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 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
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 firstname.lastname@example.org.
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.
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 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.