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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.).

Lewis & Lin Defends Scentco.com Domain in UDRP

In a victory for our client, an individual domain name investor, Lewis & Lin obtained a decision by the National Arbitration Forum refusing to transfer the Scentco.com domain name to the holder of the “Scentco” registered U.S. trademark.

The complainant, Scentco Inc., a distributor of scented toys and novelties, argued that our client violated the Uniform Domain Name Dispute Resolution Policy by registering and using the domain name in bad faith. Before a three-member panel of the NAF, Lewis & Lin argued that our client could not have registered the domain in bad faith because he had first registered it in 2001—twelve years before the complainant ever used the Scentco mark in commerce. The panel also agreed with Lewis & Lin that subsequent renewals of the domain name did not amount to a re-registration under the UDRP.

The complainant had also argued that our client’s use of the domain name to resolve to a website that linked to various third party vendors—some of which competed in business with the complainant—amounted to bad faith use. However, the panel agreed with Lewis & Lin that despite some authority suggesting that a registrant is responsible for all content appearing on a website at its domain name, the respondent here did not target the complainant’s trademark or business either before or after he registered the domain. Accordingly, the panel denied the relief sought by the complainant and ruled that the Scentco.com domain name stay with our client.

The case is Scentco, Inc. v. Sandfort, FA1406001565772 (N.A.F. Aug. 2, 2014) and can be accessed here.

Lewis & Lin Defeats UDRP for Mobile.co, Then Negotiates Its Sale in Second Highest .co Transaction Ever

In a major victory for our clients, Lewis & Lin defeated a UDRP action seeking to seize the Mobile.co domain name, and then—in the course of a federal court action involving the name—brokered a settlement resulting in the second highest amount ever paid for a .co domain.

The case began as a federal lawsuit for breach of contract in Arizona. Plaintiff, the owner of the Mobile.pro website, alleged that one of the defendants breached a contract to sell Mobile.co on the domain marketplace Sedo. Lewis & Lin defeated plaintiff’s motion for a preliminary injunction, arguing that the plaintiff failed to show a likelihood of success on the merits.

Plaintiff then filed a UDRP complaint before the National Arbitration Forum, as well as an amended complaint in the Arizona action alleging trademark infringement, unfair competition, conversion, fraudulent conveyance and other claims.

In Arizona, Lewis & Lin responded with a comprehensive motion to dismiss based on lack of personal jurisdiction over the foreign defendants, failure to state a claim for the new causes of action, mootness on the claims seeking injunctive relief, and failure to join an indispensable party on the remaining counts.

In the UDRP, Lewis & Lin argued, among other things, that plaintiff’s use of the term “mobile” was only in connection with its website, an online community for mobile professionals. Plaintiff therefore had no trademark rights to the merely descriptive term “mobile.” We also noted that the U.S. Patent and Trademark Office had denied plaintiff’s multiple applications to register marks containing the term “mobile” based on the same reasoning.

A three-member panel of the NAF agreed with Lewis & Lin. The panel ruled that plaintiff had failed the “hurdle of showing secondary meaning in a descriptive term other traders are likely to desire to use for their similar services.” The panel thus unanimously ruled in favor of Lewis & Lin’s client. The decision can be found here.

Shortly after the UDRP decision, and while Lewis & Lin’s motion to dismiss was still pending in the Arizona court, the parties reached a settlement whereby plaintiff agreed to purchase the Mobile.co domain name for $239,000. As reported by several industry insiders, this is the second highest amount ever paid for a .co domain name.

For more information on Lewis & Lin’s domain name litigation practice, contact David Lin.

Reverse Domain Hijacking Defendants Consent to Judgement

In a swift and clear victory for our client, Lewis & Lin obtained an offer of judgment from an attempted domain name hijacker shortly after filing a federal court complaint.

After losing a UDRP proceeding by default, the owners of MyArt.com retained Lewis & Lin to stop the transfer of the domain name under ICANN rules. Lewis & Lin immediately filed suit in the U.S. District Court for the Southern District of New York against My Art SAS, a French company engaged in the sale of artwork, and its principal shareholder. Our complaint sought relief for reverse domain name hijacking under the Lanham Act, as well as related state unfair competition claims.

Barely a month after being served with the complaint, defendants issued an offer of judgment consenting to all of the declaratory relief that we sought on behalf of our client. Defendants also offered a monetary judgment in an amount that included statutory damages, attorney’s fees and litigation costs. The offer of judgment was accepted and judgment was entered in favor of our client.

This case illustrates that a UDRP loss has absolutely no bearing on subsequent litigation between the same parties and the same domain name. A UDRP panel’s decision, which is not based on U.S. trademark law, will be entitled to no deference, and will have no preclusive effect in a federal court case. For domain name registrants who fall victim to the efforts of reverse domain hijackers attempting to seize a domain in the UDRP process, there is hope to recover a hijacked domain. Simply by filing a federal lawsuit and requiring the attempted hijacker to defend their actions, a domain name registrant can keep what’s rightfully theirs. For more information on reverse domain hijacking and the UDRP, contact David Lin at Lewis & Lin LLC.