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.