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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.”

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A few weeks ago we told you a UDRP had been filed on the domain name Norcross.com.

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.…

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.”

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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.…

Well another day another horrible decision

A three member UDRP panel just gave away the domain name 32x.com to the Trademark holder of 32Red.

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.…

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…

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.…

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…

According to sfgate.com, A Federal Court in New York just awarded Hermes International $100 million dollars in damages against 34 websites that sold fake copies of its goods.

The fake goods were for “at least nine Hermes products including Birkin and Kelly handbags, wallets, watches, belts and jewelry”.

Some of the websites were:

HermesBags- Outlet.net

HermesBirkin-Bags.org

HermesOutletStore.Com

“If plaintiffs discover new domain names registered by the defendants containing one or more of the Hermes trademarks or marks confusingly similar thereto plaintiffs may bring the additional infringing domain names to the court’s attention,” Cote said.

The court also ordered that any money held by PayPal Inc. to be given to Hermes and ordered Internet Service Providers (ISP’s) and merchant account providers, as well as third-party processors and search engines including Google Inc., Microsoft Corp.’s Bing and Yahoo! Inc., to immediately stop providing services to the defendants or links to their sites.

The judge also directed social media companies including Facebook Inc. and Twitter Inc. to “de-index” and remove from any search pages links to the infringing defendants.

The order to the search engines and to the social networking companies to de-index the sites is an interesting one.

The case is Hermes International v. John Doe, 12-CV-1623, Southern District of New York.…

Congressman Eliot Engel (D-NY) and Rep. Jan Schakowsky (D-IL) introduced legislation today to protect users of social networking sites from having to divulge personal information to employers, schools and universities.

The legislation protects people already employed or enrolled, and those seeking employment or admittance, or those facing disciplinary action.

“Social media sites have become a widespread communications tool – both personally and professionally – all across the world.  However, a person’s so-called ‘digital footprint’ is largely unprotected.  There have been a number of reports about employers requiring new applicants to give their username and password as part of the hiring process.  The same has occurred at some schools and universities.  Part of the attraction to social networking is that you can feel free to interact with those you wish to, and post content as if it were part of a group dynamic.  Passwords are the gateway to many avenues containing personal and sensitive content – including email accounts, bank accounts and other information,” said Rep. Engel.

Congressman Engel’s Social Networking Online Protection Act (SNOPA) would:

• Prohibit current or potential employers from requiring a username, password or other access to online content.  It does not permit employers to demand such access to discipline, discriminate or deny employment to individuals, nor punish them for refusing to volunteer the information.
• Apply the same restrictions to colleges and universities, and K-12 schools as well.

Rep. Schakowsky said, “I am proud to be an original cosponsor of this legislation.  The American people deserve the right to keep their personal accounts private.  No one should have to worry that their personal account information, including passwords, can be required by an employer or educational institution, and if this legislation is signed into law, no one will face that possibility.”

Rep. Engel said, “Several states, including New York have begun addressing this issue, but we need a federal statute to protect all Americans across the country. We must draw the line somewhere and define what is private.  No one would feel comfortable going to a public place and giving out their username and passwords to total strangers.  They should not be required to do so at work, at school, or while trying to obtain work or an education.  This is a matter of personal privacy and makes sense in our digital world.”  Rep. Engel is a senior member of the House Energy and Commerce Committee.…