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.
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.
A federal court in Arizona has delivered a victory to Lewis & Lin’s client, denying a motion for a preliminary injunction seeking to transfer a domain name to the plaintiff in a breach of contract dispute.
Plaintiff alleged to have entered into a contract to buy the domain name on Sedo, the online domain name marketplace. Claiming that it did not receive the domain name after tendering the purchase price, plaintiff sued in Arizona, the state of its principal place of business. Lewis & Lin opposed, arguing that its client, a resident of Lebanon, did not have sufficient contacts with Arizona related to the case to support the exercise of jurisdiction over him.
Plaintiff asserted that our client purposely availed himself to the privilege of doing business in Arizona by (1) registering the domain name with GoDaddy, which is based in Arizona; (2) engaging in contract negotiations with plaintiff, who was based in Arizona; and (3) engaging in various post-complaint activities after knowing that plaintiff was based in Arizona.
Lewis & Lin argued that none of these contacts satisfied the inquiry required to assert jurisdiction over the defendant. First, the registration of the domain name with GoDaddy was not a “but for” cause of the lawsuit. Second, the defendant could not be said to have “purposely availed” himself to Arizona by negotiating through Sedo’s double-blind sales platform. And third, the lawsuit did not arise out of the alleged post-complaint activities.
The court agreed with Lewis & Lin on all of our points. In a nine-page opinion, the court ruled that the plaintiff “has not shown a likelihood of success on the merits or the existence of serious questions because Defendant is not subject to personal jurisdiction in this Court.” The case is Inter123 Corporation v. Ghaith, 2014 WL 1343508, No. CV-14-00463 (D. Ariz. Apr. 4, 2014).
In a major victory for our client, Lewis & Lin LLC obtained a dismissal of a proposed class action lawsuit alleging violation of the federal Telephone Consumer Protection Act (“TCPA”). The TCPA, enacted in 1991, restricts telephone solicitations (i.e., telemarketing) and the use of automated telephone equipment. It also limits the use of automatic dialing systems, prerecorded voice messages, text messages, and faxes in consumer marketing.
The plaintiff’s complaint, filed in federal court in Florida, alleged that defendant violated the TCPA by faxing him an unsolicited advertisement without the required “opt-out” notice. Plaintiff sought statutory damages, plus attorney’s fees, costs, and injunctive relief, on behalf of himself and all others similarly situated.
Immediately upon notice of the case, Lewis & Lin made an offer of judgment in accordance with Rule 68 of the Federal Rules of Civil Procedure. We then filed a motion to dismiss the case based on the mootness of the named plaintiff’s claim. Plaintiff argued that the attempt to “pick off” the named plaintiff in a class action suit was inappropriate.
In its decision, the district court judge recognized the existence of a split of authority, both across federal circuits and within the 11th Circuit, about whether a defendant can moot a putative class action claim by making an offer that satisfies only the individual plaintiff’s entire claim. However, the court agreed with Lewis & Lin’s position, that “allowing a case, not certified as a class action and with no motion for class certification even pending, to continue in federal court when the sole plaintiff no longer maintains a personal stake defies the limits on federal jurisdiction.” Thus, the court concluded, Lewis & Lin’s offer of judgment mooted plaintiff’s claims “notwithstanding the fact that [plaintiff] has alleged a class action claim in his complaint. Accordingly, the complaint was dismissed with prejudice. The case is Barr v. International Dental Supply Co., No. 13-CIV-61981 (S.D. Fla.).
The Florida 4th District Court of Appeal has affirmed a lower court’s dismissal with prejudice of unfair trade practice claims against Lewis & Lin’s client, a leading digital marketing technology company.
The plaintiff had filed an action for violation of the Florida Deceptive and Unfair Trade Practices Act (“FDUTPA”), seeking unspecified damages as well as declaratory and injunctive relief.
In the trial court, Lewis & Lin filed a Motion to Dismiss, arguing that the case belonged in arbitration pursuant to a mandatory arbitration clause in an unsigned licensing agreement. 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.
On appeal, plaintiff argued that the trial court erred by not holding an evidentiary hearing, that the FDUPTA claim was not governed by the licensing agreement, and that the arbitration clause was unenforceable as to its claims. Lewis & Lin argued that the trial court did not commit error, that the plaintiff’s claims were properly within the scope of plaintiff’s obligation to arbitrate, and that plaintiff had waived any right it may have had to litigate.
In a one-word per curiam decision, Judges Stevenson, May and Gerber affirmed the decision of the trial court, setting in place Lewis & Lin’s victory for our client.