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Tag Archives: UDRP

Lewis & Lin Defends Scentco.com Domain in UDRP

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.

Reverse Domain Hijacking Defendants Consent to Judgement

In a swift and clear victory for our client, Lewis & Lin obtained an offer of judgment from an attempted domain name hijacker shortly after filing a federal court complaint.

After losing a UDRP proceeding by default, the owners of MyArt.com retained Lewis & Lin to stop the transfer of the domain name under ICANN rules. Lewis & Lin immediately filed suit in the U.S. District Court for the Southern District of New York against My Art SAS, a French company engaged in the sale of artwork, and its principal shareholder. Our complaint sought relief for reverse domain name hijacking under the Lanham Act, as well as related state unfair competition claims.

Barely a month after being served with the complaint, defendants issued an offer of judgment consenting to all of the declaratory relief that we sought on behalf of our client. Defendants also offered a monetary judgment in an amount that included statutory damages, attorney’s fees and litigation costs. The offer of judgment was accepted and judgment was entered in favor of our client.

This case illustrates that a UDRP loss has absolutely no bearing on subsequent litigation between the same parties and the same domain name. A UDRP panel’s decision, which is not based on U.S. trademark law, will be entitled to no deference, and will have no preclusive effect in a federal court case. For domain name registrants who fall victim to the efforts of reverse domain hijackers attempting to seize a domain in the UDRP process, there is hope to recover a hijacked domain. Simply by filing a federal lawsuit and requiring the attempted hijacker to defend their actions, a domain name registrant can keep what’s rightfully theirs. For more information on reverse domain hijacking and the UDRP, contact David Lin at Lewis & Lin LLC.

Lewis & Lin Obtains Transfer of Vape-World.com Domain Name

In another UDRP victory, Lewis & Lin won the transfer of a significant domain name for our client.

Lewis & Lin filed a complaint with the World Intellectual Property Organization (“WIPO”) on behalf of Warehouse Goods, Inc., an internationally-marketed vaporizer company with products ranging from aromatherapy to e-cigarettes. Warehouse Goods is the owner of multiple U.S. trademark registrations for the VAPE WORLD® mark, as well as a community trademark in the E.U.

The domain name registrant had been using the Vape-World.com domain to redirect users to a website selling products in direct competition with Warehouse Goods. Lewis & Lin argued that such use—purely for financial gain and based on the diversion of internet users—was done in bad faith and failed to qualify as a legitimate use of the domain.

A single-member panel of WIPO agreed, ruling that the respondent “capitalized on Complainant’s well-known VAPE WORLD Marks to take advantage of customer confusion and divert sales to Respondent’s own financial benefit.”

The case is Warehouse Goods, Inc. v. Domains By Proxy, LLC / Anthony Barron, WIPO Case No. D2014-0709 (June 24, 2014) and can be accessed here.

Lewis & Lin Victory in Dispute over Palace.com Domain

Lewis & Lin obtained another UDRP victory this week, defending the domain name <palace.com> against a complaint filed by the owner of The Palace of Auburn Hills, home to the Detroit Pistons.

The complainant had argued that the domain name was confusingly similar to its registered trademark THE PALACE OF AUBURN HILLS, and its common law rights to the mark PALACE.  Complainant further argued that our client lacked rights or legitimate interests to the domain name, and that our client registered and was using the domain name in bad faith.

Lewis & Lin defended the domain dispute on three grounds.  First, the domain name <palace.com> was not identical or confusingly similar to a mark the complainant had rights to.  Regarding complainant’s federally-registered trademark, its five-word mark combined the generic word “palace” with the geographic modifier “of Auburn Hills,” and therefore obtained distinctiveness only in the combination as registered.  Regarding complainant’s allegation that it had common law rights to the term “Palace,” complainant had failed to offer any evidence in support of its claim.

Second, Lewis & Lin pointed out that our client had spent several years prior to learning of the UDRP to prepare to use the domain name in connection with an online gambling business that it was contemplating.  Lewis & Lin submitted proof of our client’s actions in creating a website, executing an SEO and marketing strategy, obtaining required licenses, and entering into contracts to develop its business.

Finally, Lewis & Lin argued that the complainant failed to show that our client both registered and used the domain name in bad faith—a required element under the UDRP.

A three-member panel of the World Intellectual Property Organization (“WIPO”) agreed with Lewis & Lin on all three points, ruling for our client, and denying the complaint in its entirety.  The full decision is available here.