Kevin Daste the owner of the domain name LegalSupply.com has appealed the UDRP decision in which the panel awarded the domain name over to eLegalSupply.com
The case was filed in the Louisiana Eastern Federal District Court.
The case is Daste v. Elegalsupply.com LLC
We called out the panel for what we thought was a bad decision and its good to see the domain owner appeal the decision.
The complaint asks the court for a declaratory judgment that Plaintiff’s registration and use of the domain name LEGALSUPPLY.COM does not constitute trademark infringement, unfair competition, or a violation of the Anti-cybersquatting Consumer Protection Act (“ACPA”), and that Plaintiff is the rightful registered name holder or registrant of the Domain Name.
This action also seeks relief for Defendant’s bad faith actions constituting common law unfair competition and unfair competition under Louisiana Unfair Trade Practices and Consumer Protection Law Sections51:1401 et seq.
Daste is a web developer who has developed several businesses and websites including without limitation: Crawfish.com, AllWebJobs.com, AdminCareers.com, RunningOfTheBulls.com, NolaMedia.com, LocalAdvertiser.com, Pralines.com, BusinessAnalytics.com, CaliforniaFunding.com, and RedBeansAndRice.com.
Mr. Daste alleges in his complaint that
“Recently, many overreaching trademark owners have sought to capitalize on this thriving market by filing baseless trademark infringement lawsuits or taking advantage of the administrative system set up by ICANN (the California corporation that administers the Domain Name System (“DNS”)), using this system to intimidate domain name holders into transferring their domain names, and swiping valuable descriptive, generic, keyword and/or dictionary domain names away from their rightful owners. These abusive lawsuits are threatening meaningful development of domain name and Internet investment and innovation.”
“Such is the situation that is before the Court in this Complaint. ”
“On February 22, 2007, Plaintiff purchased and registered the Domain Name in good faith for the sum of $685.00 by successfully participating in a public auction hosted by SnapNames.”
“Plaintiff bid against eleven (11) third party auction participants, which is a reflection of the market value of generic descriptive domain names.”
Since his original registration of the Domain Name on February 22, 2007, to the present, Plaintiff has been the continuous owner of the Domain Name and the real party of interest of the Domain Name registration.
“Thus it appears Defendant has been unconcerned with the registration of the Domain Name for at least fourteen years before initiating the UDRP against the Plaintiff.”
“Plaintiff has never offered to sell the Domain Name to Defendant, nor attempted to disrupt the Defendant’s business by confusing consumers trying to find the Defendant’s website, or otherwise.”
“Defendant made an unsolicited offer to purchase the Domain Name from Plaintiff, to which Plaintiff responded.”
“Content at the website has never been focused upon Defendant, Defendant’s business, or Defendant’s competitors, but instead has displayed and linked to a variety of information and advertising content relevant to web users who visit the site.”
“The Weak Trademark on the Supplemental Register & the Descriptive Domain Name”
“Defendant filed a trademark application for the mark “eLegalsupply.com” on January 28, 2008, and secured a registration on the Supplemental Register on August 5, 2008.”
“The Domain Name itself consists of two dictionary words “legal” and “supply.” Manifestly two generic descriptive words for the products associated with legal supply.”
“There are several active US trademark registrations, not owned by Defendant, that use the terms “Legal” and “Supply.”
“There are some 1223 active trademark records in the US Patent and Trademark Office that contain the word LEGAL, and with the exception of one, are not owned by Defendant.”
“There are some 1912 active trademark records in the US Patent and Trademark Office that contain the word SUPPLY, and with the exception of one, are not owned by Defendant.”
“There are thousands of legitimate uses of the terms LEGAL and SUPPLY together with domain names and websites owned by third parties – in addition to LEGALSUPPLY.COM, active website of similar domains not affiliated with the Defendant,include: LEGALSUPPLY.NET LEGALSUPPLYSHOP.COM, LEGALSUPPLYSPECIALTIES.COM, LEGALSUPPLYYELLOWPAGES.COM, LEGALSUPPLIES.COM, LEGALSUPPLIES.NET, LEGALSUPPLIES.ORG, LEGALSUPPLIESOFTEXAS.COM, LEGALSUPPLIESONLINE.COM, LEGALTREEOFFICESUPPLY.COM, LEGAL-FORM-SUPPLY.COM, LEGAL-OFFICE-SUPPLIES.COM, LEGALCORPSUPPLIES.COM,LEGALFORMSSUPPLIER.COM,LEGALFORMSUPPLY.COM, LEGALOFFICESUPPLIES.COM, LEGALOFFICESUPPLIES.NET, LEGALOFFICESUPPLIES.ORG,LEGALOFFICESUPPLIES.INFO, LEGALOFFICESUPPLY.COM LEGALPAPERSUPPLY.COM, LEGALSHIELDSUPPLIES.COM.…
June 7, 2012 No Comments
According to ipwatchdog.com, “Colombia just became the 87th member of the international trademark system following the deposit of its instrument of accession to the Madrid Protocol for the International Registration of Marks by Vice President Angelino Garzón with WIPO Director General Francis Gurry on May 29, 2012.”
This might be of particular import to those with .Co domain names and other Spanish domains
“The treaty will enter into force with respect to Colombia, on August 29, 2012.”
“The Madrid System for the International Registration of Marks (Madrid system) offers trademark owners a cost effective, user friendly and streamlined means of protecting and managing their trademark portfolio internationally.”
“Colombia is the second country in the Latin American region to join the Madrid trademark filing system.”
“Under the WIPO-administered Madrid system, a trademark owner may protect a mark in up to 86 countries plus the European Union with its Community Trade Mark (CTM) by filing one application, in one language (English, French or Spanish), with one set of fees, in one currency (Swiss Francs).”
“Applicants wishing to use the Madrid system must apply for trademark protection in a relevant national or regional trademark office before seeking international protection. An international registration under the Madrid system produces the same effects as an application for registration of the mark in each of the contracting parties designated by the applicant.”
“If protection is not refused by the trademark office of a designated contracting party, the status of the mark is the same as if it had been registered by that office. Thereafter, the international registration can be maintained and renewed through a single procedure. Thus, the system provides a cost-effective and efficient way for trademark holders to secure and maintain protection for their marks in multiple countries.”
May 30, 2012 No Comments
Back in October 2010 we told you about a lawsuit for trademark infringement that Facebook filed against the site Faceporn.com
Yesterday a federal court affirmed a lower courts order throwing the case out for “lack of personal jurisdiction” against the owner of Faceporn.com
The owner of Faceporn is Thomas Pedersen of Bergen, Norway.
According to federal law for a nonresident defendant to be sued in the US they must be found commit an intentional act expressly aimed at the forum state and that caused harm that the nonresident defendant knew would likely be suffered in the forum state which in this case was California.
The previous judge ruled that Facebooke failed to “put forth factual allegations that suggest that confusion actually has occurred or that any of Facebook’s potential customers have been sidetracked to Faceporn’s website as a result of defendants’ conduct.”
May 22, 2012 No Comments
Norcross is a city in Georgia
Today Marchex the domain holder represented by John Berryhill won a three member panel UDRP decision on the domain name.
At the time we didn’t know who filed the UDRP but it was the Norcross Corporation who had a Trademark on the term Norcross since 1969
The decision contains a sentence all domainers should love:
““A domain name registrant is always permitted to sell a domain name to which it has rights for a profit; that constitutes bad faith only when the domain name was acquired primarily for the bad faith purpose of selling it to the trademark owner. “
Here are the relevant findings by the Panel:
“The Complaint further alleges that, as of March 28, 2012, the domain name <norcross.com> was not being used for legitimate business purposes. Complainants indicate that, when Respondent was contacted regarding the transfer of the domain name, Respondent replied that it “does not entertain offers for less than $30,000.” According to the Complaint, the $30,000 price tag far exceeds any reasonable out-of-pocket costs incurred by Respondent in regards the domain name.”
“Respondent notes that the disputed domain name was originally registered by Ultimate Search in 2000, and acquired by Respondent in late 2004. ”
“Respondent further indicates that the domain name in issue corresponds to a prominent beltway municipality of the Atlanta area and that the links on the page correspond to hotels, airports, new homes, and car rentals in Atlanta, as well as to hotels in Savannah and Athens, Georgia. ”
“The Complainant here makes no allegation that the Respondent’s use of the domain name for these several years has in any way targeted, harmed, or disrupted the Complainant’s business. Moreover, the Complainant shows clearly that the domain name is used for such advertising subjects as travel, lodging, and in particular relation to Georgia, where Norcross is located. This is classic descriptive use of a domain name under the Policy.”
“With respect to the issue of bad faith registration and use, Respondent contends that the Policy does not proscribe the general trade in domain names on the secondary market. What the Policy does proscribe, Respondent asserts, is the registration of a domain name primarily for the purpose of extorting the owner of a mark, i.e., with an intention arising from knowledge of its value as nothing other than a trade or service mark associated with one party.…
May 11, 2012 No Comments
It appears Zynga believes it owns the exclusive right to any game ending in the term: “Ville”
According to Gameranx.com, Zygna filed a federal law suit last Friday against Kobojo the maker of the game, PyramidVille.
Zynga says in their complaint:
“Facebook users are likely to believe, erroneously, that PYRAMIDVILLE is a member of Zynga’s ‘VILLE Family of Games,”
In a statement Zynga said:
“Zynga’s “Ville” family includes many well-known games, including FarmVille, CityVille and CastleVille, and the “Ville” suffix is strongly associated by gamers with Zynga.
“Given Kojobo’s refusal to change their game name, legal action was necessary to defend our famous marks and prevent player confusion.”
May 9, 2012 No Comments
ICM Responds To The Manwin Anti-Trust Amended Complaint On .XXX & Asks The Court To Dismiss It Again
ICM filed a motion to dismiss Manwin’s complaint for Anti-Trust on the .XXX extension for a second time yesterday. (You can read the motion to dismiss again here).
Here are some of the highlights of the Motion to Dismiss:
“”Even though it is their second try, Plaintiffs’ First Amended Complaint fails to state a claim and should be dismissed.”
“The Amend Complaint is (like the original Complaint) nothing more than a transparent attempt to use the antitrust laws to eliminate a new internet platform for adult content—.XXX—that Plaintiff Manwin perceives as posing unwelcome competition to its dominant .com adult-entertainment empire.”
“Indeed, Plaintiffs’ various antitrust theories not only fail to allege the requisite elements of Plaintiffs’ claims for relief, they are also internally inconsistent.”
“For example, Plaintiffs contend that ICM and ICANN were conspiring to eliminate competition for the establishment of adult-oriented TLDs and .XXX registry services, notwithstanding the Amended Complaint’s detailed recitation of the long and frustrating history of ICM’s efforts to secure approval for the .XXX Top-Level Domain Name (“TLD”), including repeated ICANN rejections of its application and the apparent absence of interest from any other bidders.”
“Similarly, the Amended Complaint makes clear that Plaintiffs’ real concern is with the competition to their .com websites that may be posed by rivals offering adult content via .XXX domain names—a business in which neither ICM nor ICANN participates. But this is not a concern of the antitrust laws, which have long been held to protect the competitive process and not the profit streams of individual firms.”
“The proposed remedy for these purported violations further exposes the baselessness of Plaintiffs’ claims and their ulterior motives in bringing this action. Unable to show any damages from the challenged conduct, Manwin and Digital Playground instead seek sweeping, inconsistent and unsupportable injunctive relief.”
“Unfortunately for Plaintiffs, under the Supreme Court’s most recent formulation of the pleading standard in antitrust cases, they must do more than merely assert the existence of Sherman Act violations to get past a Rule (b) motion.
“Given the absence of factual allegations plausibly suggesting the existence of antitrust injury, standing, any unlawful ICM-ICANN agreement, or even unilateral anticompetitive conduct, the Amended Complaint must be dismissed.”
“Plaintiff Manwin Licensing International, S.à.r.l. (“Manwin”) is a business headquartered in Luxembourg that “owns and licenses the trademarks and domain names used for many of the most popular adult-oriented websites,” including YouPorn.com (“YouPorn”), the single most popular free adult video website on the Internet.…
May 9, 2012 No Comments
Well another day another horrible decision
I have no idea of how 32x.com is “Identical or Confusingly Similar” to a trademark for 32Red but that is what the panel found. The panel also disregarded the fact that the complaints waited some six years before bringing the complaint.
John Berryhill represented the domain holder.
The complaint was brought by two Complainants.
The first complainant was 32Red Plc of Gibraltar, Overseas Territory of the United Kingdom and the Second Complainant is Trafalgar Media Limited of Gibraltar (together ‘the Complainant).
The Respondent was Baysound LLC of San Pablo, California
Here are the relevant facts and findings:
The Complainant carries on business as a provider of online gambling services and has done so since 2002 under the trade mark 32RED.
The Second Complainant is a wholly owned subsidiary of the First Complainant.
The Complainant advertises and promotes its “32 Red” brand extensively.
The Complainant contends that it is commonly known by its customers and the industry as “32”.
The Complainant owns the following registered trade marks:
32RED (word) under European Community trade mark number 2814424, registered on August 16, 2002;
32RED (figurative) under European Community trade mark number 2907426, registered on October 18, 2002;
32 (word) under United Kingdom trade mark number 2509861, registered on June 5, 2009
32 (word) under European Community trade mark number and 8398695, filed on July 1, 2009 and registered on January 21, 2010.
The Complainant has operated its main website at “www.32red.com” since 2002.
The Domain Name was first registered on June 4, 1996 by the company 32X Corporation in relation to web development services.
The Domain Name was acquired by Fred Hill on or about July 16, 2006. It was then transferred to the Respondent on or about August 1, 2006. Mr. Hill appears to own and manage the Respondent.
In 2006, the website connected to the Domain Name (‘the Website’) was an online gaming site branded “The Online Casino”. As of October 2007, the Website included links to the Complainant’s competitors such as 888.com and Party Poker.
“The Panel is satisfied that the Complainant has clearly established registered rights in the trade marks 32RED and 32.”
“The Panel is also satisfied that it has established unregistered rights in the trade mark 32 RED, however, the evidence submitted to establish unregistered rights in the mark 32, i.e.…
May 4, 2012 No Comments
Last week we told you that BuyDomains.com lost a UDRP on the domain name FACI.com in a poorly reasoned decision.
Yesterday Rare Names, Inc, d/b/a BuyDomains.com filed a federal court action in the Massachusetts District Court against the UDRP complainants, Foster, Andrew & Co., Inc. and FACI Industries Corporation.
Since a UDRP is not technically appeal-able, but a new action, BuyDomains asked the court to block the transfer and for a declaratory judgement that it did not infringe on FACI trademark
The case is here
Its case: 1:12-cv-10800-DJC
Hat Tip: George Kirikos…
May 4, 2012 No Comments
A UDRP has just been filed by SMA Solar Technology AG for the three letter domain, SMA.com
Here’s the really scary part
The owner of the domain is not a domainer.
The domain is owned by Specialized Micro Architects, a company’s who initials match the domain SMA.
The domain was first registered in 1995.
The oldest record on DomainTools.com for the domain is from 2001 and at that time the current domain owner owned the domain.
The domain does not currently resolve and Screenshots.com had nothing on file for the domain.
A quick check of the USPTO found 19 live trademark for the term SMA.…
May 1, 2012 No Comments
The High Court in England ruled today that 5 of the UK’s largest internet service providers (ISP’s) have been ordered to prevent their subscribers from accessing the file-sharing website The Pirate Bay.
The five ISP’s are Sky, Everything Everywhere, TalkTalk, O2 and Virgin Media.
According to zdnet.co.uk, blocking will “come into place over the course of the next few weeks”
“The High Court has confirmed that The Pirate Bay infringes copyright on a massive scale. Its operators line their pockets by commercially exploiting music and other creative works without paying a penny to the people who created them. This is wrong — musicians, sound engineers and video editors deserve to be paid for their work just like everyone else”
Of course this sets a precedent that ISP’s can be order to block access to other sites in the future…
April 30, 2012 No Comments