Los Angeles Intellectual Property Trademark Attorney Blog

Las 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).

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).

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.

The 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.”)

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.

The 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.

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.

E! 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).

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).

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).

Domain-name arbitration complaint was filed by trademark owner Laerdal Medical Corporation at the WIPO. Laerdal had common law trademark rights in “Laerdal” before it filed a trademark application with the U.S. Patent & Trademark Office on October 16, 2000. The Disputed Domain Name leardal.com – a misspelling of the trademark which transposes the “a” and “e” – was registered by the Respondent on October 11, 2001, nearly one year after the trademark application filing date. Laerdal’s trademark registered with the USPTO on March 25, 2003, after the domain name was registered.

The Panel found that the medical company’s trademark and the misspelled domain name were confusingly similar. Also, the pay-per-click advertising on the parked website targeted the same consumers based upon offers for competing medical equipment and the registrant did not have any rights or interests in the confusingly similar trademark. Further, the Panel found that the domain was registered in bad faith because it was registered after the trademark application was filed and offered similar products through pay-per-click ads. Thus, the Panel ruled that the registration “was an act of typo squatting and was calculated to confuse Internet users as to the source of and to take commercial advantage of the Complainant’s rights in the LAERDAL trademark.” Click Here To Read The WIPO Arbitration Ruling.

PRACTICE NOTE: You should choose a strong trademark because it allows for instantaneous protection from the date of first use. For example, because laerdal’s trademark is strong, even though Laerdal’s trademark had not registered with the USPTO at the time the domain name was registered, the Panel found that the prior application date was sufficient to establish trademark rights. Fanciful, arbitrary, or suggestive trademarks are strong, whereas descriptive and generic marks are weak. Click Here For Additional Suggestions In Selecting A Trademark.

The Internet Corporation for Assigned Names and Numbers (“ICANN”) is looking to effectively end domain tasting. Domain tasting is the use of the Add Grace Period (“AGP”) to test the profitably of a domain name registration by tracking traffic to a newly registered domain name. The AGP is a five-day grace period that allows the registration of the domain name to be deleted and a refund to be issued to a registrar for the annual ICANN fee. Cybersquatters and typosquatters will sometimes register a domain name, that is a misspelling of a trademark or service mark, and monitor traffic from visitors that misspell the proper domain name or trademark. The cyber-squatters and typo-squatters will then park the domain name and place advertisements, such as pay per click advertisements, and monitor the income for up to five days, cancelling the lower traffic domain names.

ICANN proposes to eliminate the AGP and charge a non-refundable ICANN fee upon registration of the domain. “Domain tasting has been an issue for the Internet community and ICANN is offering this proposal as a way to stop tasting,” said Dr Paul Twomey, ICANN’s President and CEO. “Charging the ICANN fee as soon as a domain name is registered would close the loophole used by tasters to test a domain name’s profitability for free.”

The original purpose of the AGP was logical because it allowed registrars to avoid costs if a domain name was mistyped or misspelled during the registration process. It is part of the .com, .net, .org, .info, .name, .pro, and .biz registry contracts.

According to ICANN, “[t]asting has been a serious challenge for the Internet community and has grown exponentially since 2004. In January 2007 the top 10 domain tasters accounted for 95% of all deleted .com and .net domain names – or 45,450,897 domain names out of 47,824,131 total deletes.”

PRACTICE NOTE: In today’s internet-based business world, you have to make sure that the .com extension is available for your trademark. Don’t use hyphens in your domain name because that will send your traffic and customers to another site. Also, don’t misspell common words because that will unintentionally direct your traffic and customers to another site. You may, however, want to register common misspellings of your domain name and point those domains to your main site. You should also register the .net and .org extensions for your trademark to reduce the possibility of cybersquatters registering your domain name with those extensions.

WIPO domain name arbitration under the UDRP provides a thorough analysis of a domain name registrant’s rights and those of trademark owners. In HSBC Finance Corporation v. Clear Blue Sky, Inc., Case No. D2007-0062, Complainant HSBC had registered the trademarks CREDITKEEPER and CREDIT KEEPER (plus design) with the USPTO on July 13, 2004 and November 22, 2005, respectively. The domain name in dispute was initially registered by Peter Bradford on January 24, 2001 – prior to HSBC’s trademark registrations. On December 15, 2004, after HSBC’s trademark had already registered, Respondent Clear Blue Sky acquired the disputed domain name from Bradford for the sum of $48,000.

Clear Blue Sky argued that it should benefit from Bradford’s earlier domain name registration because it acquired all rights and interests through a written assignment and denied bad faith registration and use of the domain name. Paragraph 4(a) of the Policy requires that the Complainant prove three elements to obtain a decision that a domain name should be either cancelled or transferred, one of which includes that “the domain name has been registered and is being used in bad faith.” In rejecting Respondent’s “relation back” theory, the Panel found that:

The consensus view of WIPO Panelists is that, while a renewal of a domain name does not amount to registration for purposes of determining bad faith, the transfer of a domain name to a third party does amount to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the domain name.

The Panel also found that HSBC had established a prima facie case of bad faith registration and that Blue Sky had not met its burden of countering with evidence to show its good faith. The Panel noted that the initial registration occurred before HSBC trademark rights were established. But after HSBC launched the mycreditkeeper.com domain, the initial registrant posted pay-per-click ads on its parked domain with similar subject matter. And, eight months after HSBC’s launch, Blue Sky purchased the subject domain for a substantial sum of $48,000, presumably, in hopes of selling it to HSBC at a much higher price. As a result, the Panel ordered that the domain name be transferred to HSBC.

PRACTICE NOTE: The Anti Cyber-Piracy Act, 15 U.S.C. 1125(d), allows domain name disputes to also be filed in U.S. Federal District Courts. The advantage of filing a Federal District Court action is the availability of statutory damages of at least $1,000 and not more than $100,000 per domain name. Attorneys’ fees and costs are also available under 15 U.S.C. 1117.