Cross Reference Number 1528.

Traverse Internet Law Federal Court Report: September 2011 - 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.


TRUECAR, INC. v. TRUCAR.COM
WESTERN DISTRICT OF WASHINGTON (SEATTLE)
2:11-CV-01403
FILED: 8/24/2011

This is a typical process used to obtain a domain name when dealing with a Defendant that cannot easily be reached by the U.S. Courts.

The Plaintiff brings an in rem action to obtain the domain name “Trucar.com” from the Defendant. Plaintiff alleges he has a trademark in the domain name and the Defendant is unavailable.

The lawsuit alleges a violation of the Anticybersquatting Consumer Protection Act and requests that the infringing domain name be transferred to the Plaintiff along with any further award the Court deems just and proper. Traverse Internet Law Cross Reference Number 1521.

Traverse Internet Law Federal Court Report: August 2011 - 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.


SPRINKLES CUPCAKES, INC. v. PINK SPRINKLES, LCC
DISTRICT OF CONNETICUT (NEW HAVEN)
3:11-CV-01117
FILED: 7/15/2011

This is a pretty weak claim but it is fairly typical of the types of claims being asserted dealing with the Internet on a regular basis. When you do a “trademark clearance” you can determine what potential claims, if any, exist out there in commerce that could conflict with your product or business name.

The Plaintiff and Defendant are cupcake companies. The Plaintiff is a retailer in Beverly Hills and she has been featured on many television shows. The Defendant is an unrelated cupcake company that uses a name that is allegedly confusingly similar.

Sprinkles Cupcakes alleges trademark infringement, false designation or origin, cybersquatting, and unfair trade practices. Requests in the lawsuit include preliminary and permanent injunctive relief, transfer of the infringing domain name, destruction of any infringing marketing materials, maximum statutory damages, punitive damages, actual damages, attorneys’ fees and costs and any further relief the court deems proper. Traverse Internet Law Cross Reference Number 1518.

Traverse Internet Law Federal Court Report: July 2011 - 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.


JON R. TOLLESFSON v. DEANN MARIE PLADSON
SOUTHEASTERN DISTRICT OF NORTH DAKOTA
3:11-CV-00062
FILED: 6/27/2011

In my opinion it is a very sleazy tactic to attack the attorney representing an adverse party in a case. Here you have a classic example of someone who is attacking the messenger. I expect you might see a counterclaim for damages coming back in this case since in the UDRP proceeding an arbitrator cannot award damages but simply transfer the domain name.

Tollefson is a CPA and the Defendant is his wife’s attorney in his divorce. He allegedly purchased the attorney’s name as a domain name and then launched an extensive exposé pointing out how his wife’s attorney was unethical. A UDRP proceeding transferred the domain name to the attorney. This suit requests that the domain name not be transferred based on free speech grounds.

The lawsuit alleges reverse domain name hijacking and requests for a judgment affirming the Plaintiff’s rightful ownership in the domain name and injunctive relief against the enforcement of the previous UDRP decision. Traverse Internet Law Federal Court Report Cross-Reference Number 1503.

LERAF, INC. d/b/a GRAFFLE, INC. v. OMNI DEVELOPMENT, INC. d/b/a THE OMNI GROUP
NORTHERN DISTRICT OF ILLINOIS (CHICAGO)
1:11-CV-04323
FILED: 6/24/2011

There are plenty of ways to transfer a domain name or hold it in escrow. This method of allowing the seller to retain effective control of the domain name until payment is made in full is obviously not a good idea.

The Plaintiff purchased a domain name for its business but a prior registrant was to continue to serve as the administrative contact until all purchase funds had been transferred to the prior registrant. The prior registrant was served with a WIPO UDRP domain name dispute, didn’t tell the purchaser, lost the domain name, took the last payment and then told the purchaser that the domain name was no longer his to transfer.

Plaintiff requests a declaratory judgment from the Court that their registration and use of the domain name in question does not violate the Lanham Act or the UDRP and the cancellation of the Defendant’s trademark in the disputed mark. Graffle prays for preliminary and permanent injunctive relief preventing Omni from interfering with Graffle’s registration and/or use of the domain name along with attorneys’ fees and costs. Traverse Internet Law Federal Court Report Cross-Reference Number 1506.

Traverse Internet Law Federal Court Report: June 2011 - 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.

TERESA ILEEN CAZIER v. C. FREDERICK PAYNTER, ET AL.
WESTERN DISTRICT OF TEXAS (SAN ANTONIO)
5:11-CV-00399
FILED: 5/20/2011

As an online business you should be able to recognize the risks associated with using just about any name on the Internet today. “America’s Best Flags”, whether generic or descriptive, is very likely not trademark protectable unless it has acquired a secondary meaning in the marketplace. It very likely has not acquired that sort of meaning in the minds of the public but this again shows the extent to which businesses are attempting to protect their names, even when the names are not seemingly protectable under trademark law.

In the 1990’s the Plaintiff started a flag and flagpole retail business named “America’s Best Flags”. The Defendants are alleged to have obtained the domain name “americasbestflags.com” in May of 2006 and when the Defendants received a demand letter they acquired even more domain names that were arguably confusingly similar to the Plaintiff’s business name.

Counts alleged in the lawsuit include false designation or origin, unfair competition, common law unfair competition, and trade name infringement. The Plaintiff requests injunctive relief against the Defendants along with compensatory damages, transfer of the infringing domain names, prejudgment and post-judgment interest, exemplary damages, and attorneys’ fees and costs. Traverse Internet Law Cross-Reference Number 1494.


FACEBOOK, INC. v. TEACHBOOK.COM LLC
NORTHERN DISTRICT OF ILLINOIS (CHICAGO)
1:11-CV-03052
FILED: 5/06/2011

This case is a good example of the very subjective nature of trademark infringement. Facebook will have to conduct surveys that cost over $100,000 to establish that “Teachbook” is confusingly similar to consumers. Then Teachbook will have to pay an expert a huge sum to rebut or dispute the survey evidence. These cases are often simply a battle of finances and while most of us would believe that “Teachbook” is not confusingly similar to “Facebook” the realities of litigation will likely dictate Teachbook no longer being able to use its name.

Everyone knows what Facebook is. Teachbook is a Facebook type website designed for teachers because many schools prohibit teachers from maintaining social networking profiles on Facebook. Facebook has sued because it believes that the term “Teachbook” is confusingly similar to its name and infringes on its trademark.

Facebook alleges federal trademark infringement, federal trademark dilution, federal false designation of origin, common law trademark infringement, common law unfair competition, cybersquatting, violation of the Illinois Uniform Deceptive Trade Practices Act, and trademark dilution. The lawsuit requests preliminary and permanent injunctive relief, that the Court declare that the Teachbook trademark application void, and accounting and disbursement of revenues and profits, actual damages, treble damages, punitive damages, transfer of the teachbook.com domain name to Facebook, and costs and reasonable attorneys’ fees. Traverse Internet Law Cross-Reference Number 1495.

Traverse Internet Law Federal Court Report: May 2011 - 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.

McMAHAN LAW FIRM v. RICHARD LATHAM
EASTERN DISTRICT OF TENNESSEE (CHATTANOOGA)
1:11-CV-00102
FILED: 4/20/2011

If you have been following the case reviews over the past year you will have seen this issue arise time and time again. Do not allow your web developer, web host, or employee to register your company domain name without making sure that the registrant (owner) is your business.

The Plaintiff is a law firm located in Tennessee. The Defendant was a web developer/host identified as “Plaintiff’s computer support person”. The Defendant is alleged to have purchased the law firm’s domain name and put it in his own personal name. Upon the contract ending the Defendant has demanded payment for the domain name.

The lawsuit alleges cybersquatting and tortious interference with business advantage. McMahan Law Firm requests that the Court grant temporary and permanent injunctive relief, statutory damages, transfer of the infringing domain name, costs, and attorneys’ fees. Traverse Internet Law Cross-Reference Number 1490.

Traverse Internet Law Federal Court Report: April 2011 - 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.


ACUMEN ENTERPRISES INC. v. JONATHAN MARK MORGAN
NORTHERN DISTRICT OF TEXAS (DALLAS)
3:11-CV-00619
FILED: 03/28/2011

Okay, this might be a case of cybersquatting although the Defendant only used the domain name as a tool for his own job search and it does not appear to be competing commercially with the Plaintiff. But the more interesting thing about this case is that an apparently sophisticated business operating for almost 10 years apparently never thought to spend the $8.00 to register its business name as a domain name. Make sure you register your business name, and close typos of your name, so that you can avoid this type of embarrassing and financially expensive problem.

Acumen Enterprises, the Plaintiff, was formed in November 2011, and for the fiscal year ending March 31, 2010, claims total revenues of over $6 million and 50 employees. It operates by the name “Acumen Enterprises”. The Defendant is being sued for cybersquatting because on July 21, 2010 it registered the domain name “acumenenterprises.com” and this was apparently available because the Plaintiff was using “acumen-enterprises.com”.

The lawsuit includes claims for federal trademark infringement, federal unfair competition, cybersquatting, common law trademark infringement and unfair competition, tortious interference with business relationships, and common law tort of passing off. The Plaintiff requests that the court grant them extensive preliminary and permanent injunctive relief along with transfer of the infringing domain name, a judgment for $100,000 statutory damages per infringing domain name, reasonable attorneys’ fees and costs, treble damages, and any additional relief the Court deems equitable. Traverse Internet Law Cross-Reference Number 1483.

Traverse Internet Law Federal Court Report: March 2011 - 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.


ABERCROMBIE & FITCH TRADING CO. v. VEKEY LI and DOES 1-10
SOUTHERN DISTRICT OF FLORIDA (FT. LAUDERDALE)
0:11-CV-60340
FILED: 2/16/2011

Faced with this type of a problem your company may decide it is better to file a lawsuit “in rem” to obtain the domain name and effectively shut-down the business. Otherwise, you will be faced with having to serve individual Defendants in China who are probably using aliases. The odds of identifying these people and getting them served are very low. The goal when faced with any cyber-squatting situation is to get the domain name out of play as quickly as possible, particularly when dealing with Defendants who appear to be in “China”, but could be Iranians operating through a Russian province, for instance.

Abercrombie distributes high quality luxury goods. The Defendants are allegedly offering for sale counterfeit Abercrombie branded products. Defendants are alleged to have acquired domain names that are almost identical to many of the Abercrombie trademarks. The Defendants are individuals and/or business entities of unknown make-up who likely reside in the People’s Republic of China.

The lawsuit includes trademark counterfeiting, trademark infringement, false designation or origin, and cyberpiracy. The prayer for relief requests preliminary and permanent injunctive relief, transfer of all infringing domain names, that subject domains be placed on registry hold status, cease of access to the Defendants’ websites, actual damages, treble damages, costs, attorneys’ fees, pre-judgment interest, and any other relief the Court deems proper. Traverse Internet Law Cross-Reference Number 1478.

Traverse Internet Law Federal Court Report: February 2011 - 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.


EXTREME SPORTS DIVA, LLC v. ELIZABETH MARTTILA
WESTERN DISTRICT OF WISCONSIN (MADISON)
3:11-CV-00032
FILED: 1/14/2011

Once again you have a situation in which there is a dispute about who first used a name. This is very common since the Internet expands the marketplace of a small business in a small town so it can sell throughout the United States. All too often this large geographical area means that the small mom and pop shop in the small town bumps into another company that is using the same name for the sale of the same products or services. That is why you do trademark clearances before using a name.

The Plaintiff is a specialty apparel company that designs, markets and sells the “Sled Divas®” line of women’s and girl’s clothing and accessories. Defendants compete in at least one market segment, that being woman’s apparel in the snow-mobiling sport. Plaintiff had received demands from the Defendant to cease and desist the use of its “Sled Divas” name and now files this declaratory judgment action since it claims it was using the name first.

Plaintiff alleges violation of the Lanham Act, unfair competition, and cybersquatting. Plaintiff requests the turnover of the infringing domain name, actual damages, compensatory damages, punitive damages, and reasonable attorneys’ fees. Traverse Internet Law Cross-Reference Number 1467.

Traverse Internet Law Federal Court Report: January 2011 - 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.


THE POPCORN FACTORY, INC. v. PEACE, LOVE, POPCORN, LLC and GARY PAPARELLA
NORTHERN DISTRICT OF ILLINOIS (EASTERN DIVISION)
1:10-CV-08125
FILED: 12/22/10

The party first using a trademark is often the winner in these contests. This is why “trademark clearance” is essential when selecting a name for a business because such a process identifies these types of problems in advance.

The Defendant is alleged to be using the term “Love Peace Popcorn” as its business name. Plaintiff claims it was the original user of the term and owns common law trademark rights to it. When Plaintiff received a “cease and desist” letter from the Defendant it brought this lawsuit to establish that the Defendant was the actual party infringing on its mark and not the other way around.

The Plaintiff alleges violation of the Anticybersquatting Consumer Protection Act, unfair competition, deceptive trade practices, and common law infringement. They request that Defendants’ federal registration in the mark be cancelled, permanent injunctive relief, transfer of infringing domain names, cancellation of social networking accounts using the mark, an accounting of profits, actual damages, treble damages, statutory damages, costs and attorneys’ fees. Traverse Internet Law Cross-Reference Number 1459.

Traverse Internet Law Federal Court Report: December, 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.


OASIS CHILDREN’S SERVICES, LLC v. OASIS COMMUNITY CORPORATION
SOUTHERN DISTRICT OF NEW YORK (FOLEY SQUARE)
1:10-CV-08803
FILED: 11/22/2010

Your right to acquire and use a domain name when doing business cooperatively with a third party, whether you are an affiliate marketer or a franchisee or licensee, is governed by your agreement with the owner of the trademark. Once the term of the agreement ends, i.e. your business relationship ends, you have to abandon most commercial use of the trademark. This means that if you have bought domain names you need to not only take them out of commercial use, but also recognize that if you are “parking” the domain names with no ads whatsoever you still may have the obligation to transfer those to the licensor.

Plaintiff operated summer camps in New York City and New Jersey under the trademark “Oasis”. Defendant licensed the right to use the “Oasis” mark in connection with similar after-school services offered in the New York City area. The license has expired, according to the Plaintiff, but the Defendant continues to use the name in at least two domain names.

Plaintiff alleges unfair competition, cybersquatting, copyright infringement, violation of the New York Anti-Dilution Statute, unfair competition, and breach of contract. Plaintiff requests that the Court grant preliminary and permanent injunctive relief, transfer of the infringing domain names, destruction of all infringing materials, an accounting of Defendant’s profits, compensatory damages, actual damages, punitive damages, costs, and reasonable attorneys’ fees. Traverse Internet Law Cross-Reference Number 1455.

Traverse Internet Law Federal Court Report: November, 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.


JANNA BULLOCK v. BULLOCKJANNA.COM and BULLOCK-JANNA.COM
EASTERN DISTRICT OF VIRGINIA (ALEXANDRIA)
1:10-CV-01197
FILED: 10/21/2010

This is the second lawsuit involving the same Defendant who keeps purchasing domain names of the Plaintiff. The cost of litigating in federal court is substantially greater than pursuing a UDRP arbitration proceeding. Keep in mind that when you have a domain name infringing upon your trademark sometimes these matters can be resolved without even initiating arbitration or a lawsuit by going to a web host, payment processor, domain registrar or registry, Google, or another business involved with the website.

Janna Bullock is renowned for her architectural design work in New York and Russia and is a philanthropist. The Defendant domain names are apparently owned by a Russian. The websites at the Defendant domain names contain the Plaintiff’s signature as well as certain photographs of the Plaintiff. This lawsuit is against the domain names only and attempts to have the court order the transfer of the names to the Plaintiff.

The lawsuit claims violation of the Anticybersquatting Consumer Protection Act and requests that the infringing domain names be transferred to Plaintiff. Traverse Internet Law Cross-Reference Number 1449.

Traverse Internet Law Federal Court Report: September 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.


CORONA CIGAR COMPANY v. THE WINNER’S CIRCLE CIGAR LOUNGE, LLC
MIDDLE DISTRICT OF FLORIDA (ORLANDO)
6:10-CV-01460
FILED: 9/30/2010

When you are ready to select a business, product or service name you should have your lawyer conduct a “trademark clearance” search to make sure that you are legally entitled to use the name without infringing on a third party’s trademark.

Corona Cigar Company is a Florida corporation operating retail stores and lounges that promote and sell cigars and related products. Defendant is a New Jersey corporation using the “Corona Cigar” trademark in its domain name, “thecoronacigarlounge.com”.

Claims against the Defendant include trademark infringement, cybersquatting, and unfair competition. The Plaintiff requests permanent injunctive relief, actual damages, compensatory damages, removal of all infringing content from the web, transfer of the infringing domain name, an accounting and disgorgement of Defendant’s profits, punitive damages, and reasonable attorneys’ fees, costs, and expenses. Traverse Internet Law Cross-Reference Number 1444.

Traverse Internet Law Federal Court Report: August 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.


CITY OF LA CROSSE v. DAVID ALBERTO MONTEALEGRE
WESTERN DISTRICT OF WISCONSIN (MADISON)
3:10-CV-00480
FILED: 8/24/2010

If you are going to allow a technology employee or web host to register domain names for your business make sure you have access to the registrar’s account so that you can change registrant information at will. These types of problems in which an individual has control of a domain name are very common.

The City of La Crosse, Wisconsin is suing its former director of technology for the purpose of obtaining city domain names Mr. Montealgre now possesses. The Defendant has been indicted for bankruptcy fraud and his services have been terminated by the City of La Crosse but he has failed to turn over the registration of all of the domain names he was maintaining for the city.

Plaintiff claims cybersquatting, unjust enrichment, and breach of fiduciary duty and requests that the domain names in question are transferred to the City of La Crosse along with any other domain names purchased for the city or with city funds and that Defendant be held responsible for Plaintiff’s attorney fees and costs. Traverse Internet Law Cross-Reference Number 1448.