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The Dozier Federal Court Report: Domain Name Case Notes. When you visit the main Dozier Net Attorney Domain Name Page you'll find articles on domain name law and a listing of the many legal matters Dozier Internet Law has undertaken over the years.

Net Attorney Reports on Domain Name Lawsuits

Litigation is extremely expensive. Knowing what tactics or practices can get you sued is imperative. The focus of The Dozier Federal Court Reports is to keep you abreast of the issues that are getting businesses in trouble. Understanding what strategies, tactics and practices are getting online businesses sued will help you make better informed decisions. Of course, all references to facts or summaries of facts are based upon the allegations in the lawsuit only and we make no representation as to whether the facts alleged will ultimately be proven truthful. These case comments are not intended to be legal advice, and you should consult your Internet law expert attorney for guidance and advice.

SOUTH DAKOTA DEPARTMENT OF GAME, FISH, AND PARKS v. SOUTH DAKOTA WEB TRAVELER, INC., A SOUTH DAKOTA CORPORATION DISTRICT OF SOUTH DAKOTA (WESTERN DIVISION) 5:08-CV-05048

FILED: 05/22/08

Once again a domain name owner is faced with a close call. Generally geographic locations are not subject to trademark protection. At least one of these domain names is obviously generic and nondescript in nature and will likely not be a protected trademark. The names of specific lodges might receive trademark protection. What I find most interesting about this lawsuit is that the use of government related names is widespread and rampant and usually garners the attention of the state when the domain names are being used to divert traffic to a competing attraction out of state. In this instance, the Defendant is not directing the traffic to attractions and businesses outside the state of South Dakota. We have handled a number of geographic description related domain name disputes and, for the most part, the cities, states, or federal governments feel that they have legal rights to all use of their geographic name, when in fact the law says quite the opposite. It will be interesting to see how this case plays out but it is very likely to settle quickly.

The state of South Dakota has brought this lawsuit for trademark infringement against the owner of "sylvanlakelodge.com", "stategamelodge.com", "bluebelllodge.com", and "custerstatepark.com" and also alleges cyberpiracy for the registration and use through what appears to be a redirect to a website located at "www.blackhillstouristinfo.com" which Web Traveler owns and uses to promote area attractions, hotels, restaurants, and other commercial interests in the Black Hills of South Dakota, including links to businesses and attractions.

The state of South Dakota alleges trademark infringement, cybersquatting, violations of common law trademark rights, and unfair competition. Dozier Internet Law Cross-Reference Number 1176.

FLOYD MAYWEATHER, JR. v. ATLANTA SPORTS AND ENTERTAINMENT MARKETING DISTRICT OF NEVADA (LAS VEGAS) 2:08-CV-00641

FILED: 05/19/08

FLOYD MAYWEATHER v. CHRISTIAN FIGUEROA DISTRICT OF NEVADA (LAS VEGAS) 2:08-CV-00597

FILED: 05/09/08

FLOYD MAYWEATHER, JR. v. SOFT WEBCOM DISTRICT OF NEVADA (LAS VEGAS) 2:08-CV-00598

FILED: 05/09/08

FLOYD MAYWEATHER, JR. v. RECAPTURED.COM DISTRICT OF NEVADA (LAS VEGAS) 2:08-CV-00599

FILED: 05/09/08

There are a number of issues involved in these lawsuits. One of these cases deals with a fan club, another case deals with the use of only his last name which is not inherently distinctive and arguably does not have common law rights attached to it, and two others that apparently use this famous boxer's name to direct traffic to boxing industry sites. There are many, many issues that have to be considered when acquiring interests in domain names that potentially infringe on registered and/or common law trademarks.

Four lawsuits have been filed in Las Vegas by the "best pound for pound fighter in the world and one of the best technical boxers of all time" against cybersquatters. The first case involves the use of his nickname in the domain name "www.moneymayweather.net". The second case involves the use of "www.mayweatherpromotions.com", which is obviously a partial use of the boxer's name. The third case is based upon the registration and use of "www.floydmayweather.com". All three of these sites allegedly linked to boxing and related services. The fourth Defendant was sued for using the "www.floydmayweather.net" domain name and having it resolve to a website that purported to be Mayweather's official website. All of these sites are alleged to have a commercial interest in using the domain name.

The lawsuits allege cybersquatting, unfair competition, common law trademark infringement, deceptive trade practices, unauthorized commercial use of right of publicity, and intentional interference with prospective economic advantage. Each lawsuit requests that the court grant a preliminary and permanent injunction, an award of compensatory, consequential, statutory and punitive damages, and an award of interests, costs, and attorneys' fees. Dozier Internet Law Cross-Reference Numbers 1177, 1178, 1179, and 1180.

BUY.COM, INC. v. WEBMAGIC VENTURES, LLC CENTRAL DISTRICT OF CALIFORNIA (SANTA ANA) 8:08-CV-00510

FILED: 05/07/08

Buy.com obviously has wanted, for a very long time, the ownership of "buys.com". If the facts are correct, the owners of "buys.com" just got a little bit too greedy and by using the trademark protected name of the Plaintiff the Defendant has provided the Plaintiff with ammunition to go after this domain name through not only cybersquatting claims but also trademark infringement claims. This case is no longer about a domain name, but about a trademark infringement claim and it appears buy.com has found its leverage point to secure an obviously attractive and valuable domain name.

This is a trademark infringement and domain name dispute case brought by buy.com against the owner of "buys.com". Plaintiff alleges that Defendant has a "buy.com" link on its site but when a customer clicks on the link it does not go to "buy.com" but to a listing of websites offering competing goods and services to that of buy.com.

The Plaintiff has sued for trademark infringement, false designation of origin and unfair competition, cybersquatting, common law trademark infringement, unfair competition, common law unfair competition, and declaratory judgment. Dozier Internet Law Cross-Reference Number 1181.

BUSINESS LOGISTICS GROUP, INC., ET AL. v. SIMPLEFY, INC., ET AL. DISTRICT OF NEW MEXICO (ALBUQUERQUE) 1:08-CV-00375

FILED: 04/09/08

We see this often: a key employee leaves a company and controls the registration of a domain name. Employees and others involved in the business should understand that merely having access to property doesn't entitle you to the ownership. Arguing that you have the right to leave with a software program, for example, because you had a login to the proprietary software program isn't a very convincing argument. These types of allegations usually include a count in the lawsuit for cybersquatting, which carries up to a $100,000 statutory damages provision with it.

Plaintiffs, a New Mexico corporation and its principal, provide credit card processing and point of sale solutions. Plaintiffs contend that the principal has been exclusively using the mark "Simplefy" since 2001 and filed an application with the United States Patent and Trademark Office to register the mark in connection with credit card payment processing, electronic commerce payment services, payment processing services and other financial applications which is pending. Plaintiffs further contend that its principal registered the domain name "Simplefy.com" in 2002. According to Plaintiffs, Defendants, a Nevada corporation and its principals, one of whom was on Plaintiff Business Logistic Group, Inc.'s board of directors, are also in the credit card processing business. Plaintiffs contend that Defendants changed the registration of Plaintiffs' domain name and linked it to a website promoting Defendants' services.

Plaintiffs filed suit against Defendants in federal court in New Mexico alleging unfair competition in violation of federal law, common law trademark infringement and intentional interference with prospective economic advantage. Plaintiffs' suit seeks a court declaration, preliminary and permanent injunctive relief, damages, attorneys' fees, and costs. Dozier Internet Law Cross-Reference Number 1158.

NHC GROUP, INC. v. ERIC V. SUMMERS EASTERN DISTRICT OF MASSACHUSETTS (BOSTON) 1:08-CV-10587-DPW

FILED: 04/08/08

This case is predominantly about two contracts that were signed between the Plaintiff and the Defendant relating to ownership of certain intellectual property including domain names. Once again an important lesson to be learned: never let your domain name expire, always keep active registration information up to date, and make sure that your email address is valid and whatever spam filters are in place will not intercept any email notices from your registrar.

Plaintiff NHC Group, Inc., a Massachusetts corporation, operates JobMark.com. Plaintiff's business is to manage its client's private labeled job websites which Plaintiff customizes to fit the client's needs. According to Plaintiff, it entered into a written management agreement with Defendant who owns the website SeniorJobBank.org whereby Plaintiff was to manage the operation of the website and Defendant was to be responsible for marketing and sales efforts. Plaintiff contends that the parties then entered into a second contract whereby Defendant agreed to sell all right, title and interest in Defendant's domain names "SeniorJobBank.com", "SeniorJobBank.org", "SeniorJobBank.net", "SeniorJobBank.us", and "SeniorJobBank.biz" as well as the copyrights to the web pages designed for Defendant's website, databases generated for the website and all intellectual property rights in the name "Senior Job Bank" to Plaintiff. Plaintiff alleges that the contract allowed Defendant to continue using the name "Senior Job Bank, A Non-Profit Referral Service, Inc." to run Defendant's unconnected reverse mortgage business in exchange for Defendant's agreement to support Plaintiff's application for the trade name "Senior Job Bank". Plaintiff contends that at some point after the parties entered into the second contract, the domain name "SeniorJobBank.us" inadvertently expired and Defendant immediately bought the domain name and began using it as a job advertisement website marketing to the same audience as SeniorJobBank.org. Moreover, Plaintiff contends that Defendant's new website contains multiple references to Defendant as "Senior Job Bank" as opposed to "Senior Job Bank, A Non-Profit Referral Source" which is the only name that the party's contract allows Defendant to use. Plaintiff further alleges that Defendant copied text and graphics from Plaintiff's website.

Plaintiff filed suit against Defendant in federal court in Massachusetts alleging trademark infringement, trademark dilution, unfair competition, and copyright infringement in violation of federal law. Plaintiff's suit further asserts claims of unfair competition in violation of Massachusetts law and breach of contract. Plaintiff's suit seeks an injunction enjoining Defendant from using the mark "Senior Job Bank", any domains containing the name and any colorable imitations thereof, using Plaintiff's copyrighted material, and otherwise unfairly competing against Plaintiff. Plaintiff also seeks to prevent Defendant from registering, using, or claiming ownership in the other domains that Defendant agreed to give to Plaintiff pursuant to the party's contract. Furthermore, Plaintiff's suit seeks to recover Defendant's profits, actual damages, enhanced damages, costs, and attorneys' fees. Dozier Internet Law Cross-Reference Number 1157.

JOSEPH A. LIGOTTI, JR., THE GUY FROM BOSTON v. DAVID GAROFALO DISTRICT OF NEW HAMPSHIRE (CONCORD) 1:08-CV-00119-JL

FILED: 03/31/08

This case has a little bit of everything in it. The lesson? Use written contracts to work out all of the details before entering into a business relationship relating to the web.

Plaintiff Joseph A. Ligotti, Jr. is a television and radio personality known in New England and throughout the country as "The Guy From Boston." In 2006, Ligotti began recording short performances during which he expressed his opinion in a forceful unique manner. These performances became known as "rants" and were posted on the website www.theguyfromboston.com which Defendant helped Plaintiff to set up. According to Plaintiff, in October 2007, Plaintiff filed an application with the United States Patent and Trademark Office attempting to register the service mark "THE GUY FROM BOSTON" in the entertainment industry. Plaintiff contends that in February 2008, Plaintiff received a non-final notice from the examining attorney advising him that the trademark application was incomplete because it did not identify any services associated with the mark. Plaintiff also contends that Defendant accompanied Plaintiff to a meeting wherein Plaintiff was in negotiations with a television station. Plaintiff alleges that during the negotiations, Defendant falsely asserted that Defendant owned the service mark "THE GUY FROM BOSTON" and that he was entitled to payment for Ligotti's television appearances. Plaintiff alleges that Defendant also registered the domain name "joeligotti.com" and that after Plaintiff told Defendant he was not entitled to any of his income, Defendant removed Plaintiff's picture from www.theguyfromboston.com and substituted it with another person's photograph. Plaintiff further alleges that Defendant removed the rants, links to Ligotti's performances, and links to merchandise bearing Ligotti's name and likeness from the www.theguyfromboston.com website.

Plaintiff filed suit against Defendant in federal court in New Hampshire alleging trademark infringement and unfair competition in violation of federal law. Plaintiff's suit further alleges state and common law claims of false designation of origin, unfair competition, conversion, and violation of the right to publicity. Plaintiff's suit seeks an injunction enjoining Defendant from operating and using the websites www.theguyfromboston.com and www.joeligotti.com, forcing Defendant to assign the domains to Plaintiff, ordering Defendant to return the video recordings of Plaintiff's performances, and enjoining Defendant from unfairly competing with Plaintiff. Plaintiff's suit also seeks, damages including actual damages, lost profits, disgorgement of Defendant's profits, treble damages and exemplary damages. Finally, Plaintiff's suit seeks attorneys fees and costs. Dozier Internet Law Cross-Reference Number 1139.

RECELLULAR, INC. v. ABDUL HAMZA, ET AL. d/b/a ECELLULAR RECYCLING EASTERN DISTRICT OF MICHIGAN (DETROIT) 2:08-CV-11336-GER-SDP

FILED: 03/28/08

This doesn't strike me as a particularly strong case. The names themselves are pretty different.

Plaintiff ReCellular, Inc., a Michigan corporation, has been engaged in the business of purchasing, refurbishing, marketing, advertising, and reselling cellular telephones and accessories since 1991. Plaintiff contends that it was a pioneer in its field and is a market leader commanding 53% of the used cell phone market. Plaintiff owns the trademark "RECELLULAR" and variations thereof in connection with its repairing and refurbishing of cellular telephones and associated goods and services. Plaintiff also registered the domain names "recellular.com" and "recellular.net" in 1997 and 2000 respectively. Plaintiff alleges that Defendants are Michigan residents doing business as eCellular Recycling who registered the domain name "ecellrecycling.com" in December 2007 and have been operating a website whereon they resell used cellular phones sent to them by their customers and collect fees and commissions from advertisers.

Plaintiff filed suit against Defendants in federal court in Michigan alleging cybersquatting, trademark infringement, trademark dilution, unfair competition in violation of federal, state and/or common law. Plaintiff's suit seeks an injunction restraining Defendants from using the names and marks "RECELLULAR" and "ECELLULAR RECYCLING" alleging that it has caused actual confusion in the marketplace. Plaintiff also seeks an order transferring the domain name "ecellrecycling.com" to Plaintiff. Moreover, Plaintiff's suit seeks compensatory damages, statutory damages, punitive damages, costs and attorneys fees. Dozier Internet Law Cross-Reference Number 1135.

DILIGENT TECHNOLOGIES CORPORATION v. VERISIGN, INC., ET AL. DISTRICT OF MASSACHUSETTS (BOSTON) 1:08-CV-10506-PBS

FILED: 03/26/08

Whatever happened to legal passive holding? Unless these marks are used in commerce to market competing services, the defendant owner has every right to own these domain names, and any claim asserted against the registrars will likely go away pretty quickly.

Plaintiff Diligent Technologies Corporation, a Delaware corporation, owns the federally registered trademarks "DILIGENT" and "DILIGENT TECHNOLOGIES" as well as a logo for "DILIGENT TECHNOLOGIES" in connection with computer software. Plaintiff contends that Defendant STC Logics is an Indian entity that purchased the domain name "DiligentTechnologies.net" which it registered through Defendant Pvt Ltd. and whose webhost is Defendant The Planet Internet Services, Inc., a Massachusetts corporation.

Plaintiff filed suit against Defendant in federal court in Massachusetts alleging trademark infringement, unfair competition and cybersquatting in violation of federal law and trademark infringement and unfair competition in violation of common law. Plaintiff contends that the registration of the domain name "DiligentTechnologies.net" by Defendant STC Logics infringes on Plaintiff's trademark rights. Plaintiff's suit seeks an order preventing Defendants from using internet domain names containing "DILIGENT" and "DILIGENT TECHNOLOGIES" and preventing the registering and future use of domain names containing those terms or any confusingly similar terms. Plaintiff further seeks an order transferring the domain name "DiligentTechnologies.net" to Plaintiff. Dozier Internet Law Cross-Reference Number 1131.

JEEVES ONLINE RESTAURANT SERVICE, INC. v. NICK VLCEK DISTRICT OF ARIZONA (PHOENIX DIVISION) 2:08-CV-00503

FILED: 03/13/08

Was the domain name procured in bad faith, a reguirement for cybersquatting? Maybe not. But this is a good example of how you could not be cybersquatting but still be potentially liable for trademark infringement, which occurs when your conduct creates a likelihood of confusion.

Plaintiff Jeeves Online Restaurant Service, Inc., an Arizona corporation, purchased all rights, title and interest in the restaurant franchise Jeeves & Company in January 2008. Jeeves & Company has been offering restaurant services since 1997 and has held federal trademark rights in the marks "JEEVES & COMPANY" and "JEEVES" since that time. Jeeves & Company promotes special events, allows customers to make reservations and makes its menu available online at its website jeevesandcompany.com. Plaintiff also owns the domain names jeevesors.com, jeeves.us, jeeves.cc, jeeves.info, jeeves.name which all point to its website jeevesandcompany.com. In January 2008, Plaintiff filed applications with the U.S. Patent and Trademark Office for trademark rights in additional categories for "JEEVES & COMPANY" and "JEEVES". Plaintiff contends that Defendant, an individual residing in Minnesota, registered the domain name "jeeves.com" in 1998 and that no content appeared on the website jeeves.com other than a single page with the name "Jeeves" until September 2007 at which time Defendant changed the content of the website to include promotions of various goods and services including a promotion of Jeeves & Company. Plaintiff contends that Defendant has never operated a legitimate business with the name "Jeeves."

Plaintiff filed suit against Defendant in federal court in Arizona alleging trademark infringement and cybersquatting in violation of federal law. Plaintiff's suit alleges that Defendant squatted on the domain name for nine years with no legitimate purpose. Plaintiff further alleges that in 2007, Defendant began listing Plaintiff's services under Plaintiff's marks on the jeeves.com website without Plaintiff's permission which is likely to cause customer confusion. Plaintiff further alleges that Defendant placed advertising on Yahoo! such that when people search for Plaintiff's website, they are presented with a link to Defendant's website which causes further confusion and attempts to deceive customers. Plaintiff's suit seeks injunctive relief preventing Defendant from using Plaintiff's marks and requiring Defendant to transfer ownership of the jeeves.com domain name to Plaintiff. Plaintiff's suit also seeks actual, exemplary, and statutory damages, attorneys fees and costs. Dozier Internet Law Cross-Reference Number 1107.

COMPUTER SALES AND SERVICES , INC. v. MOBILSTAR.COM, ET AL. DISTRICT OF NEW JERSEY (NEWARK) 2:08-CV-01201-PGS-ES

FILED: 03/07/08

Anyone who thinks they can operate like this is asking for an expensive lesson. I am referencing the plaintiff. Anyone familiar with domain names will tell you that there is little chance you will every procure an expiring domain name because of all the automated programs that pick up the expiring domain names within seconds or minutes.

Plaintiff Computer Sales and Services, Inc., a New Jersey Corporation, sells products including laptops, cellular phones, handheld PDAs, surveillance computers and other items that bear the "Mobilstar" trademark. Plaintiff does business using the name CompAmerica and obtained the exclusive right to use "Mobilstar" as a trademark in February 2008. Plaintiff�s products are listed on its websites www.CompAmerica.com, www.kioskpcs.com, and www.mobilstar.biz. Around the time Plaintiff obtained the exclusive rights to the Mobilstar trademark, Plaintiff entered into an agreement with the owner of the domain name "Mobilstar.com" whereby the owner agreed to let the name expire on February 29, 2008 such that Plaintiff could purchase the name. On March 1, 2008, Plaintiff attempted to purchase "Mobilestar.com" but was advised that the name had been sold to one of the Defendants named in the suit.

Plaintiff filed suit against Defendants in federal court in New Jersey alleging that Defendants are cybersquatting and violating Plaintiff's trademark rights in violation of federal law. Plaintiff's suit seeks a judgment compelling Defendants to transfer the domain name Mobilstar.com to Plaintiff. Plaintiff's suit further seeks an injunction prohibiting Defendants from using the name "Mobilstar" in commerce as well as compensatory, punitive, nominal, and statutory damages, pre- and post-judgment interest and costs. Dozier Internet Law Cross-Reference Number 1096.

ADRIENNE MEINTS v. MELTECH, INC., ET AL. DISTRICT OF NEBRASKA (LINCOLN) 4:08-CV-03043-RGK-DLP

FILED: 03/07/08

Doesn't sound like a cybersquatting case to me. "Hot Adri" was apparently leasing the domain name from a third party, and the third party sold the name. There is no method of public notice or process to establish a lien on the domain name itself like your mortgage company will do when you buy a house, so title to the domain name can be put into question. A breach of contract action against the original owner might be the more appropriate way to go here, although that won't necessarily get the domain name back. Don't lease domain names if you can avoid it without going through the legal formalities necessary to protect the name going forward.

Plaintiff Adrienne Meints, a Nebraska resident, claims that she owned the rights to use the domain name "HotAdri.com" by virtue of a contract that she had with the owner of the domain name. Plaintiff alleges that she has derived most of her income by profiting from her name and likeness using the website and that she has consistently used the name "Adri," without a surname, to identify herself professionally. Plaintiff claims that the website was recently sold to Defendants in violation of her contract with its former owner.

Plaintiff filed suit against Defendants in federal court in Nebraska alleging that Defendants are cybersquatting in violation of federal law. Plaintiff further alleges tortious interference with her business. Plaintiff's suit seeks an injunction transferring the domain name "HotAdri.com" to Plaintiff as well as actual, incidental, consequential and/or statutory damages, attorneys fees and costs. Dozier Internet Law Cross-Reference Number 1098.

JOSEPH S. STURNIOLO & ASSOCIATES, INC. v. LAWRENCE DeRUSHA and ROARFROMWITHIN, LLC EASTERN DISTRICT OF MISSOURI (EASTERN DIVISION) 4:08CV00276

FILED: 02/27/08

You can infringe on another business' trademark by simply including the mark in your name. Usually, though, a successful infringement claim will be premised upon a more substantive adaptation of a superior mark than is alleged here.

Plaintiff, a Colorado corporation, is a leader in the financial planning services industry and owner of the federally registered service mark "ROAR" in association with its services. Defendant Lawrence DeRusha is a Missouri resident who has been a principal in several financial services companies and who since 1992 has been an executive coach offering seminars under the name "Positive Edge". Plaintiff alleges that in 2005, Defendant formed the limited liability company ROARFROMWITHIN, LLC and registered the domain name www.roarfromwithin.com. Defendant began using the website to advertise his seminars, books, CDs and other products. Plaintiff alleges that Defendant's use of www.roarfromwithin.com infringes on its ROAR mark which is likely to cause confusion, mistake or deception with Plaintiff's mark.

Plaintiff filed suit against the Defendant in federal court in Missouri alleging trademark infringement, unfair competition, and cybersquatting in violation of federal law and common law trademark infringement. Plaintiff's suit seeks an injunction preventing Defendants from using the mark "ROAR," "ROAR FROM WITHIN," or any colorable variation thereof, an order transferring the domain name "roarfromwithin.com" to Plaintiff, damages, an accounting of Defendant's profits, costs and attorneys fees. Dozier Internet Law Cross-Reference Number 1070.

ALKERMES, INC. v. MEDASORB TECH. CORP. AND MEDASORB TECH., INC. DISTRICT OF MASSACHUSETTS (BOSTON) 1:08-CV-10315

FILED: 02/25/08

A trademark does not have to be used exactly as it was registered in order for there to be trademark infringement. In this case one letter difference is argued to be no difference at all.

Plaintiff Alkermes, Inc., a Pennsylvania corporation, has been working on developing medicine based on innovative drug technologies since 1987. The Plaintiff has used the "MEDISORB" mark since 1988 in conjunction with its polymer-based medical products. The Plaintiff has also registered the "MEDISORB" mark with the federal government. Defendant MedaSorb Technologies Corporation, a Nevada corporation, and Defendant MedaSorb Technologies, Inc., a Delaware corporation, are using the mark and name "MEDASORB" in conjunction with their polymer-based medical products. The Defendants also use www.medasorb.com as a website for their business.

The Plaintiff has filed suit against the Defendants in federal court in Massachusetts. The suit alleges that the Defendants have committed trademark infringement under both the federal and common law by willfully using a mark that is confusingly similar to Plaintiff's mark. The Plaintiff also alleges that the Defendants' use of the similar mark constitutes false designation of origin under federal law, as well as common law unfair competition, and dilution under Massachusetts law and federal law. Plaintiff seeks an order enjoining Defendants from infringing on Plaintiff's marks and from using the Medasorb name in their business, as well as an order awarding the Plaintiff actual, multiple, and treble damages, along with attorneys' fees and costs. Dozier Internet Law Cross-Reference Number 1055.

WINONA HOMES INC. v. ELLEFSON BUILDERS, INC. DISTRICT OF MINNESOTA (DMN) 0:08-CV-00539

FILED: 02/26/2008

Winona is the name of a city or town. Proving trademark rights in the "Winona Homes" name is going to be very difficult. There is one interesting point in this lawsuit, however. The assertion that the owner of a domain name quoted a sales price is not really relevent. It is important only to show bad faith once you prove you have trademark rights. But, contrary to the way this issue is often handled in a lawsuit, there is nothing wrong with domain name owners offering to sell the name they own for any price they want. Think of domain names as real estate, and unless you have a legitimate claim to that plot of land, you can't expect the owner to just sign the deed over to you. Domain names are the real estate of the online world.

Plaintiff, a Minnesota corporation, sells and markets manufactured and modular homes and related products and services. It has operated a website at www.winonahomesinc.com since at least 2002. Plaintiff has used the trade name and trademark "WINONA MODULAR HOMES" since 1976 and the trade name and trademark "WINONA HOMES" since 1990. Defendant, a Minnesota corporation, is a competitor of Plaintiff and registered the domain names www.homeswinona.com and www.homesforwinona.com in 2006 and 2008 respectively. Defendant uses these two domain names to advertise its homes and home construction services, and it promotes these domain names on signs and in radio advertisements. In response to Plaintiff's cease and desist letter, Defendant denied committing trademark infringement and cybersquatting but offered to sell the domain names to Plaintiff for $15,000.

Plaintiff filed a lawsuit against Defendant in federal court in Minnesota. Plaintiff alleges cybersquatting, federal unfair competition, deceptive trade practices under state law, unlawful trade practices under state law, common law trademark infringement, and common law unfair competition. Plaintiff requests that Defendant's domain names be transferred to Plaintiff and that Defendant be prohibited from using Plaintiff's trademarks, trade names, and/or any confusingly similar names for any purpose. Plaintiff also asks the Court to order Defendant to recall all marketing and advertising materials that use "WINONA HOMES" or any confusingly similar mask, and that Defendant turn over to Plaintiff all materials in its possession using Plaintiff's marks. Additionally, Plaintiff requests damages, costs, and attorneys' fees. Dozier Internet Law Cross-Reference Number 1062.

L & M TIRE COMPANY v. DN INVESTMENT GROUP, LLC, ET AL. SOUTHERN DISTRICT OF CALIFORNIA 08CV0368

FILED: 02/27/08

Can this company in California really prevent every tire company in the US from using "express tire"? This is what is known as a very weak trademark. If you are a trademark owner, you lose the rights to the mark if you do not police it. Do you think the plaintiff has been proactively protecting this mark across the country? Other "Express Tire" tire companies appear to be in Indiana, New Hampshire, Massachusetts, Kansas, Washington, and Oklahoma from a quick review of just the first two Google organic results pages.

Plaintiff L & M Tire Company is a California company that has been doing business using the properly registered fictitious business name EXPRESS TIRE for approximately 25 years. Plaintiff has automotive service centers throughout Sothern California and owns the federally registered service marks "EXPRESS TIRE AUTO SERVICE CENTER # 1 IN SERVICE," "EXPRESS TIRE.COM AUTO SERVICE CENTER," and "EXPRESS TIRE." Plaintiff registered the domain name "expresstire.com" in the early 1990's and has used the website since 1998 to advertise its automobile repair and maintenance services, tire maintenance and retail services, and automobile service station services. Plaintiff alleges that in 2007 it inadvertently failed to renew its domain name at which time Defendants, a New Jersey limited liability company and unknown individuals associated with Defendant registered "expresstire.com." Plaintiff alleges that Defendant DN Investment Group, LLC owns and operates a portfolio of domain names and associated websites which range from advertising gateways to developed websites. Plaintiff alleges that Defendants are using expresstire.com to divert Internet users to Plaintiff's competitors.

Plaintiff filed suit against Defendants in federal court in California alleging cybersquatting, trademark infringement and unfair competition in violation of federal law. Plaintiff's suit seeks an injunction preventing Defendants from using "expresstire.com" and forcing Defendants to transfer the domain name back to Plaintiff, damages, costs and attorneys fees. Dozier Internet Law Cross-Reference Number 1069.

LUNAS CONSTRUCTION CLEAN-UP, INC., ET AL. V. NEVADA CONSTRUCTION CLEAN UP DISTRICT OF NEVADA 2:08-CV-00208

FILED 2/19/08

Merely buying a competitor's domain name is typically not illegal as long as you passively hold it and don't have it resolve to a site, unless the mark is famous. Selling a domain name to a party is not illegal if you are not cybersquatting, so this practice may be fine. The purchase of search engine keywords is still an open question as to whether it is trademark infringement or otherwise legally actionable. But, if you have a competitor inclined to flex its muscle, this conduct is a road map to getting sued.

Plaintiff Lunas Construction Clean-Up, Inc., a Nevada corporation, is engaged in the business of construction site clean-up, dumpster rentals, and the retrieval, sorting and sale of recyclable materials. Plaintiff Evergreen, LLC, a Nevada corporation, is engaged in the business of dumpster rentals, and the retrieval, sorting and sale of recyclable materials. Defendant Nevada Construction Clean Up, a Nevada corporation, is engaged in the same business as the Plaintiffs.

Plaintiffs filed suit against the Defendant in federal court in Nevada claiming cybersquatting, unfair competition, common law trademark infringement, deceptive trade practices, and intentional interference with prospective economic advantage. Plaintiffs claim common law trademark rights in their respective marks. Defendant registered a comprehensive list of domain names that allegedly contain the Plaintiffs' marks. Defendant also purchased various search engine keywords allegedly containing Plaintiffs' marks and attempted to sell one of the Plaintiffs the domain names the Defendant registered that allegedly contained that Plaintiff's own marks. Plaintiffs are seeking a preliminary and permanent injunction, compensatory damages, consequential damages, statutory damages, punitive damages, interest, costs, and attorneys' fees. Dozier Internet Law Cross-Reference Number 1049.

SNAP LOCK INDUSTRIES v. EASY SNAP FLOORS, INC., ET AL. DISTRICT OF IDAHO (BOISE) 1:08-CV-00071

Competitors are the most likely source of litigation against your business. The plaintiff apparently is suing two competitors in different suits. Keep this risk in mind. It is common for an established online company to sue the "new kid on the block" before the new business can gain traction in the marketplace.

Plaintiff manufactures and sells modular flooring and decking systems throughout the world. Plaintiff's products consist of interlocking tiles that easily snap together without any special tools. Plaintiff markets its products under a collection of marks that incorporate the word "Snap." Plaintiff has federal and foreign trademark registrations in the word "Snap-Lock" and has spent a significant amount of money to promote its products and services under the Snap name. Plaintiff promotes its products through several websites that it has created to be very distinctive. Defendant Easy Snap Floors, Inc. is a direct competitor of Plaintiff and owns and operates a website at www.easysnapfloors.com. Defendant Easy Snap Floors operates a website that uses its Easy Snap Floors mark in connection with the sale of its products. Plaintiff alleges that Defendant's mark infringes on Plaintiff's trademarks. Defendant Easy Snap Floors' website is also a copy of website that is the subject of litigation between Defendant Swisstrax and Plaintiff. Plaintiff alleges that Defendants are acting together to profit from the goodwill associated with Plaintiff's trademark and to cause customer confusion.

Plaintiff has filed suit in federal court in Idaho alleging trademark infringement and trade dress infringement under the Lanham Act, and trademark infringement, unfair competition, unjust enrichment and constructive trust under Idaho common law. Plaintiff has also alleged unfair methods and practices in violation of Idaho Code Section 48-603. Plaintiff is seeking a permanent injunction against the Defendants from participating in any activity that infringes on Plaintiff's trademark rights, including using any mark that is similar to Plaintiff's marks. In addition to a full accounting, Plaintiff has asked the Court to award it treble and punitive damages and to disgorge the Defendants' profits. Dozier Internet Law Cross-Reference Number 1033.

UPWALL, ET AL. v. GOLGOUN, ET AL. DISTRICT OF UTAH (CENTRAL) 2:08-CV-00115

The allegations are close to a classic cybersquatting situation. The tactic of acquiring a domain name containing the entirety of a registered, and often famous, trademark is nothing new. It is a particularly profitable venture for affiliate marketers redirecting the traffic. Microsoft starting filing a lot of suits about a year ago and the amount of litigation is accelerating.

Plaintiffs, operating under the "Got Beauty" mark, focus on providing expert beauty consulting services and selling salon-grade beauty supplies and cosmetics from over 160 well-known manufacturers. Plaintiffs provide their services through the website www.gotbeauty.com and through their retail store in Utah. Plaintiffs have been using the "Got Beauty" mark since August 2000 and have had a federal trademark since June 30, 2005. Defendants registered the domain name www.gotbeautyproducts.com in May 2007 and began using it to sell products in July 2007. Plaintiffs allege that they have received numerous telephone calls and emails from customers who have mistaken the Defendants' website as being owned and operated by Plaintiffs.

Plaintiffs have filed suit in federal court in Utah, alleging federal trademark infringement, federal unfair competition, and violation of Utah's Deceptive and Unfair Trade Practices Act. Plaintiffs additionally allege trademark infringement and unfair competition under Utah common law. Plaintiffs' suit seeks to prevent Defendants from marketing and selling products under the "Got Beauty" mark. Plaintiffs have also asked the Court to award treble damages, attorneys' fees and costs. Dozier Internet Law Cross-Reference Number 1037.

PETMED, LLC v. PETMED EXPRESS, INC. CENTRAL DISTRICT OF ILLINOIS 08-1039

Be careful about what you assert because once there is a legitimate dispute it is a very common practice for a prospective Defendant to file suit for a declaratory judgment in on its own turf, and that is usually where the case is heard.

Plaintiff is an Illinois-based animal clinic formerly known as Animal Medical Clinic. It has owned the domain name www.petmed.com since August 18, 1996. Plaintiff claims that it has gained common law trademark rights to the name "Petmed" because it has been using that name and operating a website at www.pedmed.com for over ten years. Defendant is a Florida-based online, mail and telephone order pet pharmacy that has federal trademarks in "PETMEDS," "1-800-PETMEDS," "1888PETMEDS" and "PETMED EXPRESS, INC." Defendant also has over 100 domain names that consist of the word "petmed," including www.petmeds.com and www.1800petmeds.com. Plaintiff claims that Defendant has been sending it cease and desist letters for the past eight years and threatening legal action. Plaintiff alleges that Defendant's most recent letter states that Plaintiff must immediately cease use of the term "Petmed" and transfer ownership of the domain name www.petmed.com to Defendant. Plaintiff claims that it was doing business first and that it is not infringing on Defendant's rights by using the name "Petmed" and owning the domain name www.petmed.com.

Plaintiff has filed suit in federal court in Illinois seeking a declaratory judgment that it has common law rights to continue using "Petmed" and "Petmed.com" and that Defendant is precluded from obtaining relief against Plaintiff. Plaintiff's suit states that it is Defendant's predecessor in interest and that Defendant has known Plaintiff was using these names for over eight years. Plaintiff seeks an order from the court stating that Plaintiff has not infringed on any of Defendant's trademark rights, that it owns common law trademark rights to "Petmed" and "Petmed.com," that it has the right to continue using "Petmed" and "Petmed.com," and that Defendant is precluded from obtaining relief against Plaintiff based on the legal doctrines of equitable estoppel, laches, and/or acquiescence. Dozier Internet Law Cross-Reference Number 1018.

JEFFREY T. LESTER v. CHRIS LACEY ORIGINALS, LLC d/b/a HUNTIN' HARD DISTRICT OF UTAH, CENTRAL DIVISION 2:08-CV-00092

You can see the pattern developing here...attempts to extend the trademark protection of a name farther and farther away from the original mark. These will come down to a battle of the experts as to whether the name is likely to cause marketplace confusion.

Plaintiff and Defendant are competing retailers of hunting-related goods and services. Plaintiff's trademark "HUNT HARD" is registered with the United States Patent and Trademark office for use in connection with men's, women's and children's clothing and with printed matter including decals, bumper stickers and window stickers. Plaintiff has been using its trademark in interstate commerce since May 2002. According to Plaintiff's Complaint, Defendant has no intellectual property rights in the "Hunt Hard" mark, but has registered the domain name www.huntinhard.com.

Plaintiff has filed suit in federal court in Utah alleging that Defendant is cybersquatting and infringing on Plaintiff's trademark in violation of federal and state law. Plaintiff's suit claims that its mark has acquired secondary meaning in the marketplace. Plaintiff alleges that Defendant is using "Huntin' Hard" and has registered the domain name www.huntinhard.com in a bad faith attempt to divert customers from Plaintiff for its financial gain. Plaintiff seeks an order preventing Defendant from purchasing or owning any domain names that contain any variation of its "Hunt Hard" trademark; an award of actual damages, statutory damages, treble damages, costs and attorneys fees; to disgorge Defendant of any profits it made in association with the use of its mark; and entry of an order requiring Defendant to transfer the domain name www.huntinhard.com to Plaintiff. Dozier Internet Law Cross-Reference Number 1020.

CPFILMS, INC. v. SHATTERGARD SECURITY & SAFETY WINDOW FILMS, INC. EASTERN DISTRICT OF MISSOURI (ST. LOUIS) 4:08-CV-00189

Standard cybersquatting case here. If a competitor's mark is contained fully within a domain name you own then it is more likely you will lose.

Plaintiff has led the window film industry for the past twenty years and is the world's largest manufacturer of window film and precision coated films. Plaintiff's mark LLUMAR was registered with the United States Patent and Trademark Office in 1978 and is now well-known by the public as identifying the Plaintiff and its products. Defendant manufactures and sells window film products in direct competition with Plaintiff. Plaintiff alleges that Defendant registered the domain name www.llumarwindowfilms.com and is pointing traffic from that domain name to its website at www.shattergard.com.

Plaintiff has filed suit in federal court in Missouri, claiming cybersquatting, trademark infringement, false designation of origin, and dilution of a famous mark in violation of federal and state law. Plaintiff also alleges that Defendant's actions constitute unjust enrichment at the expense of the Plaintiff. Plaintiff has requested that the court permanently enjoin the Defendant from using the LLUMAR mark or any similar mark in any confusing way, including as part of a domain name or in any promotional material, and order Defendant to engage in advertising that will correct any consumer confusion that has resulted from Defendant's actions. Plaintiff has also requested the transfer of the domain name www.llumarwindowfilms.com, statutory damages, Defendant's profits, attorneys' fees and costs. Dozier Internet Law Cross-Reference Number 1025.

FLOOR DECOR, LTD v. FLOOR AND DECOR OUTLETS OF AMERICA, INC. SOUTHERN DISTRICT OF TEXAS (HOUSTON) 4:08-CV-00447

Getting a trademark registered is an invitation to a lawsuit attacking the registration, and in a location far away from the registrant's local court. Be careful what you ask for when considering trademark registration!

Plaintiff is a Texas limited partnership in the business of selling, installing, and servicing floor coverings and related products. It has a Texas registered trademark in the term "Floor Decor" and has continuously used that mark since July 2000. Plaintiff is based out of a single location in Houston, Texas, but it attends many local, national and international trade shows throughout the country and thus has exposed its mark to consumers from around the world. Defendant began using the mark "Floor & Decor's Total Liquidation" in Atlanta, Georgia in May 2001, and in February 2003, it registered the domain name www.flooranddecoroutlets.com. In March 2003 Defendant renamed itself "Floor & Decor" and uses its website to sell its products. Defendant has received four federal trademark registrations that are related to its name "Floor & Decor." Plaintiff asserts that Defendant's name is causing actual customer confusion.

Plaintiff has filed a federal lawsuit in Texas, contesting the validity of Defendant's trademark registrations. As Defendant's marks have not achieved five years of continuous, uncontested use, the marks may thus be contested. Plaintiff alleges unfair competition, false designation of origin and false or misleading descriptions under federal law. Plaintiff also alleges trademark infringement, trademark dilution, injury to business reputation, and unfair competition under Texas law. Plaintiff has asked for a declaratory judgment that it owns the rights to the mark "Floor Decor" within the areas where its presence preceded the Defendant and for a decree from the court that it is entitled to a concurrent federal registration of "Floor Decor." Plaintiff has also asked the court to enjoin the Defendant from using the "Floor Decor" mark and to order the Defendant to pay treble damages, disgorge its profits, and pay attorneys' fees and costs. Dozier Internet Law Cross-Reference Number 1029.

SELA ROOFING AND REMODELING, INC. V. STIO ROOFING AND CONSTRUCTION, LLC ET AL DISTRICT OF MINNESOTA 0:08-CV-00275

This case is a good example of what can happen with former employees. It also is a lesson on why it is important to own all of the domain names that could potentially be used against your business.

Plaintiff Sela Roofing and Remodeling, Inc., founded in 1982, is the leading roofing, siding, window and gutter contractor in the Twin Cities area. Plaintiff is the registrant of the domain name "selaroofing.com." Defendant Stio Roofing and Construction, LLC was formed in 2007 by one of Plaintiff�s former employees. Defendant Michael Ricker allegedly registered the domain name "selaremodeling.com" and began using the name to direct traffic to its website, www.stioroofingandconstruction.com, which features a photo gallery of remodeling projects which Plaintiff claims it completed and Defendants are holding out as their own.

Plaintiff filed a lawsuit in federal court in Minnesota alleging that Defendants are violating the federal Anticybersquatting Consumer Protection Act by using a domain name that includes Plaintiff's name, engaging in deceptive trade practices in violation of state law, and engaging in common law trademark infringement. Cybersquatters are persons who, in bad faith, exploit famous or distinctive trademarks that have been developed and are owned by others. Plaintiff alleges that it acquired common law trademark rights to its "Sela" marks and that Defendants' use of the marks is confusingly similar and deceptive to consumers and potential customers. Plaintiff's suit seeks damages and an order preventing Defendants from further use of its "Sela" marks. Dozier Internet Law Cross-Reference Number 1002.

HEALIX INFUSION THERAPY, INC. V. HELIX HEALTH, LLC SOUTHERN DISTRICT OF TEXAS (HOUSTON) 4:08-CV-00337

Another domain name case...yes, your trademark (whether registered or unregistered) can be infringed upon by the use of close misspellings in a domain name.

Plaintiff is a Texas corporation that owns the federally registered trademarks "HEALIX" in connection with the transport of drugs, supplies and durable medical equipment, retail pharmacy services, medical employment and placement services, and healthcare management services. Plaintiff operates in 23 states, has been in business for nearly 20 years and has developed numerous proprietary products and services using the "HEALIX" mark. Plaintiff also owns various domain names which include the word "healix" including "healixhealth.org." Plaintiff alleges that Defendant is owned by Dr. Steven Murphy, a New York-based physician who refers to himself as the "Gene Sherpa." Plaintiff further alleges that Defendant attempted to register the trademark "HELIX HEALTH" with the United States Patent and Trademark Office and also established the website www.helixhealth.org.

Plaintiff filed suit in federal court in Texas alleging trademark infringement, false designation of origin and trademark dilution in violation of federal and state law. Plaintiff argues that its mark is highly unique by departing from the traditional spelling of the word by using the letter "A" instead and that there is goodwill associated with its mark. Plaintiff's suit alleges that Defendant's use and attempted registration of a confusingly similar mark "HELIX HEALTH" to promote healthcare services violates federal and state trademark laws and seeks an order preventing Defendant from using the mark and similar domain names in connection with its business. Dozier Internet Law Cross-Reference Number 1004.

REMINGTON HOTEL CORPORATION V. THE WILLIAM AND ROXANNE DAVIS CO., LLC EASTERN DISTRICT OF TEXAS (TEXARKANA) 5:08-CV-00015

The world is a smaller place. How many local businesses don't realize there is a superior or senior trademark holder someplace in the world that can effectively assert rights and sue? Get clearance before you start using a name for your website, business, products, or service offerings.

Plaintiff has used the mark "Remington" in connection with resorts, hotel and property management, project management, and hotel and resort development since 1992. It advertises its services through the website www.remingtonhotels.com. It has a federal registration for the word mark "Remington." Defendants operate a hotel in Arkansas. Plaintiff alleges that Defendants have infringed on its mark by renaming their hotel "Remington Hotel." Defendants have also registered the domain name "remington-hotel.com."

Plaintiff has filed a federal lawsuit against Defendants in Texas. Plaintiff alleges federal trademark infringement, federal unfair competition, and domain name cyberpiracy. Plaintiff has requested that the court issue an injunction restraining Defendants from using the word "Remington" or any confusingly similar mark. Plaintiff also requests the destruction of any material that infringes its mark, the transfer of the domain name remington-hotel.com, and damages. Dozier Internet Law Cross-Reference Number 1014.

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