Lewis & Lin Obtains Dismissal of Unfair Trade Practices Claim Against Email Marketing Firm

In a broad decision, a state court in Florida has dismissed with prejudice all claims asserted against Lewis & Lin’s client, a leading digital marketing technology company. The case involved the licensure of a proprietary computerized database comprised of names, postal addresses, telephone numbers and associated email addresses of individuals who had agreed to receive marketing communications.  Plaintiff alleged that our client unilaterally raised the fees it charged to send out every 1000 emails (the cost per mille, or “CPM” rate).

Plaintiff had asserted claims against our client for violation of the Florida Deceptive and Unfair Trade Practices Act (“FDUTPA”), a so-called “Mini-FTC Act.”  Plaintiff sought unspecified damages as well as declaratory and injunctive relief.

Lewis & Lin filed a Motion to Dismiss the Complaint, arguing that the case belonged in binding arbitration pursuant to the licensing agreement, which contained a mandatory arbitration clause—even though that agreement was never signed by the parties.  The court agreed with Lewis & Lin’s position, ruling that under Florida precedent, arbitration clauses can be enforced even when they are part of an unsigned agreement if the parties performed under the terms of the contract.

The court also rejected defendant’s argument that FDUPTA claims are not subject to arbitration clauses due to the statute’s policy of protecting Florida consumers.  The court ruled that nothing prohibited FDUPTA claims from being decided in an arbitration, and that, in any event, under the terms of the unsigned licensing agreement, it was New York law, not Florida law, that governed.

The court’s dismissal of the case with prejudice effectively means that our client has saved thousands of dollars worth of legal fees to litigate a case in a distant court, and extinguished a potentially expensive claim.  David Lin argued the case for the firm.

Lewis & Lin Defends Tucks.com in Domain Name Dispute

In a unanimous decision of the World Intellectual Property Organization, a three member Panel denied the complaint of Johnson and Johnson in a domain name dispute filed against Webquest, Inc., the owner of the descriptive word domain name, Tucks.com.  The decision came as a vindication of the rights of professional domain name investors, who register dictionary word domain names for their value as generic terms, and not for their association with known brands.  Notwithstanding the proliferation of new gTLDs and the anticipated launch of new TLDs by ICANN, .com domain names remain the hottest commodity on the market.  In a world where companies choose dictionary words and last names as product names, and there exists a dispute resolution process that can be subjective, domain investors often find themselves on the receiving end of administrative proceedings.  Panelists are paid very little to sift through piles of evidence and conflicting arguments.  Perhaps as a result, decisions can often be formulaic and interpretation of the Policy overly rigid.  In this case, however, the Panel gave thoughtful consideration to the evidence, or lack thereof, in finding that the Complainant had failed to demonstrate bad faith on the part of the Respondent.    

 

Lewis & Lin Defends Pair of Domain Names

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.    

Can the Real Delia Ephron Please Stand Up?

Here’s an interesting article by author/screenwriter’s Delia Ephron about her recent experience having her name cybersquatted. Fortunately, Ms. Ephron was able to file and win a UDRP action against the cybersquatter, who did not respond to the complaint.  In its decision, the UDRP panel noted that Ms. Ephron’s name was “both well known and relatively rare.”

In our practice, we often see cases of “name jacking” similar to what Delia Ephron experienced. Unfortunately, for those who do not have as well-known a name as Ms. Ephron, the UDRP process generally cannot transfer the domain to its rightful owner.

Under the Anti-cybersquatting Consumer Protection Act, however, victims of name-jacking have a remedy against personal name cybersquatters, even if they don’t have famous names. The ACPA imposes liability on any person who registers a domain name consisting of the name of another living person if the registrant intended to make a profit by reselling the domain. While the ACPA’s provisions would require that a lawsuit be brought in federal court, it also empowers the judge to award attorneys fees to the prevailing party.  You don’t have to be Michael Jordan or Ralph Lauren to rightfully keep your own name.

If you have a question about name-jacking, cybersquatting or trademark law, please feel free to contact the attorneys at Lewis & Lin.

Lewis & Lin Obtains UDRP Victory Against One of Nation’s Largest Hospital Networks

In a sweeping decision by an NAF arbitration panel, Lewis & Lin obtained a victory for its client in a UDRP dispute for the domain name <BrowardHealth.com>.  Complainant, the North Broward Hospital District, claimed that the domain was confusingly similar to its “BROWARD HEALTH” mark in which it holds common law and statutory rights.  The hospital also argued that because of the services being offered on the domain name–a medical services directory–respondent had no rights or legitimate interests in the domain and therefore registered and used the name in bad faith.

Lewis & Lin argued for our client that the disclaimer in the Hospital’s federal trademark registration limited its rights, precluding a finding of confusing similarity.  We also argued that the directory of Broward County, Florida medical providers, insurance providers, and healthcare industry careers provided at the website <BrowardHealth.com> was a legitimate use of the domain.  Finally, we argued that the Hospital failed to allege both registration and use of the domain name in bad faith.

The three-member arbitration panel unanimously agreed with Lewis & Lin on the its bad faith argument, and therefore did not need to address our other two arguments.  Specifically, the panel found that there was “no bad faith when the complainant initiated an offer for the domain name and the respondent offered to sell the disputed domain name at market price.”  Further, the panel noted that the Hospital’s first use of the “BROWARD HEALTH” mark was in 2007, “at a time that the domain in dispute is shown to have been active by the Internet Wayback Machine so that the hospital should have been aware of its existence when it filed the application for trademark registration and certainly would have become aware of it when they registered <browardhealth.org> and <browardhealth.net>.”

Finally, the panel further refused to find bad faith in this case because the domain name was “comprised entirely of common terms that have many meanings apart from use in Complainant’s BROWARD HEALTH mark.”  As a result, “it would not have been unreasonable for Respondent to have viewed the words ‘Broward Health’ as not being a protectable portion of the registered mark, particularly given that the domain name at issue had been registered and was active prior to filing of the Complainant’s application.”  

Having failed to establish all three elements required under ICANN policy, the complainant’s claim was denied.

The case is North Broward Hospital District v. Shiffman, No. FA1111001416226 (NAF Jan. 12, 20012).  The decision is available here.