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Tag Archives: Trademark Law

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 Defends UDRP Domain Name Claim With Laches Defense

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.

 

Parody Website Spoofing Chick-fil-A Controversy Fights for Domain Name Rights

The owners of chickfilafoundation.com, a parody website, have retained the domain dispute law firm Lewis & Lin, LLC in New York to defend against Chick-fil-A’s allegations of trademark infringement.

Brooklyn, New York (September 18, 2012) – Jason Selvig and Davram Stiefler, two Brooklyn-based comedians and political commentators, have retained the New York domain dispute law firm Lewis & Lin, LLC to defend against allegations that the domain name of their parody website infringes on the “Chick-Fil-A” trademark held by CFA Properties, Inc.  Chick-fil-A, a nationwide fast food chain, filed a complaint last month with the World Intellectual Property Organization against the site owners, claiming that the website’s domain name, chickfilafoundation.com, is confusingly similar to the Chick-Fil-A trademark, and was registered and used in bad faith.  Selvig and Stiefler contest these charges.

According to David Lin, domain dispute attorney and lead counsel for the respondents, the domain name is perfectly legitimate. “Part of the point of parody websites is to lead readers to briefly believe that the website is perhaps coming from the company, and then realize that the message is a larger criticism and social commentary,” says Lin. “While trademark law protects corporations from infringement, corporations can’t use trademark law to squelch criticism made through parody and satire, which is what is occurring in this case. 

Chickfilafoundation.com is a website featuring satirical videos, parodies and written content intended to critique the recent controversy surrounding Chick-fil-A president Dan Cathy’s stated opposition to gay marriage.  The site features three characters named Robert, John, and Harvey the Cow. These characters, on behalf of the fictional “Chick-Fil-A Foundation,” offer tongue-in-cheek advice purporting to promote “family values” and encourage the renunciation of homosexuality, including through the offer to trade one’s homosexuality for a chicken sandwich.  “There can be no question that the website is meant to criticize the Chick-Fil-A president’s stance on the legitimacy of gay marriage. The domain name is part of that commentary,” says Lin. “Large corporations cannot be allowed to use trademark law as a sword to silence criticism of their company.”

About Lewis & Lin: 

Lewis & Lin, LLC is an Internet and Intellectual Property law firm based in Brooklyn, New York. The firm’s highly experienced legal team has helped clients worldwide secure their IP rights, as well as anticipate and resolve a diverse range of IP issues. Lewis & Lin’s particular expertise lies in Internet transactions and disputes, including domain name licensing and sale agreements, domain name hijacking claims, Uniform Domain Name Dispute Resolution Policy (UDRP) disputes, and Anti-Cybersquatting Consumer Protection Act (ACPA) litigation. The team also expertly handles licensing agreements, website user agreements, service agreements and privacy policies, as well as Internet-related trademark and copyright litigation. For further information, visit www.ilawco.com.

 

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