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Lewis & Lin Recovers Domain Name Stolen by Chinese Hacker

A federal court in Arizona today ruled in favor of our client whose domain name was stolen from her eNom account, apparently by a hacker based in China.

Our client, the plaintiff, is a domain name investor who registers generic and descriptive domain names that have value, holding them for development or possible resale.  The domain name at issue was <640.com>.  Domain names consisting solely of numbers have particular value in China due to their ability to transcend language barriers and provide for limitless usage possibilities.

The defendant appeared to use a number of different proxy servers to mask his true IP address, location, and identity in order to access plaintiff’s account and perpetrate the theft.  After gaining access to plaintiff’s account with eNom, defendant transferred the domain to his own eNom account.  By the time our client found out, the defendant had already re-transferred the domain to a separate account with GoDaddy.  GoDaddy refused to return the domain name to plaintiff. 

Lewis & Lin filed suit in U.S. District Court in Arizona (where GoDaddy’s is located), and subsequently filed a motion to effect service on the defendant by email, which was granted.  Upon the defendant’s failure to respond, the federal court entered default against him, and then issued judgment.  The judgment declared plaintiff as the rightful owner of the domain name, and further made the following order:

Upon Plaintiff’s request, Defendant YAN WANG; their officers, directors, employees, agents, subsidiaries, distributors and all persons in active concert or participation with them having notice of this Order; and those with actual notice of this Order, including any domain-name registrars, domain-name registries or their administrators, are directed to immediately record, change, or assist in changing the registration of record for the Domain Name in Plaintiff’s name and into an account with a domain-name registrar of Plaintiff’s choosing.

The case is Tai v. Wang, No. CV-15-01857-PHX-GMS (D. Ariz. Jan 28, 2016).

Lewis & Lin Obtains Dismissal of $2 Million Lawsuit Against CEO of Online Ticket Reseller

Lewis & Lin recently won a dismissal of a lawsuit filed against our client, the founder and CEO of a Nevada ticketing company.

Plaintiff, a major online secondary marketplace for entertainment and sporting tickets, sued our client for alleged violation of a ticket data sharing agreement. Plaintiff alleged that the agreement provided defendant’s company access to plaintiff’s online database of tickets offered by ticket brokers, which defendant’s company could access for its customers. In exchange for the access, defendant’s company was to pay plaintiff the amount sought by the broker for any tickets purchased, plus an additional 3% fee. Plaintiff claimed that defendant owed over $2 million for unpaid fees. An arbitration was filed in Connecticut to enforce the terms of the agreement, which contained an arbitration clause and was signed by the defendant. In addition, plaintiff filed an action in Connecticut state court seeking a prejudgment remedy.

Both Plaintiff’s arbitration and court complaints named our client individually, but not the corporate entity. After removing the state court action to federal court, Lewis & Lin immediately filed a motion to dismiss for two reasons: (1) the fiduciary shield doctrine prevented a Connecticut court from exercising personal jurisdiction over the individual defendant for actions he took in Connecticut solely as an agent of the corporate entity, and (2) plaintiff failed to state a claim against the individual defendant because he did not sign the agreement that formed the basis for the parties’ dispute in his individual capacity.

The court agreed with our position, resolving both issues in our favor based on its determination that the defendant signed the contract only as a representative of a corporate entity. Analyzing the case under Connecticut law, the court ruled that in order to avoid personal liability on a contract on another’s behalf, an agent must disclose both the fact that he is acting in a representative capacity, and the identity of the principal. In this case, the legal name of the corporate entity was not disclosed in the contract; listed instead was its trade name (a “dba”), which was registered in New York. The issue thus turned on whether registering a trade name in New York provides constructive notice of that name’s user as a matter of Connecticut law—an issue of first impression.

After reviewing the purposes behind Connecticut’s and New York’s parallel statutes governing the registration of assumed business names, the court concluded that plaintiff had constructive notice that defendant was acting in a representative capacity on behalf of a known principal based in New York. Accordingly, the individual defendant, our client, “cannot be held personally liable on the contract he signed, because he contracted on behalf of a disclosed corporation.”

Shortly after the case was dismissed against our client, the parties resolved their differences amicably. The full decision is available here.

Lewis & Lin Wins Domain Name Dispute Against Sham Criticism Site

Lewis & Lin won a UDRP decision today for our client, AAC Enterprises, LLC, of Metairie, Louisiana. AAC is the owner of the ORACLE brand of automotive lighting products, including ORACLE halo headlights and headlight kits. Internationally recognized as a leader in solid-state automotive LED technology, ORACLE lights have generated tens of millions of dollars in sales since AAC introduced them to the market in 2005.

The disputed domain name, oraclehalos.com, was registered in November 2014 and used for a website ostensibly operated by an anonymous former distributor of AAC’s products. The website appeared to be a complaint site, but then directed readers to one of AAC’s competitors, whose products the former distributor claimed to stock and install. Lewis & Lin argued that such use was commercial in nature, caused confusion with our client’s trademark rights, and was done in bad faith.

A single-member panel of the World Intellectual Property Organization (WIPO) agreed. The panelist ruled: “the disputed domain name is inherently confusingly similar to the Complainant’s trademark and is being used to mislead Internet users into visiting a site criticizing the Complainant’s products and praising those of a specific named competitor.” In attracting Internet users by creating a likelihood of confusion with AAC’s ORACLE mark, and then attempting to profit commercially by selling competing products, such conduct constituted registration and use bad faith. The panelist ordered that the domain name be transferred to our client.

The decision, AAC Enterprises LLC v. Whoisguard, Inc. / Zain Venezuela, can be accessed here. For more information on Lewis & Lin’s domain name litigation practice, contact David Lin.

Lewis & Lin Wins Two Domain Name Disputes

Lewis & Lin attorneys recently obtained two separate domain name victories for our clients in a single week.

In FPK Services, LLC v. Michael Dubendris, we represented the complainant. Our client owned the STDcheck.com website for the provision of online testing services for sexually-transmitted diseases. The respondent had registered STDchecks.com in a clear attempt to divert internet users to its own site, which provided similar services. While the complainant did not have a registered trademark, we were able to show by affidavit that it had used the STDCHECK mark associated with its website continuously and extensively in connection with online testing services. We further showed that the complainant had spent $150,000 on advertising and marketing its services every month. The respondent was a former affiliate of our client’s, and his website contained similarities to our client’s site that were clearly intended to divert our client’s customers. A single-member panel of the National Arbitration Forum agreed with our arguments, and awarded our client with the disputed domain name.

In Boston Private Financial Holdings, Inc. v. Eric Kuniholm, we represented the respondent in a dispute concerning the domain names bostonprivatewealth.com and bostonprivatewealthmanagement.com. The complainant, a national financial services organization managing over $30 billion of client assets, was the owner of websites located at bostonprivate.com and bostonprivatebank.com. It also owned a U.S. trademark registration for BOSTON PRIVATE BANK & TRUST COMPANY. In addition, complainant had allowed its U.S. trademark registration for BOSTON PRIVATE WEALTH MANAGEMENT GROUP to lapse, but had an active application for BOSTON PRIVATE WEALTH MANAGEMENT. Our client was a financial professional who owned a number of valuable domain names, including privatewealthmanagement.com. In pursuing a marketing policy of collecting generic and descriptive domain names for lead generation purposes, he also registered some 700 descriptive domain names containing the root “private wealth management” and similar phrases with geographic descriptors. For instance, the respondent registered: NewYorkPrivateWealthManagement.com, DubaiPrivateWealthManagement.com, PrivateWealthManagementAdvisor.com, and many more.

A majority of a three-member panel of the National Arbitration Forum ruled in favor of our client. The majority agreed with Lewis & Lin that the complainant failed to show that the disputed domain names were identical or confusingly similar to complainant’s trademarks. The panel noted that while there were similarities between the federal trademark registration and the disputed domain names, “the similar elements of both are generic and descriptive of financial services provided in the Boston area.” Moreover, as a trademark application does not establish a trademark right, the complainant failed to show it had rights to the term “Boston Private Wealth Management.” The panel accordingly ruled in favor of our client.

Lewis & Lin Obtains Dismissal of Copyright Action Against New York Fashion Designer

Lewis & Lin obtained a dismissal of a federal lawsuit against our client alleging copyright violations.

The case was filed in federal court in California by the registered copyright owner of two original textile print artworks. Plaintiff claimed that Lewis & Lin’s client Dani II Inc.–owner of the KAS New York fashion label–distributed clothing that infringed on plaintiff’s designs to Neiman Marcus stores for sale nationwide.

At the inception of the case, Lewis & Lin filed a motion to dismiss for lack of personal jurisdiction, arguing that Dani II did not possess minimum contacts with California, and therefore maintaining the suit there would violate its due process rights.

Judge Beverly Reid O’Connell of the U.S. District Court in Los Angeles agreed. In a written opinion, the court ruled that plaintiff “failed to carry its burden to contravene” Dani II’s sworn statement supporting its position that general jurisdiction should not lie in California.

Regarding plaintiff’s argument for specific jurisdiction, the court agreed with Lewis & Lin on all three parts of the 9th Circuit’s Schwarzenegger test. The test requires that plaintiff show (1) the non-resident defendant purposefully directed its activities with the forum state, (2) the plaintiff’s claim arises out of the defendant’s forum-related activities, and (3) the exercise of jurisdiction comports with fair play and substantial justice. As the court ruled: “even assuming that Dani II knew that goods shipped to Neiman Marcus might have eventually ended up in California, it is not enough that the defendant might have predicted that its goods will reach the forum State.” The court further stated that plaintiff “only provided speculative and conclusory statements to establish Dani II’s contacts with California [and] plaintiff’s naked assertion cannot suffice absent further factual enhancement.”

Accordingly, the court granted Lewis & Lin’s motion to dismiss. The case is Star Fabrics, Inc. v. Neiman Marcus Group LLC et al., No. 14-CV-7170 (C.D. Cal.).