January 18, 2011

Domain Name Registration Lapse Results In Headaches And Trademark Infringement Lawsuit

domain-name-registration-trademark-cancel-toms-famous-family.gifSanta Ana, CA – This case should serve as a warning to all domain name owners: TIMELY RENEW YOUR DOMAIN NAME REGISTRATION AND DON’T LET IT LAPSE! The Valaskantjis family trust, owner of the Tom’s Famous Family Restaurants since 1968, unfortunately allowed its domain name registration to lapse without timely renewal. The domain name, www.tomsfamousfamilyrestaurants.com, was then allegedly registered by defendant Katz Global Media, LLC.

Katz is accused of establishing a website using Tom’s trademarks and copyrights to publish false reports regarding Tom’s use of illegal alien labor to operate its restaurants. The website also claims that plaintiffs don’t pay the required taxes or workers compensation insurance. Further, Defendant is accused of soliciting the public to report plaintiffs to the IRS and Customs and Immigration Enforcement. On top of the problems created by the new website, Plaintiffs have also allowed their trademark registration to lapse: see here.

It appears that the defendant has researched First Amendment and fair use defenses. Courts have previously found for plaintiffs in bad faith registrations of lapsed domain names where the subsequent registrant attempted to sell the domain back to the prior registrant. See BroadBridge Media, L.L.C. v. Hypercd.com, 106 F. Supp. 2d 505, 511-512 (S.D.N.Y. 2000). In this case, however, it appears that a sophisticated defendant is using the domain name for what appears to be protected speech. It will be interesting to see how this case unfolds.

The case is Tom’s No. 18, LLC v. Katz Global Media, LLC, SACV11-00044 JST (C.D. Cal. 2011).

January 24, 2010

Uncharitable Trademark Dispute Over Eagles Word and Design – Grand Aerie vs. Eagles Clubs

trademark-attorney-aerie-eagles-clubs-fraternal-foundation.jpgLos Angeles, CA – Grand Aerie of the Fraternal Order of Eagles (FOE) sued Eables Clubs International, Inc. and Eagles Clubs International Foundation, Inc. for trademark infringement and unfair competition. FOE is a non-profit fraternal organization that has been engaged in social, civic and charitable activities since the 1890’s. FOE uses numerous “Eagles” trademarks, including logos, which have been registered with the U.S. Patent & Trademark Office.

Defendants are also a non-profit fraternal organization engaged in social, civic and charitable activities. Defendants use “Eagles” trademarks and logos incorporating an eagle design. FOE alleges that Defendants have registered the eaglesclubs.org domain name in bad faith in an effort to divert consumers from FOE’s online location. Defendants are accused of adopting the confusingly similar marks with prior knowledge of Plaintiff’s trademarks. The case is Grand Aerie of the Fraternal Order of Eagles v. Eagles Clubs International, Inc., et al., CV10-0357 RSWL (Cal. 2010).

January 17, 2010

Shaquille O’Neal Files “SHAQTUS” Trademark Infringement Lawsuit In Las Vegas

las-vegas-nevada-trademark-attorney-shaqtus-shaquille-oneal-trademark-infringement.jpgLas Vegas, NV – Shaquille O’Neal has had numerous nicknames throughout his NBA basketball career. But his SHAQTUS nickname, which he assumed when he was traded to the Phoenix Suns in 2008, has become the prickly subject of a trademark infringement, cybersquatting, and right of publicity lawsuit. O’Neal has exclusively licensed his “Shaq” trademarks and his name, image, and likeness to his Mine O’Mine, Inc. corporation – the Plaintiff in the case.

Michael Calmese, Dan Mortensen, and their True Fan Logo, Inc. are the named defendants. On the day that Shaquille was traded to Phoenix, Mortensen registered the domain name and, shortly thereafter, the domain name. Defendants’ website features a cactus character that allegedly has O’Neal’s facial features and wears an orange number 32 basketball jersey – Shaq’s number with the Suns. Defendants sell clothing and other products bearing the SHAQTUS trademark and/or the character.

In 2008 and 2009, ESPN aired commercials featuring O’Neal and a cactus with O’Neal’s facial features. On December 4, 2009, Defendant Calmese allegedly sent a letter to ESPN claiming ownership of the SHAQTUS trademark and proposing a joint-development business arrangement to resolve the dispute. On December 29, 2009, Plaintiff’s counsel sent a cease and desist letter to Defendants demanding the transfer of the domain names. On January 4, 2010, Defendant Calmese responded and allegedly claimed that O’Neal consented to his use of the SHAQTUS mark when O’Neal agreed to take a picture with Calmese and autograph a T-shirt.

The case is Mine O’Mine, Inc. v. Calmese, et al., CV10-00043 KJD (D.Nev. 2010).

January 12, 2009

Court Grants Larry Flynt’s Temporary Restraining Order Prohibiting Use Of “Flynt” Trademark By Nephews

Los Angeles, CA – Larry Flynt had sued (click here for details) his nephews and their company for trademark infringement and unfair competition and was seeking a temporary restraining order to prevent the use of the word “FLYNT” in the business name and the domain names www.flyntdistribution.com and www.flyntcorp.com. The Federal District Court in Los Angeles granted the temporary restraining order (click here) because Larry FLynt had demonstrated a probability of success on the merits of the lawsuit and irreparable harm. Pending hearing on the application for preliminary injunction on January 21, 2009, the Court restrained the defendants from:

1. Advertising, selling and distributing adult-themed motion pictures, videos, and DVDs, as well as other adult-themed goods, which contain “FLYNT” in any typographical format and phrase, including “Flynt Media Corporation” and “FlyntCorp Distribution;”

2. promoting such goods and services on Internet websites, including but not limited to www.flyntdistribution.com and www.flyntcorp.com; and

3. passing off such goods and services as those of Plaintiff Larry C. Flynt at the AVN Adult Entertainment Expo 2009 in Las Vegas, Nevada and elsewhere.

The case is titled Larry C. Flynt v. Flynt Media Corporation, et al., CV 09-00048 AHM (C.D. Cal. 2008).

January 5, 2009

Kirby Morgan Dive Systems Filed A Trademark Infringement, Unfair Competition, And Cybersquatting Lawsuit Against Universal Scuba Distributors

Los Angeles, CA – Trademark attorneys for Kirby Morgan Dive Systems, Inc. filed a trademark infringement, Lanham Act § 43(a) unfair competition, and anti-cybersquatting lawsuit at the Federal District Court in Los Angeles against Universal Scuba Distributors. Click Here To Read The Complaint. Kirby Morgan sells diving equipment including helmets, full face masks, and air control systems under its USPTO registered Kirby Morgan® and Kirby Morgan Dive Systems, Inc.® trademarks. In addition, Kirby Morgan owns five trademark registrations for the designs of its dive helmets. Kirby Morgan has also registered the www.kirbymorgan.com domain name, where its Website is located.

trademark-infringement-kirby-morgan-dive-systems.jpgThe Plaintiff alleges that Universal Scuba Distributors registered the domain name www.kirbymorgandivers.com and used images of Kirby Morgan’s registered helmets, which pictures also included the Kirby Morgan® word mark. Defendant’s “webpage then automatically resolves and/or has links to Universal Distributors’ other website at www.universaldistributors.us where it sells dive products. On [that website], Universal Distributors uses another image of Kirby Morgan’s registered helmet designs under a link to ‘commercial’ products.” The case is titled Kirby Morgan Dive Systems, Inc. v. Universal Scuba Distributors, CV 08-08258 JSL (C.D. Cal. 2008).

PRACTICE NOTE: In an attempt to not trigger insurance coverage under the Defendant’s Commercial General Liability Insurance policy, the complaint conspicuously asserts: “At this time Kirby Morgan is not seeking monetary damages on its trademark infringement claims to prevent Universal from receiving a defense of its claims from any insurance carrier and the amount of economic damages is not known.” The reservation of Plaintiff's right for a future monetary demand should trigger coverage and a duty to defend, especially in view of Plaintiff’s “Prayer for Relief” which seeks: “a judgment that Universal Distributors has willfully and deliberately infringed Kirby Morgan’s rights and that this is an exceptional case entitling Kirby Morgan to enhanced damages under the Trademark Laws of the United States” and “a judgment awarding to Kirby Morgan prejudgment and post-judgment interest until the award is fully paid.” See Gray v. Zurich Ins. Co., 65 Cal. 2d 263, 276 (Cal. 1966) (“Since modern procedural rules focus on the facts of a case rather than the theory of recovery in the complaint, the duty to defend should be fixed by the facts which the insurer learns from the complaint, the insured [e.g. cease and desist letter demanding damages], or other sources.”)

August 27, 2008

Cyberpiracy And Computer Fraud Lawsuit Filed In Los Angeles By Attorneys for Solid Host Against Namecheap

Los Angeles, CA – Attorneys for Solid Host filed a cyberpiracy, 15 U.S.C. § 1125(d), and computer fraud and abuse act, 18 U.S.C. § 1030, complaint at the Federal District Court in Los Angeles over alleged hijacking of its solidhost.com domain name. Ironically, Solid Host is a webhosting service that provides server space to its clients and hosts their websites in addition to the clients’ email servers. Plaintiff registered the solidhost.com domain name in 2004 and has continuously used it, without any interest in abandoning it.

cyberpiracy-attorney-los-angeles-15-usc-1125d-solid-host.bmpThe complaint alleges that on August 4, 2008, due to a security breach at Solid Host’s registrar, eNom, its account was compromised and an unidentified hacker, sued as John Doe, gained access to Solid Host’s account and stole the domain. The hacker allegedly then created his own webpage and offered to sell the domain back to Plaintiff and other parties. Whois Guard is also named as a defendant because it provides private registration of domain names and safeguards the registrant’s identity.

When Plaintiff discovered the transfer of the domain name, it demanded that the registrar Demand Media, owner of eNom, return the registration to Plaintiff. When the registrar allegedly refused to do so without a court order, Plaintiff named it as a co-defendant in the instant lawsuit because it was negligent in allowing the security breach and not providing notice to the Plaintiff of the pending transfer. Unfortunately for Plaintiff, the alleged hacker now also has full control of Plaintiff’s email accounts. The case is titled Solid Host, NL v. NameCheap, et al., CV08-05414 MMM (C.D. Cal. 2008).

PRACTICE NOTE: An advantage of having a registered trademark - which Solid Host does not have - is the ability to battle cyberpiracy/cybersquatting more effectively. Click Here For Additional Advantages Of Registered Trademarks.

July 21, 2008

E! Entertainment’s Trademark Attorneys Filed A Trademark Infringement Lawsuit Over Blogger’s Use of enewsbuzz.com

Los Angeles, CA – Trademark attorneys for E! Entertainment Television filed a trademark infringement, cybersquatting, and Lanham Act § 43(a) unfair competition (15 U.S.C. § 1125) complaint at the Federal District Court in Los Angeles, over entertainment/celebrity news blogger’s use of the enewsbuzz.com domain name. The complaint provides a summary of E! Entertainment’s beginnings in 1990 as the only 24-hour network with programming dedicated to the world of entertainment and celebrity news. It currently “is the world’s largest producer and distributor of entertainment news and lifestyle-related programming." E! alleges that “E! News” and “E! News Weekend” are its most popular television programs and both trademarks have been registered with the U.S. Patent & Trademark Office.

los-angeles-trademark-attorney-e-entertainment.jpgE! alleges that long after it commenced use of its famous E! Marks and E! NEWS Marks, Defendants began business under the ENewsBuzz trademark using the enewsbuzz.com domain name to provide similar services, “Defendants use the ENEWSBUZZ mark, trade name, and domain names in connection with providing gossip, news and images of Hollywood celebrities.” Defendants are alleged to have adopted the confusingly similar mark in order to benefit from the goodwill established by E!: “significantly, Defendants’ ENEWSBUZZ mark is depicted on its website with the letter “E” offset in bold red – the same color that E! Entertainment has been using in connection with the “E!” portion of its E! Marks and E! NEWS Marks for many years.” The lawsuit was filed after the Defendants refused to cease using the subject trademark and domain name in response to E!’s correspondence. In addition to preliminary and permanent injunctions, E! also seeks monetary damages. The case is titled E! Entertainment Television, Inc. v. Louie De Filippis et al., CV 08-04355 ODW (C.D. Cal. 2008).

May 15, 2008

Trademark And Cybersquatting Attorneys For Buy.com File Trademark Infringement, Lanham Act Unfair Competition And Cybersquatting Lawsuit To Stop Alleged Cybersquatter Of Domain Name In Santa Ana, CA

Santa Ana, CA – Trademark and anti-cybersquatting attorneys for Buy.com filed a trademark infringement, Lanham Act unfair competition, cyberquatting, and California Business and Professions Code §17200 lawsuit in Federal District Court in Santa Ana against an alleged cybersquatter of the buys.com domain name. Buy.com has been an e-commerce company since 1997 and has operated the website buy.com to market and sell products since at least 1998. Buy.com owns three relevant trademarks related to its business, which marks are registered on the Principal Register of the USPTO. Buy.com alleges that “throughout the past 10 years, Plaintiff has used the buy.com trademarks to build and establish considerable goodwill in the online retail industry. In fact, through the use of these trademarks, Plaintiff is universally recognized as a leader in e-commerce and as a provider of superior goods and services, and is visited by over 5 million US shoppers each month.”

The complaint continues, “Defendant is the registrant of the Internet domain name buys.com [with an additional “s”]. Defendant uses the buys.com website to profit from the Buy.com trademarks. Specifically, Defendant’s buys.com website contains numerous advertisements for and/or hyperlinks to a variety of products and services that compete directly with Plaintiff, such as eBay and Dell. Upon information and belief, Defendant receives a payment when Internet users click on one or more links or advertisements on the buys.com website . . . By using the buys.com domain name that is confusingly similar to Plaintiff’s trademarks Defendant was and is creating, or attempting to create, an association between the buys.com domain name and Plaintiff, and has frustrated or diverted Internet traffic intended for Plaintiff.” The complaint asserts the following causes of action: (1) Federal trademark infringement under 15 U.S.C. § 1114; (2) False designation of origin and unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (3) Cybersquatting under the Lanham Act, 15 U.S.C. § 1125(d); (4) California common law unfair competition; (5) Unfair competition under California Bus. & Prof. Code § 17200; (6) Common law unfair competition; and (7) Declaratory Judgment under 28 U.S.C. §2201. The case is titled: Buy.com, Inc. v. Webmagic Ventures, LLC, SACV08-00510 JVS (C.D. Cal. 2008).

March 4, 2008

Class Action Attorneys File Lawsuit Against Domain Name Registrar Network Solutions and ICANN

Los Angeles, CA – A class action complaint was filed against domain name registrar Network Solutions, LLC and ICANN for basically cybersqatting and frontrunning on customers’ domain name availability searches through Network Solutions. The case is titled, McElroy v. Network Solutions, LLC et al. The complaint alleges that when a customer searches for the availability of a domain name on Network Solutions, but does not purchase it, Network Solutions itself registers that exact domain name that was searched. Network Solutions then places a full page add on a website provided under the searched-for-domain-name indicating that the domain name may only be purchased from Network Solutions. If the same customer attempts to purchase the domain name from another competing registrar, godaddy.com for example, it receives an unavailability notice. When the customer returns to Network Solutions to purchase the domain, it is charged three and a half times more than registering it elsewhere.

The complaint charges that Network Solutions' misconduct can only occur “through the acquiescence, tacit approval and participation of ICANN” and its Add Grace Period (AGP) agreement, which allows “a domain name registrar to avoid paying a registration fee for domain names canceled within five days of registration.” The complaint continues that “ICANN was, and is, aware of Network Solutions’ actions and continued to permit Network Solutions’ fraudulent abuse of the AGP for its own gain and to the detriment of consumers.” The complaint lists causes of action for fraudulent concealment, aiding and abetting fraudulent concealment, and unjust enrichment.

February 22, 2008

Hollywood Awards Gala Files Trademark Lawsuit Against Cybersquatter

Trademark litigation, including Anti-Cybersquatting Consumer Protection Act violations and Section 17200 unfair competition, was filed by Beverly Hills based Hollywood Network, Inc. against its former independent contractor of ten years, Chris Davies. Hollywood Network alleges that Davies was intimately involved in Plaintiff’s annual Hollywood Film Festival and Hollywood Awards gala celebration. Plaintiff is a licensee of numerous trademarks registered with the USPTO, including Hollywood Film Festival, Hollywood Awards, and Hollywood Movie Awards. Plaintiffs also own numerous domain names that incorporate their trademarks.

Plaintiffs allege that Defendant Davies registered the “awardshollywood.com” and “hollywoodmobileawards.com” domain name using a fictitious pseudonym or dba. Plaintiffs alleged that they made a good-faith attempt to resolve the dispute by having the domain names transferred voluntarily. However, Defendant offered to sell the disputed domain names to Plaintiffs. Plaintiffs thus filed the instant complaint alleging cybersquatting under 15 U.S.C. § 1125(d), requesting statutory damages under 15 U.S.C. § 1117(d) in an amount not less than $1,000.00 and not more than $100,000.00 per domain name. Also, Plaintiffs allege infringement of USPTO registered trademarks under 15 U.S.C. 1114(1) and False Designation of Origin under 15 U.S.C. § 1125(a). Further, Plaintiffs allege California Common Law Trademark Infringement and unfair competition under Business and Professions Code § 17200. The case is titled Hollywood Network, Inc. v. Chris Davies, CV08-01035 (CD CA 2008).

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