Now That The Rays Are Winning, Pepsi Wants Tropicanafield.com?: Why Doesn’t Laches Apply To This One
For the past seven years, Chris Dunne has owned the tropicanafield.com domain name.
“I’m a huge Rays fan,” he said. “I bought the name because I thought it was cool to be part of a baseball team, you know?”
The website is a business directory for places located close to the stadium.
“So if some one’s coming from anywhere and they’re going to Tropicana Field, they can look up hotels, they can look up transportation, they can look up accommodations,” he explained.
He put a disclaimer on the site explaining that he is not affiliated with the field. He even took down a picture of the field from his site.
PepsiCo owns Tropicana Products Inc. The company contacted Dunne in September to get the name.
“I’m just trying to make some extra money, and then Pepsi contacted me demanding the domain name back,” Dunne said.
Dunne received a letter Sept. 18 from Janet Silverberg, chief trademark counsel for PepsiCo.
In the letter, Silverberg tells Dunne that “unauthorized use of our trademark constitutes trademark infringement and unfair competition as it may mislead consumers into believing that your site is associated with the stadium or our company.”
Dunne, who lives in Dunedin, doesn’t have any affiliation with the Rays. He started using the Web site in April as an advertising site for local businesses.
“I don’t even want to sell it to them. That’s not the point of trying to make a bunch of money. I’m just trying to do a legitimate business and help the people of St. Pete,” Dunne said.
Dunne started his business after a restaurant he opened failed and his young daughter was diagnosed with Crohn’s disease. He said the medical bills now total more than $70,000.
Dunne said he does not have an attorney and is not sure how he will respond.
Dunne said, “They’ve had a couple years prior to when I registered it to register it and didn’t and then they’ve had seven years since to contact me if they’ve wanted it.”
And that’s the rub.
A few days ago Traverse Legal, covered a story of a Federal case in Florida where the court held that trademark holders failure to timely protect its trademark rights can result in a waiver of those rights altogether. This is known in the legal world as the theory of laches.
“The court found that the Plaintiff was barred from pursuing its trademark infringement and cybersquatting claims under the doctrine of laches, which is an equitable defense which penalizes Plaintiffs who fail to assert their rights in a timely fashion”
This case seems ripe for such a ruling.
Here is a company, Pepsi that let this domain sit unregistered for 2 years and let this guy hold it for 7.
Traverse Legal concluded its post with the following:
“”"”"The lesson to be learned here is one that we have been telling our trademark clients for a long time. You must proactively protect your trademarks in cyberspace.”"”
Doesn’t being proactive in protecting your marks include registering when they are available for registration?
A trademark holder that does not register a domain even though it is available for years can come back anytime years later and say “give it to me”?
Now that the Ray’s for the first time in their 11 year history are not only out of last place, but on the verge of an appearance in the world series (at the time the letter was sent on the verge of their first playoff appearance), here comes along Pepsi and says we want the domain back.
Also please note that this domain is not a parked page pulling ads for Tropicana.
Rather, it is fully developed site which is “Your local guide of places to go and things to see while you visit Tropicana Field in St. Petersburg, Florida.”
So for all of you that argue that its not the domain, but the way you use it, which determines if you have violated a trademark, this case flies in the face of your argument.
Unfortunately it appears this guy does not know the first thing about domains or have the funds to mount a defense.
As you know I’m strongly against trademark infringement, but In this case, he is a guy who registered a domain, didn’t offer it for sale and in fact doesn’t want to sell it; build out the site for a logical use and is an informational site for all businesses around the stadium.
Where was Pepsi when the Rays sucked?
Where was Pepsi when no one went to a Ray’s Game to watch a last place team?
Nowhere.
Everyone loves a winner.
But in the trademark world can you really sit around and wait for something to become “valuable” before asserting your rights?
I hope the domain holder can pony up the dollars and fight this one.
Anyone think I’m off base here?
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Scott, please, it’s spelled LACHES.
Merriam-Webster’s Dictionary of Law:
Main Entry: la·ches
2 a : a doctrine permitting dismissal of a suit because a plaintiff’s unreasonable delay in asserting a right or privilege has been detrimental to the defendant’s ability to MAKE A DEFENSE (as by resulting in the unavailability of witnesses or evidence)
/ “Why didn’t they want this name for 7+ years?” KOZ /
That’s an inaccurate assumption.
I’m telling you and everyone AGAIN, that laches will have no valid application here. Why? The owner of the domain name never made an effort, on his own, to “make a defense” until almost the middle of 2008. In this case that would have constituted him actually using the domain name for a website back when he first registered the domain. Conversely, Pepsico would have filed back then as well. Parking will not count at all towards laches.
There are time constraints on trademark holders only as it relates to their own usage and trademark renewal and the usage by others of the same mark that may infringe on the rights of the trademark’s owner. This gentleman only started USING the domain this year and Pepsico is asserting their rights in a timely fashion.
He registered the domain in 2001, almost three years after Pepsico had registered a Federal trademark on their usage of “Tropicana Field” dating back to 1998. Not only that, but the word “Tropicana” itself is a trademark of theirs dating back to the 1940s which by 2001 would easy have a broad scope to reach into other trademark categories.
Chris D. never had a right to register any domain name that contained the word “Tropicana”.
/ ” Mr. Dunne surely has a name that 7 yrs ago, when he registered the domain had the POTENTIAL to infringe on a TM Tropicana (PepsiCo) held a TM for.” KOZ /
Not “potential” Scott, it DID infringe on Pepsico’s prior established trademark. The argument that Pepsico was somehow obligated all those years to inform Chris D. of their rights is incorrect. It’s the obligation of every domain registrant to check for trademark issues before registering a domain name. Check any registrars T&C.
I’m certain that Chris D. or someone he’s had contact with over the years has seen or purchased a container or Tropicana ® juice or saw Tropicana Field ® before he registered tropicanafield.com. Chris D. had “constructive” and “actual” notice of Pepsico’s trademarks.
Someone should should buy
tropicanadomainbattle.com
and get a pool going on this case
Ken,
My apologies on the spelling….LOL
I’ve been involved in the fencing industry for years and I kept seeing latches not Laches.
At any rate. Your point is not lost on me.
Neither is Mike’s assessment.
Ken your last point “Chris D. never had a right to register any domain name that contained the word “Tropicana”.”
You strongly make this statement as factual when you must know there have been UDRP decisions that have denied complainants with a US trademark the respondents domain containing a TM name in it.
Exact TM and confusingly similar!
Here’s Is a decision that went against the famous TM Velcro as an example:
http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-0864.html
So, Chris Dunne, or anyone else, did have a possible right to register a domain containing the word “Tropicana” or “TropicanaField”
Koz
Scott,
You are correct in that certain famous trademarks over the years have become generic (diluted) as they relate to the category they represent. Velcro is a great example of this. But, Tropicana ® has NOT become a generic word which can be used to represent orange juice. It’s not used in that way here in Florida or anywhere else. That is factual. If it were then you would have a valid argument.
/ “UDRP decisions that have denied complainants with a US trademark the respondents domain containing a TM name in it.” Koz /
Show me a “TM” symbol anywhere on tropicanafield.com; I’ve already looked. There is none. Yet, even if Chris D. had claimed a “TM” it would be invalid. Why? He’s using the domain name as it relates to Pepsico’s registered trademark for the stadium. From tropicanafield.com:
/ “Your local guide of places to go and things to see while you visit TROPICANA FIELD in St. Petersburg, Florida.” Chris D. /
He’s not using it as a fan site. Chris is trying to run a business from it selling advertising.
/ “So, Chris Dunne, or anyone else, did have a POSSIBLE right to register a domain containing the word “Tropicana” or “TropicanaField”” Koz /
It’s only possible if Tropicana were a generic way to refer to orange juice. Which it is not.
Now, on the flip side. Check out the real Tropicana Field’s homepage:
http://mlb.mlb.com/tb/ballpark/index.jsp
Notice anything missing? There is no “®” symbol anywhere next to the multiple references to “Tropicana Field”. This is the time to take your certified timestamped screenshots. That is a huge mistake. It doesn’t negate Pepsico’s registered trademark rights BUT it does go against there ENFORCEMENT of those rights. When you receive you “®” status you are supposed to attach that anywhere the word is used. When you don’t, you weaken your own rights to protect its usage by others. Not completely, but it is weakened. That is the only opening this gentleman has.
This was just an example and it not enough, on its own, to go against the mountain of evidence against Chris D.; he should still settle this out of court.
As a side note, I have now found images of print materials and signage at the stadium where “Tropicana Field ®” with the registered symbol is used. That in itself is enough balance out their none usage of the “®” on their website. It’s just a crack now instead of a gaping hole, but a mistake none the less.
I am the site-designer of tropicanafield.com and have known Chris Dunne for about 2 years. I had done a previous website for him for free and charged very little to do this one.
I am not a lawyer but I have been glued to my monitor reading your reactions. I can say positively that Chris did not have any knowledge of trademarks or how to check them before he asked me to design the site.
I asked him, since he has owned the name for 7 years if he had had been contacted by anyone and he told me he has not.
It is not a big money maker, it is more about principle. He is a huge Rays fan and Pepsico had no interest and Chris had no knowledge that he was doing anything that could be a problem. He is not generating much income from the site although he has generated a ton of interest.
Here is my question, why isn’t there a clearing house that would stop trademark names from being available for sale? This domain and site-hosting is through GoDaddy and they wanted nothing to do with helping Chris with the tropicanafield.com controversy. Since anyone can buy any available name shouldn’t there be a way to prevent this problem at the registrar level?
Also, the letters from the Pepsico attorneys do not state anything about domain names and “field” is not included in the trademark. The cyber-squatting argument does not wash because he has not tried to force Pepsico into buying the domain for an extreme amount of money and we added in large print “This website is not affiliated with Pepsico any any of it’s subsidiaries” which to me would take away the argument that he is trying to make people believe he is part of the company.
Chris is still looking for a lawyer to take it on pro-bono or to be part of a settlement should it come to that. One atty I talked to said he should photo copy his middle finger and fax it to them writing on it “Make me an offer” I think he hopes for a more civilized way to handle this. He has tried talking to their attorneys but they will not budge. I advised him (again, not a lawyer) that he should not commmunicate with them at all until he has a legal document from a judge to do so or a court date.
Donna
Thanks for commenting.
Here are some thoughts to address some of your questions.
You cannot use “i didn’t know about the trademark” defense because like the old saying “ignorance of the law is no excuse.”
There is of course a public record of all US federally registered trademark and whether you look or not your are imputed with the knowledge.
Also courts generally will impute knoweldge to you when you deal with “famous” trademarks. That is trademarks that are so famous everyone has or will be thought to have heard of them. Such trademarks like Coke, McDonalds, Verizon, Tropicana.
Your comments regarding the registrars is a valid one.
If you read back through this blog you will see many posts where I call out registrars for letting obvious trademark domains to be sold and auctioned off though their systems, including Godaddy.com.
I don’t think registrars should allow the sale obvious trademark infringing domains on their site or advertised on their site, however, I understand that Chris registered this domain rather than buying it and for that there is no filter or way of stopping the registration of a domain.
There is no central agency which controls what domains are allowed to be registered.
There are millions of trademarks and servicemarks in the US alone. No system, could attempt to block all of these including variations and typo’s.
Now to the practical matters.
Trademark litigation is expensive.
Very expensive.
Especially when your fighting a plaintiff like Pepsi.
If Pepsi files a complaint in federal court your looking at tens of thousands of dollars in fees at minimum and could possibly reach into the six figures.
The Latham Act provides trademark holders with all sorts of goodies including penalties of up to $100K and having to pay for the trademark holders attorney fees which will also be very expensive.
If Chris doesn’t have the means to attempt to defend the action, then he really has no choice other than to give the domain up.
This is the practical answer.
/ “The cyber-squatting argument does not wash because he has not tried to force Pepsico into buying the domain for an extreme amount of money and we added in large print “This website is not affiliated with Pepsico any any of it’s subsidiaries”” Donna /
The mere registration of a known trademark qualifies as cybersquatting. So it does wash Donna. Registrars are not responsible for domain registrations. It’s the responsibility of the registrant to check for any trademark issues before acquiring a domain name. It states this in almost every registrars Terms and Conditions.
/ “Pepsico had no interest …” Donna /
This is entirely inaccurate and a complete assumption. Pepsico has registered trademarks on “Tropicana ®” (longstanding) and “Tropicana Field ®” (use and registration before Chris’ domain registration). There are plenty of tools out there to find this information, uspto.gov for example, or you can just look in your average fridge for a carton of Tropicana ® Juice or visit St Pete and see the sign out in front of the stadium that reads “Tropicana Field ®”.
/ 1.”Chris had no knowledge that he was doing anything that could be a problem” Donna /
And ….
/ 2. ““This website is not affiliated with Pepsico any any of it’s subsidiaries” Donna /
This two contradictory statements show that you and Chris have little knowledge of trademark law. By placing that disclaimer on his site it demonstrates that he DID have knowledge of Pepsico’s trademarks.
/ “Chris is still looking for a lawyer to take it on pro-bono.” Donna /
Lawyers don’t normally take on business versus business cases pro bono. Also, this case is pretty clear cut with no distinct advantage for a lawyer to take the case pro bono with any hopes of recouping his fees through the courts. They rarely award fees in this sort of case. It’s the cost of doing business.
/ “One atty I talked to said he should photo copy his middle finger and fax it to them writing on it “Make me an offer” Donna /
Lawyers …. this is not surprising at all. They want to keep the pot stirred. It creates more billing hours and fees for them. This is one reason why they always recommend that you don’t talk with the other party. Why? Because it could lead to an early resolution. Let me give you a recommendation (non-legal), seek out a meeting with the other party, with legal counsel present, and work out an amicable settlement.
And heed MHB’s most recent advice. It’s 100% accurate.
So, bottom line, should we contact Pepsi’s Lawyer and ask for a meeting. I don’t want to get a lawyer yet, I just want to see what they want to do first. Is this the smart thing to do??? If we don’t contact them What would there next step be? Pepsi
If you don’t contact them they will wind up filing suit.
What do you hope to get from this?
You are not going to talk them into letting you use the domain. The only chance your going to have to keep the domain is though a legal determination which is going to cost.
First, anything posted here is non-legal advice. It’s always best to seek the advice of a lawyer. Even then, don’t be manipulated; use common sense and humility. Lawyers always want you to fight.
The domain is registered under Chris’ individual name. Are you claiming ownership as an individual or a business?
You can represent yourself pro se with the UDRP and Federal court as an individual. If you are operating as a business, Federal court requires that you have legal counsel; unless you were a lawyer yourself at which point you could represent yourself in Federal court.
/ “So, bottom line, should we contact Pepsi’s Lawyer and ask for a meeting.” Tammy /
Absolutely …. BUT, I would NOT speak with any companies lawyers without having your own representation. That’s a big no no. They would take advantage of your position. Seek representation to at least negotiate a settlement. But don’t allow your counsel to start battles with the other side; which they’re always inclined to do. Realize what your position is; its weaknesses and strengths. In this case Pepsico has the upper hand and they can beat you with trademark rights and monetarily.
/ “I just want to see what they want to do first.” Tammy /
You already know what they want to do. It’s not smart to play games here or “point fingers”. Pepsico wants the domain name. That’s it. Anything else is just a side show. What you want is to avoid a UDRP decision and/or Federal court.
/ “If we don’t contact them What would there next step be? Pepsi” Tammy /
Pepsico will either file with the UDRP or Federal court. Either way you are looking at expenses here. The only way to avoid substantial costs (hopefully) would be to simply comply with their demand and hand over the domain name per their instructions.
I know it sounds crass to just give in to an entity with more power and money. I know. But, you fight the good fights and end those that aren’t worth the heartache, headache, or the money.
Hopefully, as amicably and equitably as possible for both sides.
Basicially I would like to call Janet and ask her if we can sell the domain name to Pepsi come to an agreement and be done with it. I don’t want Chris hiring a lawyer for such a simple question for them. If they were to say no then OK I will find a lawyer who wants to take the case and get paid if the lawyer ends up getting them to buy it. So with such a simple question for them why does it have to be so dam complicated and expensive. By the way my daughter is sick I have not worked for weeks She has Chrones Disease and has been in the hospital for weeks. I have not gone to work because I work 10 to 12 hour shifts and I cant not see her while sick and in the hospital. Before we did not have insurance that is why he started using to site because without my income things are very tough. So he knows how I feel about leaving her home or in the hospital without me, so he was supportive about me not working, thats why he started building this site. For the money from the advertising Plain and simple. Bills still have to get paid. Would it be great if Pepsi would buy it Of Coarse, So again should I put a call into Janet and stick to the basic question and leave it there? If we have to give it up then so be it. But what makes me so mad is that we have contacted them a couple of times asking if they wanted this site and they said no.
Tammy
Your way out of your league here.
No attorney is going to take this case and be paid on the basis of you selling the domain.
If you call Pepsi and tell them you want them to buy it your going to get sued for sure and your offer to sell will be used against you.
It’s so damn complicated and expensive because it’s the US legal system and that’s the way it is.
I would take Ken’s advice and consult with a good trademark attorney before taking any action with Pepsi or their counsel
The first deadline is today to turn over the domain. We were told that this letter that we got from them doesnt mean very much. Lawyers have been giving so much different advice as far a this letter. I don’t want to be in hot water and the deadline is today.
That’s why this phone call is important.
OK your right. Thank You for the help.
MHB and Ken
Sigh:
http://domains.adrforum.com/domains/decisions/1235498.htm