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.
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.
Lewis & Lin obtained a victory in a UDRP domain name action filed against our client by Laminex, Inc., the owner of the website at <IDshop.com>. The complainant owned a United States trademark registration for the ID SHOP mark, registered in 1989, and provided photography services and supplies associated with identification devices such as ID cards, name badges, and electronic access cards.
Our client, the respondent, had owned and operated a novelty ID shop, housed at <theIDshop.com> since 1998. The website <theIDshop.com> generated over $2 million in sales, serving tens of thousands of customers while employing dozens of employees and expending over $100,000 for promotional purposes.
In addition to arguing that the complainant had failed to meet its burden under the UDRP, Lewis & Lin also argued the complaint failed on the basis of laches. Laches is an equitable legal doctrine that provides a defense when a brand owner has unreasonably delayed in asserting its rights, and thereby unduly prejudices the defending party.
Although laches has rarely been successfully used as a defense in a UDRP proceeding, the three-member UDRP panel agreed with Lewis & Lin that it was appropriate under the circumstances. The respondent registered the domain name in 1998 and has consistently been in business since then, investing substantial sums promoting the business through the <theIDshop.com> domain name. Although the complainant had a trademark with the USPTO for the ID SHOP mark since 1989, it offered no explanation for the 14-year delay in bringing its complaint. The panel concluded that in light of the “unexplained delay in bringing this proceeding, and the demonstrable harm to Respondent should the domain name be transferred,” relief was denied under the doctrine of laches.
The case, Laminex, Inc. v. Yan Smith, FA1211001470990 (N.A.F. Jan. 7, 2013), can be accessed here.
In Danshar (1963) Ltd. v. Joey Gilbert/ Daisy Li, Case No. D2011-2304 (WIPO March 11, 2012), and Floor and Decor Outlets of America, Inc. v. Anna Marie Fanelli, No: FA1430576 (NAF April 4, 2012), Lewis & Lin LLC helped successfully defend complaints brought against a former distributor of skin care products and a retail design studio, respectively. Both cases affirm the principle that a party that registers a domain name in good faith for a legitimate business use is the rightful holder of the domain name. In Danshar, the Respondent registered and used the domain name at issue for fifteen years with the blessing of the complainant’s predecessors. In Floor and Decor, the Respondent owned and operated a retail design studio under the name Floor & Decor for 22 years, 11 of those predating any use by the Complainant.