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Lewis & Lin Obtains TRO and Preliminary Injunction against Alleged Computer Hacker / Cybersquatter of Nootropics.com Domain Name

In a move that returns a domain name to the control of our client, Lewis & Lin was granted a temporary restraining order and preliminary injunction against the former owner of the domain, who allegedly attempted to regain access to it.

Our client, Cerelux Ltd., is an online seller of nonprescription cognitive enhancers known as nootropics.  Until recently, Cerelux operated its business at the domain name nootropics.com, which our client’s principal obtained from the defendant in 2016. As alleged in the complaint, defendants transferred the domain name to Cerelux willingly enough in 2016, but subsequently suffered a case of seller’s remorse. After installing some sort of spying software, likely a key-logging program on a computer belonging to Cerelux’s principal, defendants gained unauthorized access to Cerelux’s domain registrar account to steal the domain.  Defendants, impersonating Cerelux’s principal, transferred the domain name to another registrar, which caused Cerelux’s website to crash.  Defendants subsequently tried to blackmail Cerelux into ceasing all operations.

Working with Los Angeles-based local counsel, Lewis & Lin filed a six-count complaint in U.S. District Court for the Central District of California for violation of the Wiretap Act and Stored Communications Act, trespass to chattels, and related claims.  We also filed an Ex Parte Application for Temporary Restraining Order and Order to Show Cause Why a Preliminary Injunction Should Not Issue. 

After a hearing, the court ordered that GoDaddy, the registrar of record for the domain name, transfer the domain into an account for our client, point the DNS and MX servers for the domain to our client’s website and mail servers, and place a legal lock on the domain.  The court further ordered that our client had full access to all functionality of the domain and that the defendants were prohibited from impeding plaintiff’s access in any manner.

From the filing of the complaint to the issuing of the TRO took four days.  Less than two weeks later, the preliminary injunction issued. While the case is still proceeding in litigation, our client is able to have full control over its rightful domain.  The case is Cerelux Ltd. v. Shao, et al., No 17-CV-02909 (MWF) (KSX).

Lewis & Lin Obtains Federal Court Order Removing Anonymous Defamatory Blog

In a case of first impression in the Eastern District of New York, Lewis & Lin obtained a judgment against an anonymous, unidentified blogger in a defamation case brought by our client, a real estate investment company and its founder and CEO. 

Our complaint asserted claims for trademark infringement, unfair competition, defamation, trade libel and tortious interference based on the unknown defendant’s anonymous emails and blog posts.

Upon filing the complaint, Lewis & Lin sought and was granted an order for expedited discovery to identify the John Doe defendant. After our extensive efforts to identify the defendant, we sought permission from the court to serve defendant via email.  The motion was granted, and the defendant, after being served, failed to answer the complaint.  Accordingly, we sought a default motion for damages and injuctive relief against the unknown blogger.

As the Eastern District of New York had never issued a judgment against an unidentified party, the Court directed our firm to provide authority supporting its power to do so. Citing cases from other judicial districts, we argued that the fact that defendant had not been identified was not fatal to a request for default judgment as long as it was properly served with process. In a 56-page report and recommendation, Magistrate Judge Cheryl L. Pollak agreed with our reasoning:

Where an unidentified defendant has been properly served with a complaint and has nevertheless failed to answer or otherwise respond, the fact that the defendant cannot be physically identified does not impede a court’s ability to enter judgment against it. To hold otherwise in a situation such as the one presented in the instant case would permit individuals who have violated federal law to continue to do so without redress for the harmed parties solely due to the fact that the wrongful party has successfully concealed himself or herself from identification.

Accordingly, Judge Pollak recommended judgment against the defendant for $225,000 in damages, along with attorneys fees and costs. Importantly, Judge Pollak also recommended that the offending blog be taken down and the email address be disabled.  Chief Judge Dora Lizette Irizarry adopted the R&R in its entirety and issued an order to its effect. Upon receiving the court order, Google has carried out its terms and disabled both the blog and the email address. The case is 1:14-cv-05968-DLI-CLP in the Eastern District of New York. Please contact us if you have any questions regarding Lewis & Lin’s defamation law practice.

Lewis & Lin Obtains Transfer of Domain Name Against Japanese Registrant

In a hotly contested domain name dispute, Lewis & Lin today received notice that the World Intellectual Property Organization granted its complaint seeking to transfer the Opentime.com domain name.  Our client, Connecting Open Time LLC of Texas, holds a U.S. Trademark Registration for OPENTIME and is the creator of the Opentime scheduling app, which first became available in 2014.

The respondent, an American citizen residing in Japan who was apparently a software marketing professional, registered the domain name in 2016 and contemporaneously filed a trademark application in Japan for OPEN TIME.

In agreeing with us that the respondent lacked legitimate interests to the domain name, a single member panel of WIPO found that “Respondent acquired the disputed domain name after the disputed domain name was put up for sale by Afternic in or about late March 2016, filed a trademark application in March 2016 in Japan (which requires no proof of use) for OPEN TIME, used a privacy service to shield his identity, used the disputed domain name with a click-through portal that included links to timesheet software and related links, and offered the disputed domain name for sale.” 

The WIPO panelist further found that the respondent was “likely aware of Complainant when he acquired the disputed domain name” and “failed to come forward with any documentary or credible evidence” that he registered the domain name for a good faith purpose.  Accordingly, the panelist ruled that the respondent registered and used the disputed domain name in bad faith, and ordered that the name be transferred to our client.

The case is Connecting Open Time, LLC v. Domains By Proxy, LLC / Kyle Burns and can be accessed here.

Lewis & Lin Obtains a Finding of Reverse Domain Name Hijacking by WIPO Panel

Lewis & Lin scored a victory for our client this week in defending his domain name against a trademark holder’s attempt to seize it.

The complainant, Tobam, a Paris-based asset-management firm, filed a complaint under the Uniform Domain Name Dispute Resolution Policy, arguing that our client’s registration and use of the domain name violated the terms of the UDRP, and that the name should be transferred the complainant.

We argued that our client did not register and use the domain name in bad faith, but rather the complainant instituted the UDRP action itself in bad faith in an effort to “reverse hijack” the domain.

Under the UDRP, a complaining trademark holder can seek to transfer a domain name registered by someone else if it shows (1) the respondent’s domain name is identical or confusingly similar to a trademark in which the complainant has rights, (2) the respondent lacked rights or legitimate interests in the domain name, and (3) the respondent registered and used the domain in bad faith. Reverse Domain Name Hijacking is defined as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.”

In our case, the complainant did not dispute that our client registered the domain name in 2004–yet the complainant was not incorporated until 2005, and only started trading under the “Tobam” name in 2008. Citing the long-established consensus view under the UDRP, the single-member panel of the World Intellectual Property Organization wrote: “when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established . . . the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent right.”

Furthermore, at Lewis & Lin’s urging, the panelist concluded that the complainant sought to mislead the panel by omitting key facts about its failed attempts to purchase the disputed domain name, which demonstrated the complainant attempted to bully our client into selling the domain at less than its value. “This is a classic ‘Plan B’ case,” the panel concluded, “using the Policy after failing in the marketplace to acquire the disputed domain name” and thus “a highly improper purpose.” For these reasons, the panel denied the complaint and found Tobam guilty of Reverse Domain Name Hijacking.

If you are involved in a domain name dispute, please contact us at trademarks@ilawco.com.

Lewis & Lin Defends RapidTransformation.com Domain Name Against Claim by Registered Trademark Owner

Last week, Lewis & Lin received a decision from the National Arbitration Forum denying the claim of The Sinclair Group against our client, a best-selling author, award-winning scholar and global business consultant.

The complainant argued that it has had a federal registered trademark for RAPID TRANSFORMATION since 2006 for technical consulting services and business management consulting, and that it has been offering operations management consultancy services under the mark since 2004. It further argued that our client’s RapidTransformation.com domain name redirected web users to a website offering directly competing services, thus constituting illegitimate and bad faith use.

On behalf of the respondent, Lewis & Lin showed that our client was an internationally recognized expert on organizational and leadership transformation who has written five books on how organizations and businesses manage change. One of those books, “Rapid Transformation: A 90-day Plan for Fast and Effective Change,” was published in 2007 by the Harvard Business Review Press. We provided evidence that our client had been using the phrase “rapid transformation” as part of his global business consulting services since 2002.

We further argued that the words “rapid” and transformation” are common use, generic, dictionary words, and that our client registered the domain name for its descriptive significance—not to take advantage of the complainant’s mark.

A single-member panel of the National Arbitration Forum ruled in favor of our client. The panel found that although our client’s RapidTransformation.com domain name was identical to complainant’s RAPID TRANSFORMATION registered trademark, our client had established sufficient rights or legitimate interests to the domain name pursuant to the Uniform Domain Name Dispute Resolution Policy. The panel further concluded that the complainant failed to establish bad faith registration and use of the domain name, as is required under the policy.

The case is The Sinclair Group Nevada, LLC v. Tabrizi, FA1606001679802 (NAF Aug. 3, 2016) and can be accessed here. Please contact us if you have any questions about domain name disputes or the UDRP.