Lewis & Lin Defends Smartrend.com Domain in Business Dispute

Lewis & Lin obtained a victory in a domain name action filed against our client by Comtex News Network over the domain name <Smartrend.com>.  Comtex, the complainant, owned the registered trademark rights to the SMARTREND mark and operated the website hosted at <MySmartrend.com>.  In its complaint filed under the Uniform Domain Name Dispute Resolution Policy (UDRP), Comtex claimed that our client lacked legitimate interests in the <Smartrend.com> domain name and was using it in bad faith.

Lewis & Lin argued that the instant case was a business dispute and therefore was outside the scope of the UDRP.  Our client was hired by Comtex as its Director of Marketing in 2010.  As part of his job duties, respondent was requested to purchase and register the <Smartrend.com> domain, and transfer it to the complainant.  Comtex, in turn, would compensate respondent for his services and expenses.  A dispute arose, and instead of compensating our client, Comtex filed a UDRP action to attempt to gain control of the domain name.

A single-member panel of the National Arbitration Forum agreed with Lewis & Lin.  The panel recognized that the instant case was “not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the UDRP was designed to address.”  According to the panel, “a dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy.”  Thus, the panel ordered that the <Smartrend.com> domain remain with our client.

The case, Comtex News Network, Inc. v. Haney, FA1211001472158 (N.A.F. Jan. 8, 2013), can be accessed here.