HugeDomains.com, LLC, just filed a lawsuit against ROBERT P. WILLS, MD. PA, a Texas Professional Association d/b/a AUSTIN PAIN ASSOCIATES for a declaratory judgement arising out of the UDRP decision against it on the domain name AustinPain.com.
While is you can not formally “appeal” a UDRP, if a domain name is ordered to be transferred by a panel, the domain owner has the right to file with a Federal Court an action for a declaratory judgement that the domain is rightfully owned, does not infringe a trademark owner and postpone or “stays” the order to transfer the domain.
We know its not cheap and pursue a federal court action so we applaud them for standing not only for their rights but for all generic domain holders.
The case is filed in the federal court in Colorado.
Here are the highlights:
HugeDomains brings this action to stay the transfer of the domain name to Defendant APA, to recover damages against APA for reverse domain name hijacking, and to obtain a declaration of lawful use of the domain name under the Anti-Cybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1114 (2)(D), and the Federal Declaratory Judgment Act, 28 U.S.C. § 2201. As set forth in more detail below, the domain name is neither identical to, confusingly similar to, nor dilutive of any mark belonging to APA.
APA has never used nor traded in the generic term “Austin Pain” and has no rights to that name. HugeDomains lawfully registered the domain name with no knowledge of APA, has legitimate interests in respect of the domain name, and has consistently acted in good faith.
In proceedings under the Uniform Domain-Name Dispute Resolution Policy (“UDRP”) of the Internet Corporation for Assigned Names and Numbers (“ICANN”), APA knowingly provided the UDRP panel with materially false, incomplete, and misleading information in an effort hijack the domain name from HugeDomains. APA knowingly and materially misrepresented that the domain was identical to, confusingly similar to, or dilutive of a mark belonging to APA. APA’s material misrepresentations caused the UDRP panel to order the transfer of the domain name to APA.
Accordingly, HugeDomains asks for a declaration of lawful use of the domain name, injunctive relief prohibiting the transfer of the domain name to APA, and for damages caused by APA’s reverse hijacking.
Andrew Reberry (“Reberry”), one of HugeDomains’ founders, registered the domain name in his name on behalf of HugeDomains on January 1, 2013.…
A couple of weeks ago we wrote about Trademark holders of generic terms applying to the Trademark Clearing House (TMCH) where trademarks on many of which were causing some of those 500,000 “warnings” to go out to people trying to register a new gTLD domain name.
Today we bring you the world famous trademarks for the term “Texas” and “Venture”
Jurisdiction: United States of America
Goods: IC 041. US 107. G & S: Educational Services-Namely, Providing College and Graduate Level Courses of Instruction, Continuing Education Courses and Seminars and Opportunities for Students to Participate in Research Programs, and Entertainment Services-Namely, Providing College Athletic and Sporting Events and Performances of Dramatic Works.
FIRST USE: 19140000. FIRST USE IN COMMERCE: 19140000
International Class of Goods and Services or Equivalent: class number 41: Education; providing of training; entertainment; sporting and cultural activities.
Trademark Registrant: Board of Regents, The University of Texas System
Trademark Registrant Contact: 201 West 7th Street, 78701 Austin, TX, US”"
I guess Texas A&M and Texas Tech, and Texas Christian University (TCU) are all in violation of the The University of Texas System trademark and should be ordered immediately by a court of competent jurisdiction to have to change their name might as well go after Texas High School as well.
As for the 2nd generic trademark for today we have the word “venture” which has two trademarks:
1. Mark: @VENTURE
Jurisdiction: United States of America
Goods: RISK MANAGEMENT INFORMATION SERVICES International Class of Goods and Services or Equivalent:
class number 36: Insurance; financial affairs; monetary affairs; real estate affairs.
Trademark Registrant: Hartford Fire Insurance Company Trademark Registrant
Contact: One Hartford Plaza, Hartford, CT, US
2. Mark: VENTURE
Jurisdiction: United States of America Goods:
G & S: LIFE INSURANCE SERVICES, NAMELY UNDERWRITING AND ADMINISTERING ANNUITIES. FIRST USE: 19850921. FIRST USE IN COMMERCE: 19850921
International Class of Goods and Services or Equivalent: class number 36: Insurance; financial affairs; monetary affairs; real estate affairs. Trademark
Registrant: John Hancock Life Insurance Company USA – Declaration
Trademark Registrant Contact: 601 CONGRESS STREET, 02210 BOSTON, MASSACHUSETTS, US”
We just went through the zone file for the .email new gTLD to see what interesting new domain registrations I found.
I couldn’t help miss the registrations by a organization out of Los Alamitos, CA named Viva Las Vegas who wound up getting a great domain in LasVegas.email, but went after and got domain names matching some trademarked and well known companies.
It should be noted all these were acquired before general avaliabity so the company paid extra to get priority registrations on these .email registrations:
The company also got its matching domain vivalasvegas.email.
The comapny also got three domains that could go either way as being a brand or generic but based on these three registrations taken as a group as well as other registrations, I don’t think a URS or UDRP panel would look kindly on them:
An interesting point of view on new gTLD’s, trademarks and .com registrants was published today by Cybrands.com
Basically the author of the post is claiming that owning a .com can be better protection against potentially infringing new gTLD domain names than a trademark.
He calls it the .com firewall:
“In computing terms, firewall has many definitions.”
In domaining terms, what I’m referring to is the practice of registering the .com version of a domain name which can effectively quash incentive for anyone to register any other version of that particular name.”
The fact is that there are several practical advantages and inherent rights protections that are in play that are built into the fabric of owning and using a .com domain name for business purposes. :
Is owning the .com version (and using the name in commerce) of a particular domain name a rights protection strategy unto itself that you could employ. ”
Even possibly equal to or better than a registered trademark?
First of all, as far as your intellectual property rights are concerned. If you own a .com domain name and you use it in commerce you have very likely established common law trademark rights to that name.
According the the USPTO “businesses automatically receive common law trademark rights in the normal course of commerce.”
Common law trademarks are something that I like to call a “usemarks.”
The term “common law” indicates that the trademark rights that are developed through use are not governed by statute. Instead, common law trademark rights have been developed under a judicially created scheme of rights governed by state law. Federal registration, a system created by federal statute, is not required to establish common law rights in a mark, nor is it required to begin use of a mark.
Now if course, registered trademarks are usually more powerful than common law trademarks, however, not necessarily and there is case law to prove that.
My main point has to do with the inherent value of owning the .com version of your domain name or website.
First of all this is the definition of “inherent” from Dictionary.com:
existing in someone or something as a permanent and inseparable element, quality, or attribute: an inherent distrust of strangers.
Here are a few related points:
If you own the .com version of a name, the name is not likely (highly unlikely) trademarked by another party.
The reasons are that if the name were trademarked by another entity you likely would have never been able to register it- or you would have already been asked to cease using it.…
According to the WorldtrademarkReview.com, (WTR) only 12 of the 28 top public companies the publication tracked apparently purchased the Donuts’ domain protected marks list (DPML) trademark blocking product.
7 New gTLD strings all by Donuts went live yesterday.
.bike, clothing, .guru, .holdings, .plumbing, .singles and .ventures
According to the WTR; Apple, Microsoft, Walmart, Samsung, Google, Vodafone, Wells Fargo, Chase, BMW, HSBC, Bank of America and McDonalds and Lego all bought the DPML and now have their first 7 new gTLD extensions that Donuts released yesterday.
One company Amazon elected to register their brand in all 7 new gTLD extensions rather than use he DPML.
12 world brands tracked by WTR did not buy the DPML and did not register domains in the 7 extensions released by Donuts yesterday; Citi, China Mobile, IBM, General Electric, Coca-Cola, Verizon, AT&T, Shell, Toyota, NTT, Volkswagen, Home Depot, Pepsi, Facebook
In the domain name space The Olympics have been given the strongest protections including ICANN prohibiting the registration any new gTLD containing the word Olympics in it.
However in the rest of cyberspace the Olympics enjoys no such protection.
CNN just covered the “Selfie Olympics” that has been trending on Twitter.
Not only is the word Olympics being used in a way on Twitter and with Twitter handle in a way not permitted in new gTLD land, the Twitter account uses the logo includes the 5 Olympic rings.
The logo is not just used on the twitter account but in everyone of the thousands of Selfie’s that have been posted and entered into the Selfie Olympics.
Of course we have seen for many years that courts have said its perfectly fine for Google to sell ads under keywords of trademark holders to the trademark holders themselves or competitors, the same kind of conduct that would subject a domain holder to a $100,000 fine by the same federal court that allows Google to sell the ads.
One day either the laws around domain names are going to have to catch up with the rest of the online world or vice versa
Maybe it will be in 2014.…
The Academy of Motion Picture Arts and Sciences which hands out the Oscars has filed anther lawsuit against Godaddy under the Anticybersquatting Consumer Protection Act (“ACPA”).
This suit filed on Novmeber 15, 2013, “supplements a currently pending action between the same parties asserting the same theories of infringement under the ACPA and related state theories that was filed in May 2010, Case No. 2:20-cv-03738-ABC-CW”
This lawsuit names additional parked domain names that were not included in the 1st suit.
The lawsuit is basically about two kinds of domain parked pages one where the domain is resolved to a placeholder of a customer of Godaddy which had PPC ads in which Godaddy kept 100% of the revenue and and the second arising from Godaddy cash parking service which seems to operate like a traditional parking company where the owner of the domain receives a share of the PPC revenues.
The Academy of Motion Picture Arts and Sciences filed a lawsuit against Godaddy on the same grounds in 2010, Godaddy allegedly allowed additional domains to be parked but as placeholders and through the cashparking program.
Here are the more interesting parks of the suit:
“”GoDaddy has deliberately taken, infringed, diluted and/or otherwise used, without authorization, the Academy’s rights in the OSCAR®, OSCARS® and OSCAR NIGHT®, ACADEMY AWARD®, ACADEMY AWARDS® marks have done so through the registration, license, use, trafficking in, conversion, and monetization of Internet domain names that are identical to and/or
confusingly similar to the Academy’s Distinctive & Valuable Marks.
The infringing domains are “parked pages” that have no legitimate business purpose, display no substantive content, and are used exclusively for the display of revenue generating advertisements.
Defendant derives revenue each time an internet user is directed to an infringing parked II domain and an advertisement is “clicked.”
GoDaddy has been, or attempted I2 to, derive revenue from hundreds of such infringing parked domains which demonstrates its bad faith intent to profit from advertising on domain names that are identical to, or confusingly similar to, the Academy’s Distinctive & Valuable Marks.
GoDaddy advertises and procures customers by offering “free parking” of a registrant’s domain name.
Under GoDaddy’s “Parked Page Service”, GoDaddy will park the registrant’s page and place advertisements on the web page while GoDaddy is granted the right to collect and retain all revenue generated by the advertising.…
We broke the news this morning that an agency of the Provence of Quebec filed a UDRP on the domain name Quebec.com.
Anything.com has owned the domain since at least 1998 making the domain some 15 years old.
The domain is parked but according to Screenshots.com has been parked since at least 2004 or about 10 years.
So why now?
Why did the government of Quebec decide to go after Quebec.com after all this time?
We think the answer is that the government is supporting the new gTLD of .Quebec which should launch next year .
PointQuébec Inc is the company that applied to operate the .Quebec registry.
A Geographic based new gTLD application must have the underlying support of the government.
We don’t know of course what the financial arrangement is between the registry and the government but typically registries pay the underlying government a percentage or fee for each domain name registered and renewed.
So the government of Quebec will make money off of the success of .Quebec which could be the behind the scenes motivation for the UDRP.
At least one of the principal’s of PointQuébec Inc, is also the one of the principal’s of the SX Registry SA which operates the .SX ccTLD for Sint Maarten.
Overstock.com filed suit in the Federal Court for Utah for trademark infringement against NoMoreRack.com apparently over NoMoreRack.com’s use of the word Overstock in its ads and for buying keyword advertising under the term Overstock.
Here are the relevant parts of the Complaint:
“Overstock.com, Inc. files this Complaint for trademark infringement and unfair competition, and seeks a preliminary injunction, a permanent injunction, and damages against Defendant Nomorerack.com and alleges as follows:
“Upon information and belief, Nomorerack owns and maintains NoMoreRack.com, an online website that has been operating in the United States since 2011 and sells a wide variety of discounted consumer goods to individual consumers exclusively through its website.
Nomorerack competes directly with Overstock as an Internet-based discount retailer.
Nomorerack has a “D-” rating with the Better Business Bureau of New York, where Nomorerack has its headquarters, and has been the subject of at least 1,301 complaints closed by the Better Business Bureau of New York in the past twelve months, including advertising/sales issues; billing/collection issues; delivery issues; guarantee/warranty issues; and problems with products/service.
Notwithstanding Overstock’s well-established rights in and the strength of the OVERSTOCK Marks and Trade Dress, Nomorerack and/or its agents have been using the OVERSTOCK Marks and Trade Dress, or marks confusingly similar thereto, in conjunction with the advertising and promotion of Nomorerack’s competing website.
Upon information and belief, Nomorerack’s Internet advertising strategies and techniques are, in part, targeted specifically at Overstock.com’s customers.
Upon information and belief, Nomorerack is purchasing the terms “OVERSTOCK” and “OVERSTOCK.COM” as advertising keywords as part of its Internet- based advertising efforts.
In addition, upon information and belief, Nomorerack is purchasing data regarding the Internet activity of individual consumers to identify targets for its advertisements, including individual consumers that have visited Overstock.com’s websites. Upon information and belief, Nomorerack is using this data to send targeted, customized, and misleading advertisements for its own products directly to customers of Overstock.com.
At least as early as February 2012, Nomorerack began promoting its discounted consumer goods through Internet-based advertisements that featured the term “OVERSTOCK” prominently at the top of the advertisements, using a font nearly identical to that used by Overstock, with phrases such as “OVERSTOCK CLEARANCE” and “Overstock iPads.”
On or before November 2013, Nomorerack continued its use of the term “Overstock” prominently in its Internet advertisements, and added a rectangular red banner as part of its usage. For example, an advertisement on November 2, 2013, Nomorerack included a heading at the top of the ad stating “OVERSTOCK CLEARANCE” that was surrounded by a red banner, and employed a font very similar to that used by Overstock.…