Lewis & Lin recently won a motion for summary judgment in our case against a domain name cybersquatter. We represented plaintiff Alpha Recycling, Inc. a New York company that recycles catalytic converters and scrap metal. The defendant was a precious metal broker who sold several million dollars’ worth of catalytic converters to our client before their business relationship soured. During the course of their dealings, defendant registered a number of domain names that used the term “alpha” in relation to recycling services, including
Lewis & Lin filed a complaint in Federal Court in New York asserting claims for cybersquatting under the Anticybersquatting Consumer Protection Act (“ACPA”), as well as common law claims for defamation and trade libel, unfair competition, and trademark infringement. We also filed a motion seeking summary judgment on our cybersquatting claim.
Under the ACPA, to successfully assert a claim for cybersquatting, a plaintiff must demonstrate that (1) its marks were distinctive at the time the domain name was registered; (2) the domain names complained of are identical to or confusingly similar to plaintiff’s mark; and (3) the infringer had a bad faith intent to profit from that mark. The defendant opposed summary judgment on two grounds: that the ALPHA mark was not distinctive, and that defendant lacked the requisite bad faith.
We argued that the term ALPHA, when used in connection with plaintiff’s goods and services, is arbitrary and therefore inherently distinctive and entitled to trademark protection. As to the defendant’s bad faith, we pointed out that visitors to the domains at issue were directed to defendant’s own website. The defendant testified that he redirected the traffic in order to “get back at [Alpha]” because “they had taken away a very large portion of [his] business.” He also posted a video to YouTube with the title “Alpha Catalytic Converter Recycling Experts” that was actually a commercial for defendant’s own business. Finally, we submitted evidence to show that defendant is a repeat cybersquatter who had registered domain names incorporating the marks of other firms.
Judge J. Paul Oetken of the Southern District of New York agreed with us on both points and ruled in our favor. The case is Alpha Recycling, Inc. v. Crosby, No. 14-CV-5015 (JPO), S.D.N.Y.
Last week, a unanimous three-member panel of the World Intellectual Property Organization (WIPO) held in a domain name dispute that the owner of Shocking.com had legitimate rights to the domain name <Shocking.com>, based on its long-term use in connection with an ISP. Interbasic Holding, S.A. v. Shocking, No. D2012-0654 (June 7, 2012). The dispute involved the acquisition of the domain name as a part of a going concern business. The Respondent operates a network of ISPs, whereas the Complainant owns trademarks for fragrances. In denying the Complaint, the Panel held that: “[t]he Panel is not convinced that the Respondent acquired the Disputed Domain name with the intent to profit from the Complainant’s trade mark. The Respondent’s business is so distinct from the business of the Complainant that Internet users or customers are unlikely to be confused as to whether the Respondent may be associated, affiliated or sponsored by the Complainant, which precludes the presumption that the Respondent acquired the Disputed Domain Name, expecting to profit from this confusion.”