Domain Name Disputes
Knocking Down Counterfeit Websites Forty-Three at a Time
The in rem provisions of the Anti-Cybersquatting Consumer Protection Act allows in rem proceedings – actions identifying the domain name itself as a defendant. This is useful when the anonymity of the true domain name registrant makes normal service of process unfeasible. A lawsuit against all the problematic domain names owned by an entity can be cost effective, however the use of fake contact information by registrants can frustrate the ability for the plaintiff to establish joinder (the requirement that all the bad faith domain name registrations arose out of a single set of facts). In other words, that there is a common owner. Representing luxury goods manufacturer Montblanc, Cameron Reuber and Martin Schwimmer used sophisticated computer forensic techniques to identify common digital ‘fingerprints’ on forty-three websites, thus establishing common ownership of the underlying forty three domain names that otherwise appeared to belong to many various registrants. Thus the forty-three sites were taken down in a single lawsuit.
Montblanc-Simplo GMBH v. Montblancmagasin.com, et. al., 13-cv-1215 (E.D.V.A.)
Walk-off Home Run in White Plains Courthouse
Leason Ellis had a walk-off home run here in White Plains, cementing our position as a "get-it-done" IP firm prosecuting cases at the courthouse. This case concerned a broker whose portfolio of one-million domain names was recently acquired by GoDaddy. The broker was sued here in White Plains in a trademark case involving Lanham Act cybersquatting, dilution, and false advertising claims. All claims were dismissed on summary judgment, with prejudice, in favor of our client. Martin Schwimmer and Cameron Reuber secured that victory.
NEW WORLD SOLUTIONS, INC. V. NAMEMEDIA INC., 150 F.SUPP.3D 287 (S.D.N.Y.)
Representing Party City in a Canadian domain name proceeding, Leason Ellis obtained a favorable decision to recover the domain names party-city.ca. In their decision, the arbitrators found that the domain names were registered in bad faith because they were used to point to other websites operated by the registrant selling competing goods. The registrant's arguments that it was unaware of Party City and its Canadian trademark registration were deemed not credible under the circumstances. Additionally, the registrant's arguments that PARTY CITY was descriptive or generic was rejected outright in view of the Canadian trademark registration for the mark PARTY CITY.
PARTY CITY CORPORATION V. TIIMPORTS LTD., 2013-12-17 CIRA 245
Bringing Home a Win for IHome
Leason Ellis brought home a win for client SDI Technologies Inc., owner of the brand iHome, to obtain transfer of the domain name ihomeclockradio.net. In awarding transfer, the Panelist at the National Arbitration Forum found that the domain name ihomeclockradio.net is confusingly similar with the mark IHOME, the respondent lacked rights or a legitimate interest in the domain name, and the name had been registered and used in bad faith.
SDI Technologies Inc. v. Kim Cook, Claim Number: FA1203001436742
Lead by Peter Sloane, Leason Ellis has achieved much domain name dispute success on behalf of our client Honeywell International. In July 2016, the National Arbitration Forum awarded transfer of the domain name honeywell.cloud to Honeywell International. See decision here. The UDRP win comes on the heels of a successful URS proceeding where the domain name was first suspended. See final determination here. The prior year, we also obtained transfer of the Iranian domain names honeywell.ir and garrett.ir through WIPO on behalf of Honeywell.
The First Federal Domain Name Case
Martin Schwimmer participated in the first federal domain name case (before there was even a federal cybersquatting statute), MTV V. Curry. MTV veejay Adam Curry obtained the domain name MTV.COM, before anyone knew what a domain name was. MTV successfully obtained a preliminary injunction against Mr. Curry’s use of a music-oriented website at www.mtv.com, and the case ultimately settled.
MTV V. Curry, 867 F. Supp. 202 (SDNY)
The First UDRPs
Martin Schwimmer participated in the ICANN committee that created the Uniform Dispute Resolution Procedure, and represented Complainant’s in some of the earliest UDRP proceedings, establishing precedents along the way (resolving such thorny issues as whether an ‘under construction’ sign can constitute bad faith use – it can). Martin is a UDRP panelist as well, and has written over thirty decisions.