The cybersquatting lawsuit was filed this earlier this summer in June by Exxxotica. Exxxotica is seeking the maximum statutory damage award ($100,000 for each cybersquatted domain name) under the Anti-cybersquatting Consumer Protection Act (ACPA).

The dispute between the adult fan-show companies has at its epicenter the Los Angeles Convention Center, where Adultcon has been holding shows for years. However, this year Exxxotica decided to expand its fan base (which normally is covered by Exxxotica shows in Miami and New Jersey) into the L.A. market by scheduling a show at the same venue Adultcon has been regularly hosting adult show events.

Exxxotica alleges that Adultcon has registered and is using 19 domain names infringing on Exxxotica’s federally registered trademark ‘EXXXOTICA’. The domain names in dispute are;

Exxxotica-lv.com, ExxxoticaExpo-LA.com, ExxxoticaExpo-LV.com, ExxxoticaExpoLA.com, ExxxoticaExpoLV.com, ExxxoticaLA.com, ExxxoticaLasVegas.com, ExxxoticaLosAngeles.com, Exxxoticalv.com; ExxxoticaVegas.com; ExoticaExpo-LA.com, ExoticaExpo-LV.com, ExoticaExpoLA.com, ExoticaExpoLV.com, ExoticaLA.com, ExoticaLosAngeles.com, ExoticaLV.com, ExoticavaLasVegas.com and ExoticaVegas.com.

In response to the cybersquatting allegations, Adultcon argues that Exxxotica’s trademarks have become generic and thus unenforceable;

It will be very interesting to see how this dispute plays out. From a cursory inspection of the 19 disputed domain names, it appears that Adultcon may have subjected itself to massive liability (19x $100,000).

Because everyone of the 19 disputed domains bears some form of Exxxotica’s ‘EXXXOTICA’ trademark, unless Adultcon can prove that Exxxotica’s trademarks are generic it is possible that Adultcon could be left paying huge fines in statutory damages for these 19 disputed domain names.

The case is Digby Adler Group LLC v. Image Rent a Car, Inc., 2010 U.S. Dist. LEXIS 76309, 1-2 (N.D. Cal. July 20, 2010). Plaintiff Digby Adler Group LLC (Adler) originally filed suit in federal district court in the Northern District of California against Defendants Image Rent A Car, Inc. (Image) and Van Rental Co., Inc. (Van Rental), alleging cybersquatting, unfair competition, and false advertising under the Lahnam Act, as well as common law trademark infringement and violation of Section 17200 of California’s Business and Professions Code.

The instant decision was for a Motion to Dismiss or Transfer Venue to the Eastern District of New York and was issued by U.S. District Judge Samuel Conti.

Brief background of the parties involved;

Plaintiff Adler is a California limited-liability company headquartered in San Francisco which rents cars and vans, with a focus on long-term rentals to touring music groups. It has done business under the mark ‘Bandago’ since 2003 and filed an application to register the mark with the U.S. Patent and Trademark Office (USPTO) in 2008 but has not yet received a certificate of registration (here it is important to note that a plaintiff may sue on its mark under a theory of ‘use’ without the mark actually being a federally registered trademark). In 2003, Alder registered the domain name www.bandago.com and has since used that domain in connection with its van rental business.

Defendants Image and Van Rental are also in the business of renting vans and other automobiles. Both Image and Van Rental share the same CEO and both are New York domestic business corporations. Both also have their primary place of business in Brooklyn, New York and maintain rental offices in New York and Florida. Image uses the website www.Imagerentacar.com in conjunction with its van rental services.

Adler alleged that in 2008, Van Rental (as an agent for Image) registered and began using the website www.Bandago.net to redirect visitors to www.Imagerentacar.com. Adler further alleged that Van Rental and Image had never before used the “Bandago” name in commerce, and that they used www.Bandago.net solely to divert Adler’s customers to Image’s website. Adler also claims that it has received calls from confused customers, and claims that some customers have used Defendants’ services rather than Plaintiff’s.

The Motion to Dismiss or Transfer Venue to the Eastern District of New York;

With this motion Van Rental and Image sought to have the case against them dismissed for a lack of jurisdiction or, in the alternative, to transfer venue to the Eastern District of New York. Arguing against the motion, Adler argued that the N.D. California court may properly exercise personal jurisdiction over Van Rental and Image without violating the Due Process Clause of the United States Constitution.

As he addressed the motion, Judge Conti noted that the Ninth Circuit provides a three-part test to determine if jurisdiction comports with due process;

(A) The nonresident defendant must do some act or consummate some transaction with the forum or perform some act by which he purposefully avails himself of the privilege of conducting activities in the forum, thereby invoking the benefits and protections of its laws;

(B) The claim must be one which arises out of or results from the defendant’s forum-related activities; and

(C) Exercise of jurisdiction must be reasonable.
Panavision v. Toeppen, 141 F.3d 1316, 1320 (9th Cir. 1998).

Addressing the first prong (A) of the Panavision test, Conti stated that it can be satisfied either by a party that has purposefully availed itself of the privilege of conducting business activities within the forum or purposefully directed activities toward the forum;

“Purposeful direction exists when a defendant has committed an act outside of the forum state that was intended to and does in fact cause injury within the forum. Calder v. Jones, 465 U.S. 783, 788-89, 104 S. Ct. 1482, 79 L. Ed. 2d 804 (1984). Under Calder’s “effects test,” the defendant must have (1) committed an intentional act, (2) expressly aimed at the forum state, (3) which causes harm that the defendant knows is likely to be suffered in the forum state. Id.; see also Brayton Purcell LLP v. Recordon & Recordon, 606 F.3d 1124, 1128 (9th Cir. 2010).”

Conti then found that the (1) ‘intentional act’ under the Calder effects test was satisfied by Van Rental’s conduct in registering and using the www.bandago.net domain name to redirect users to the www.Imagerentacar.com website.

Adler sought to demonstrate that the (2) ‘express aiming’ requirement was satisfied and attached 19 print outs of web pages on Image’s website tending to show that Defendants advertised and rented to customers in California. Judge Conti then iterated why these pages were not indicative of advertising to customers in California;

“The numerous web pages Plaintiff cites to contain a great deal of text, most of which is incomprehensible nonsense likely so positioned as an attempt to optimize search engine results through “keyword stuffing.” See Eric Goldman, Deregulating Relevancy in Internet Trademark Law, 54 Emory L.J. 507, 531 n.69 (Winter 2005) (describing “keyword stuffing” as a process in which web developers add repeated text with no relevance to the  content they are publishing to websites in an attempt to improve search engine result rankings and thus increase web traffic). For these reasons, the Court finds that the Imagerentacar.com website alone, absent “something more,” does not satisfy the “express aiming” requirement.”

Continuing to examine ‘express aiming’, operating a passive website doesn’t satisfy express aiming, ‘something more’ is required;

“While maintenance of a passive website alone cannot satisfy the express aiming prong, operating a passive website in conjunction with “something more –conduct directly targeting the forum — is sufficient to confer personal jurisdiction.” Rio Properties, Inc. v. Rio Intern. Interlink, 284 F.3d 1007, 1020 (9th Cir. 2002). Within the cybersquatting context, Panavision suggests that merely registering a domain name and linking it to a website does not alone constitute “express aiming.” 141 F.3d at 1321. In Panavision, the “something more” was the defendant’s scheme to obtain money from the plaintiff — the plaintiff sent the defendant a cease-and-desist letter, and the defendant demanded $ 13,000 in exchange for the name. Id. at 1319.”

The ‘something more’ found to be satisfied where the two parties are in direct competition with each other;

“Defendants allege that they do no business in California, and thus do not compete with Plaintiff for California customers. However, the Court reads Brayton Purcell to hold that the location of the customers is irrelevant, as long as the plaintiff and defendant are in direct competition, the defendant’s alleged tort was in furtherance of this competition, the defendant knew the plaintiff resided in the forum state, and the defendant knew the harm would be felt in the forum state. 606 F.3d at 1130-31. Because all the above elements are alleged by Plaintiff and not rebutted by Defendants, the express aiming prong is satisfied.”

The third requirement of the effects test, (3) that defendant engaged in conduct which causes harm that the defendant knows is likely to be suffered in the forum state is satisfied when the defendant’s intentional act has ‘foreseeable effects’ in the forum.  Judge Conti then found that it was foreseeable that Adler would be harmed by Van Rental’s use of the www.bandango.net domain name, and that the harm would occur in Adler’s principal place of business, California.

With the effects test satisfied, the court found that Van Rental and Image’s activity was sufficient to demonstrate purposeful direction. Then Judge Conti went on to conclude that the second (B) claims arise out of the defendants’ forum-related activities was satisfied because Van Rental and Image’s conduct infringed on Adler’s mark. Further, Conti concluded that (C) an exercise of jurisdiction is reasonable because Defendants failed to specifically address the reasonableness prong in their Motion.

Conclusion;

Judge Conti found in favor of Adler and jurisdiction is proper over Defendants Image Rent A Car, Inc. and Van Rental Co., Inc., and transfer of venue to the Eastern District of New York would not serve the interest of justice. Van Rental and Image’s Motion to Dismiss or Transfer was denied.

What you can retain from this ruling by Judge Conti;

• Conduct that qualifies as infringing on another’s trademark can subject you to specific jurisdiction in that party’s home state (or if a corporation- principal place of business and place(s) of incorporation)
• If a party to a trademark-infringement lawsuit, specifically address all pertinent points of law (in this case Defendants failed to address whether the exercise of jurisdiction was reasonable)
• Foreseeability can extend to situations where one has made use of a domain name that is similar to another’s mark and/or domain name (ex: don’t register and use www.bandago.net if www.bandago.com is in use by the ‘Bandago’ mark owner)

The Hollywood Reporter noted that the over 100 domain names targeted in the suit mostly involve the Film Academy’s prestigious and trademarked “Oscars”. Targeted domain name examples include 2011oscars.com, academyawardz.com, jaylenososcars.com, betacademyawards.com, oscarsunplugged.com, oscarshotels.com, oscarstravel.com, oscarsliveblogging.com.GoDaddy.com has been profiting from domain owners through a “parking” program which pays users on a pay-per-click basis. Pay-per-click programs run by domain registrars allow users who register a domain name to gain revenue by “parking” the site. Instead of normally loading content on the site, the domain owner gives control of the site to the registrar from which it was purchased and the registrar pays the domain owner on a pay-per-click basis. Upon purchase of a domain name, owners are given the option to ‘park’ the site, whereby the domain registrar will turn it into a pay-per-click site that generates revenue for the domain owner whenever the links are clicked.

The Legal Satyricon analogized the ‘Parking’ of domain names to a billboard on a building that is under construction in that it is not illegal and does give the viewer some indication of what the site is while not actually providing any of the services that the building/site is actually under construction for.

GoDaddy refers to its own pay-per-click program as “CashParking”. The “CashParking” program allows consumers to buy a domain name, “park” the page with the domain registrar (GoDaddy.com) and then collect a portion of revenue from GoDaddy’s advertising partners on a pay-per-click basis. The problem between the Film Academy and GoDaddy arose because the great many domain names that GoDaddy is using as “parked” sites are allegedly infringing on Film Academy’s trademark ‘Oscars’ by diverting traffic.

When these pay-per-click websites operate by hijacking traffic from a registered trademark, they are breaking the law. GoDaddy is allegedly in violation of the ACPA’s, 15 U.S.C. § 1125(d) for operating a pay-per-click site that is diverting traffic from a registered trademark. This subjects GoDaddy to up to $100,000 in damages, forfeiture of interfering domain names, and reasonable attorney’s fees.

If you are faced with a cybersquatting case under the UDRP or the ACPA, contact one of our cybersquatting attorneys today for a free consultation.  You may be entitled to recover your domain name through a cybersquatting case under the UDRP or the ACPA.

The Ultimate Fighter trademark boasts a reality show, a movie ‘The Ultimate Fighter’ (2005), and a robust following. The reality show is now spanning 12 seasons. In it, viewers track the day-to-day activities of fighters who compete in a championship to become The Ultimate Fighter. Winning ‘The Ultimate Fighter’ competition grants the winner a six-figure / multi-fight contract with the UFC.

However, recently The Ultimate Fighter’s parent company, Zuffa, LLC, has been embroiled in a domain dispute battle with the owner of TheUltimateFighter.com domain name, Anton Resnick. This could explain the lack of content on TheUltimateFighter.com.On Wednesday that domain dispute was resolved. After Zuffa was granted its motion for an injunction and after reaching an agreement with the owner of the infringing domain name, Zuffa filed a voluntary dismissal asking the court to dismiss the suit with prejudice.

Zuffa’s dismissal request was terse, “Zuffa, LLC has resolved its differences with Defendant theultimatefighter.com and . . . hereby dismisses the instant action with prejudice.”

The original complaint which Zuffa dismissed on Wednesday, claimed that Resnick should be charged as a ‘cybersquatter’ under the provisions of the Anticybersquatting Consumer Protection Act (15 USC § 1125(d) (ACPA). In its complaint, Zuffa alleged that Resnick failed to use the domain name in connection with a legitimate commercial fair use and moved the court to enjoin Resnick’s registrar, eNom, from transferring the domain name to any other party. Prominent in Zuffa’s prayer for relief, was a request for a permanent injunction requiring eNom to transfer the registration of TheUltimateFighter.com (and .net) to Zuffa.

Resnick, in an interview with Sherdog.com, expressed that he had no plans to oppose the injunction and said, “The issue has been resolved. (TheUltimateFighter.com) will be transferred by the court with no contest and (TheUltimateFighter.net) will be transferred to Zuffa as well.” That story can be found here.

On Thursday, Judge Lloyd George approved the voluntary dismissal and ordered the case dismissed with prejudice.

If you are faced with a cybersquatting case under the UDRP or the ACPA, contact one of our cybersquatting attorneys today, for a free consultation.  You may be entitled to recover your domain name through a cybersquatting case under the UDRP or the ACPA.

For more on this story, MMA, and TheUltimateFighter.com;

Update: Zuffa Files Suit for ‘The Ultimate Fighter’ Domain Name,

Wiki- The Ultimate Fighter,

UFC,

For more on cybersquatting and domain disputes,

Domain Disputes Alert: Australian Political Party falls prey to a repeat cybersquatter,

Domains Dispute Alert: A federal court in Northern California has awarded $33.15 million in a default judgment to Verizon Communications in what the company is calling the largest cybersquatting judgment ever,

The case is Human Resource Certification Institute v. Tridibesh Satpathy, and it is an example of a dwindling number of recent cases where an innocent domain name owner is allowed to retain his domain name even though it appears to infringe on a complainant’s service mark rights.

The Panel held in favor of Defendant and noted that, “if the Respondent reasonably believed that what he was doing was legitimate, it cannot be said that his registration of the Domain Name was in bad faith.”

The Panel further elaborated on trademark law and cybersquatting;

“The Policy was designed to deal with a relatively narrow form of dispute between trade mark (and service mark) proprietors and domain name registrants, namely the deliberate registration of a domain name featuring the complainant’s trade mark or a confusingly similar variant of it with a view to causing damage or disruption to the complainant or his business or unfairly exploiting the complainant’s trade mark for the registrant’s own advantage.”

Allemann also noted of the Panel’s ruling that “it followed up with an explanation of why this is not a clear-cut case of cybersquatting, and why then the complaint must fail:”

“Is the Respondent’s use of the Domain Name in violation of the Complainant’s service mark rights in a traditional trademark sense? The Panel cannot be certain. By reference to which country’s trade mark law is the question to be answered? One of the members of the Panel believes that in certain jurisdictions such a use of another’s service mark might be regarded as a fair descriptive use of the service mark to describe the educational services provided by the Respondent.
However, whether or not the Respondent’s use of the Domain Name constitutes trade mark/service mark infringement is outside the scope of this proceeding. For the purposes of the Policy, if the Respondent reasonably believed that what he was doing was legitimate, it cannot be said that his registration of the Domain Name was in bad faith.”

The Panel’s full ruling on the case can be found here,

If you are faced with a cybersquatting case under the UDRP or the ACPA, contact one of our cybersquatting attorneys today for a free consultation.  You may be entitled to recover your domain name through a cybersquatting case under the UDRP or the ACPA.

The Argentinian belly dancer, Aisha Ismail was the first belly dancer at the Hollywood Greek restaurant. Interestingly though, Ismail was also a part-time computer programmer. She purchased the domain name ‘tavernaopa.com’ and when approached; she refused to sell it to the restaurant, even when offered $5,000 she rejected the offer, instead demanding $25,000.

Turning down the $5,000 turned out to be a poor choice for Ismail because in 2008, Taverna Opa sued Ismail for cybersquatting on its stolen domain name. After rejecting Tsialiamanis’s offer, she began to advertise for her new place of employment, the Greek Seafood Restaurant Milos, on tavernaopa.com. “I will like to invite you to the new restaurant ‘Milos’ best and freshest seafood.”

Tsialiamanis demanded $100,000 in damages for Ismail’s bad faith cybersquatting on tavernaopa.com. After all, Ismail had been using tavernaopa.com to divert commercial traffic and business to the competitor Greek Restaurant Milo. In the suit, Ismail was never served with process but this didn’t deter the court, through Judge William Hoeveler, awarding Taverna Opa $10,000 in a default judgment.

MiamiNewTimes was able to track down Ismail, who said that she didn’t hear of the lawsuit until after it was decided, and claims that she had advertised for Milos only on her own personal website, aishaismail.com. “But anyway,” she adds, “Tavernaopa.com was mine so I could do whatever I wanted.”

Ismail went on to express that she doesn’t have the funds to be able to pay the judgment, “I’m a simple village woman. I don’t want problem,” Ismail adds, before asking for the number of a cheap lawyer.

If you are faced with a cybersquatting case under the UDRP or the ACPA, contact one of our cybersquatting attorneys today for a free consultation.  You may be entitled to recover your domain name through a cybersquatting case under the UDRP or the ACPA.

Neon Network then filed a declaratory judgment action in Arizona asking the court to determine that it had not violated the Anticybersquatting Consumer Protection Act.  The judge issued a default judgment against Aspis and awarded Neon $1,547.  The judgment can be viewed here, courtesy of Domain Name Wire.

Domain names can be incredible assets for a business.  Like a well placed piece of commercial real estate, domain names can be the key to turning a dwindling business into a healthy and vibrant economic powerhouse.  A well thought out and developed domain name can increase sales, increase brand recognition, and extend a business’ reach across international borders.  Cybersquatting and cybersquatters seek to profit from the inherent value that domain names provide to trademark holders.  Cybersquatters and, more specifically, typosquatters will, for example, register domain names that are common misspellings or typographical errors of a business’ trademark to siphon off the web traffic and goodwill that a trademark owner has created in its brand and domain name.

Cybersquatting cases can be filed through two similar methods.  The first is the Uniform Domain Name Dispute Resolution Policy (UDRP).  The UDRP is a contract created by ICANN that every domain name registrant of a major top-level domain name (.com, .net, or .org) must agree to in order to register a domain name.  Under this contract, the registrant agrees to have disputes over the domain name, specifically disputes over the abusive registration of a domain name, decided by arbitration under the Policy.  These arbitration proceedings are typically brought in front of the National Arbitration Forum or the World Intellectual Property Organization.

The second method is the Anticybersquatting Consumer Protection Act (ACPA).  The ACPA allows a plaintiff to bring a cybersquatting case in federal court against a person that registers or uses a domain name in bad faith that is identical or confusingly similar to the trademark or the personal name of the plaintiff.  This remedy allows the plaintiff to seek statutory damages of up to $100,000 per domain name and attorneys fees in exceptional circumstances.  Additionally, a plaintiff can bring an in rem suit against foreign defendants to recover a domain name that was registered with a registrar or registered through a registry located on US soil, but monetary damages are not available in an in rem suit under the ACPA.

If you are faced with a cybersquatting case under the UDRP or the ACPA, contact one of our cybersquatting attorneys today for a free consultation.  You may be entitled to recover your domain name through a cybersquatting case under the UDRP or the ACPA.