25 Plaintiffs Filed Federal Suit Over 231 Domains; 26 of Which Are No Longer Registered

A federal lawsuit was filed last week in the New Jersey District Court for trademark infringement against the owners of  231 domain names some of which are pretty generic and 26 of which are no longer registered.

Besides the 26 that are no longer registered,  16 domain names named as defendants in the lawsuit are in redemption period and are lightly to be deleted as well.

Meaning that about 20% of the domain names in the lawsuit are basically not serving up anything that would infringe on the Plaintiff’s various trademarks.

The oldest domain was registered back 11 years ago in 2003.

Here are the Plaintiff’s:

AMERICAN BRIDAL & PROM INDUSTRY ASSOCIATION, INC.
MON CHERI BRIDALS, LLC
PROMGIRL, INC.
MAGGIE SOTTERO DESIGNS, LLC
LA FEMMA BOUTIQUE, INC.
BARI-JAY FASHIONS, INC.
ALYCE DESIGNS, INC.
ALLURE BRIDALS, INC.
WATTERS DESIGNS, INC.
NEXT CENTURY PRODUCTIONS, INC.
MORI LEE, LLC
EMME BRIDAL, INC.
SIMONE CARVALLI CORP.
BONNY MT ENTERPRISES CO., LTD.
CASABLANCA BRIDALS, INC.
IMPRESSION BRIDAL, INC.
FORMOSA SUNRISE LLC
ESSENSE OF AUSTRALIA, INC.
EDWARD BERGER, INC.
JOVANI FASHIONS LTD.
LIZZETTE BRODSKY
FRANK DISANTIS
PRECIOUS FORMALS, INC.
COUNTESS CORPORATION
JORDAN FASHIONS CORP.

 

Here are the domain names listed as defendants which are still active:

100bridal.com
200shop.net
2013formaldress.com
affordablebridaldress.com
affordabledressonline.com
angelofdresses.com
audresses.com
bermudabridal.com
bestpriceswedding.com
bestpromheels.com
billieshoppe.com
blanchedresses.com
bloomybridal.com
boutiquedressmall.com
breice.com
bridal2012.com
bridaldreamdress.com
bridaldressuk.co.uk
bridalfancy.com
bridalplatforms.com
bridalredshoes.com
bridalsexyshoes.com
bridalshoes4less.com
bridalshoeshub.com
bridalshoesmall.com
bridalshoeswholesale.com
bridalshopalbany.com
bridalshoporange.com
bridalweave.com
bridalwhiteheels.com
bridesease.com
bupop.com
caramotherdresses.com
cheap-wedding-gowns.com
cheapartydresses.com
cheapdressesus.com
cheapestpromshoes.com
cheaphomecomingstore.com
cheapweddingdressdesigner.com
coralsbridal.com
crystaldresses.com
darlingido.com
designeredress.com
designerweddingshop.com
didress.com
discountdressesale.com
donhot.com
dreambridesdress.com
dreamprom.com
dress-market.com
dressescity.com
dressforuk.com
dressilybride.com
dressilyroom.com
dressinmoda.com
dressonlinenz.com
eastbridals.com
edresst.com
elegant-bridals.com
eliesaabdress.com
fashionhead2toe.com
fashionlande.com
fashionproms.com
femmebrides.com
femmeprom.com
foreverweddinggown.com
formaldressau.com
gioiaofitalyfashions.com
goldenbridals.com
gownroom.com
halterbridaldresses.com
happiestbridal.com
hellodresses.com
iedressonline.com
ifashiontube.com
izidresses.com
jarete.com
jennabridalshop.com
joliebrides.com
joyzilla.com
juliadress.com
juliadresses.com
juniorbridesmaidonline.com
kelly-prom.com
lafarila.com
lindadresses.com
longweddingdressonline.com
lovebrideshop.com
luckydresses.com
luxebridalshoes.com
luxurypromshoes.com
margenebridal.com
marykinobridal.com
masterbridal.com
meganbride.org
merahbrides.com
micweddingdresses.com
monballybridal.com
needress.com
newkeyshop.com
newpromshoes.com
nicepartydress.com
okaydress.com
okdressesonline.com
okmarket.com
onlinedressale.com
onlinepromshoes.com
order2offer.com
outletprom.com
oyeahbridal.com
pfbride.com
pradabridal.net
prettyweddingshops.com
prombuying.com
promdress-market.com
promdressesnew.com
promdressforever.com
prompenny.com
purplebridaldress.com
pweddingdresses.com
qossi.com
quality-goods.com
quinceaneradressonline.com
qukey.com
shoeswallet.com
shopedressau.com
shopindream.com
shopofbridalshoes.com
shopofgirls.com
shoponlinedress.com
shortdressesshop.com
sighthit.com
sinaestore.com
specialweddingdresses.com
sposabuying.com
sposawholesales.com
starrydresses.com
storeofpromshoes.com
stormtag.com
suitingdresses.com
sweetheartbridaldress.com
tesbuy.com
thdress.com
thereone.com
tobebridal.com
toodress.net
topb2c.biz
topb2c.info
ubrides.com
uniquedressesonline.com
urpromdresses.com
vampal.com
venusbridalshop.com
voguefinder.com
voguegrabber.com
vogueporter.com
wedding-dress.us
weddingcoo.com
weddingdressbridal.com
weddingdresscorner.com
weddingdressesancaster.com
weddingdressesanjou.com
weddingdressesarnprior.com
weddingdressesaurora.com
weddingdressesbromont.com
weddingdresseschicoutimi.com
weddingdressescrabtree.com
weddingdressesgander.com
weddingdressesmontr.com
weddingdressessummerside.com
weddingdressesterrebonne.com
weddingdresseswindsor.com
weddingdressesyarmouth.com
weddingdresshere.com
weddinggowns-wholesale.com
weddingshopminneapolis.com
weddingshopminnesota.com
weddingshopmobile.com
weddingshopmoe.com
weddingshopmoncton.com
weddingshopmountgambier.com
weddingshopmountisa.com
weddingshopnewcastle.com
weddingshopnewlondon.com
weddingshopnewportnews.com
weddingshopsacramento.com
weddingshopsaskatoon.com
whitedressesonline.com
yeardress.org

Here are the domain names listed as defendants in the lawsuit which are in redemption period:

buywomendresssale.com
designerdressesireland.com
alinedresssale.com
cheappromdressesnz.com
eveningdressesinuk.com
bridalforqueens.com
cheapbridalprom.com
bridalshopsale.com
go2weddings.com
shopbridesmaidgown.com
partydressy.com
vernadress.com
cheapweddingdresses-online.com
101weddingstory.com
maxinebridal.com
shoppingweddingdresses.com

Here are the 26 domains that are listed as defendants that are no longer registered

 

angelpromdresses.com
cocktailsexydresses.com
discountdressesus.com
discountweddingonline.com
jcanbridal.com
moonbaydress.com
newyorkbridaldress.com
pickonedress.com
pluspromdressonline.com
prettybridestore.com
wholesalecheapgown.com
yookhot.com
de.thereone.com
emilydresses.com
flowergirldressus.com
lucybridaldress.com
pageantdressesshop.com
promedressusa.com
promonlinecheap.com
quinceanera.eastbridals.com
simplybridal.us
aueveningdresses.com
bridalveilsboutique.com
lotusbridals.com
roselifeonline.com
sandiegobridals.com

 

HugeDomains.com Takes UDRP Loss On AustinPain.com to Federal Court: We Say Good Get Em

HugeDomains.com, LLC, just filed a lawsuit against ROBERT P. WILLS, MD. PA, a Texas Professional Association d/b/a AUSTIN PAIN ASSOCIATES for a declaratory judgement arising out of the UDRP decision against it on the domain name AustinPain.com.

At the time we called the UDRP decision a bad one.

While is you can not formally “appeal”  a UDRP, if a domain name is ordered to be transferred by a panel,  the domain owner has the right to file with a Federal Court an action for a declaratory judgement that the domain is rightfully owned, does not infringe a trademark owner and postpone or “stays” the order to transfer the domain.

We know its not cheap and pursue a federal court action  so we applaud them for standing not only for their rights but for all generic domain holders.

The case is filed in the federal court in Colorado.

Here are the highlights:

HugeDomains brings this action to stay the transfer of the domain name to Defendant APA, to recover damages against APA for reverse domain name hijacking, and to obtain a declaration of lawful use of the domain name under the Anti-Cybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1114 (2)(D), and the Federal Declaratory Judgment Act, 28 U.S.C. § 2201. As set forth in more detail below, the domain name is neither identical to, confusingly similar to, nor dilutive of any mark belonging to APA.

APA has never used nor traded in the generic term “Austin Pain” and has no rights to that name. HugeDomains lawfully registered the domain name with no knowledge of APA, has legitimate interests in respect of the domain name, and has consistently acted in good faith.
In proceedings under the Uniform Domain-Name Dispute Resolution Policy (“UDRP”) of the Internet Corporation for Assigned Names and Numbers (“ICANN”), APA knowingly provided the UDRP panel with materially false, incomplete, and misleading information in an effort hijack the domain name from HugeDomains. APA knowingly and materially misrepresented that the domain was identical to, confusingly similar to, or dilutive of a mark belonging to APA. APA’s material misrepresentations caused the UDRP panel to order the transfer of the domain name to APA.

Accordingly, HugeDomains asks for a declaration of lawful use of the domain name, injunctive relief prohibiting the transfer of the domain name to APA, and for damages caused by APA’s reverse hijacking.

BACKGROUND
Andrew Reberry (“Reberry”), one of HugeDomains’ founders, registered the domain name in his name on behalf of HugeDomains on January 1, 2013. Prior to that time, the domain name had been owned by multiple different entities and individuals, but never by APA.

Reberry transferred the domain to HugeDomains on or about January 5, 2013 and HugeDomains currently owns the domain name.

HugeDomains owns and has used the domain name in good faith since its registration on January 1, 2013.
HugeDomains has developed a large portfolio of two-word domain names incorporating common words, acronyms, generic dictionary words, phrases, topics, and geo- locations, some of which are offered for sale to the general public through HugeDomains.

As a seller of generic domain names, HugeDomains owns and operates numerous domain names that are similar to the domain name at issue. In particular, HugeDomains owns domain names beginning with the word “Austin” and ending with medical terms. These domain names include, for example, , , , , , , , , , and . HugeDomains also owns and operates numerous domain names that are similar to the Domain Name at issue but focus on various cities throughout the United States.
Among other things, HugeDomains has a legitimate business interest in owning and operating generic domain names that have geo-locational value to many different cities along with industries in the medical field. HugeDomains has registered approximately 235 domain names that begin with the word “Austin” and 354 domain names that end with the word “pain.”

HugeDomains does not engage in outbound domain sales. That is, it does not send outbound emails, call third parties, or make any other outbound communication unless it receives an inquiry first initiated by an inbound party.
HugeDomains had no knowledge of APA at the time was registered.

APA has never owned the domain name.

APA has never used the name “Austin Pain” standing alone in commerce and has no rights to the name.

APA holds no federal trademark registration for the mark AUSTIN PAIN.

APA uses and has always used its name “Austin Pain Associates” or its abbreviation “APA” in connection with its goods and services.

APA’s website, found at www.austinpainmanagement.com, consistently uses the entirety of the company name “Austin Pain Associates” or its abbreviation “APA” throughout. Nowhere on the site is a TM or a ® symbol found to indicate that the shorter and more generic term “Austin Pain” is a trademark or intellectual property of the APA. Every time that the term “Austin Pain” is referenced on the site, it is followed by the word “Associates.”
APA has recorded the following seven assumed names with the Texas Secretary of State: STONEGATE PHYSICAL THERAPY, Restore FX, Austin Pain Associates, APA Clinical Laboratory, APA Clinical Labs, Advanced Rehab, and Advanced Rehabilitation. APA has never recorded “Austin Pain” as an assumed name with the Texas Secretary of State. See Exhibit 3.
APA’s Facebook page also consistently uses its name “Austin Pain Associates” or its abbreviation “APA,” and never uses “Austin Pain” standing alone. APA’s customers also exclusively use the term APA on APA’s Facebook page.
APA has no common law or federal trademark rights to AUSTIN PAIN.
HugeDomains registered and uses the domain name in good faith and its use is a bona fide use.

The two words comprising are common, generic, and geographically and industrially descriptive. As such, no likelihood of confusion exists between HugeDomains and any mark belonging to a third party including, in particular, APA.

The term “Austin Pain” is a generic two-word term which was not coined by APA; rather, it is a common phrase used by numerous third parties.

In particular, a separate and unrelated company in the same city and state as APA, Austin Pain Therapy Associates, Inc., not only uses the term “Austin Pain” as part of its company name, but this third party entity also owns Registered Trademark No. 2290889 for AUSTIN PAIN THERAPY. See Exhibit 5. This company also incorporates the two generic words “Austin” and “Pain” in its domain name . See Exhibit 6.

In addition, a separate and unrelated company in the same city and state, has registered and is using the domain name in connection with its pain management and treatment services offered at six locations in central Texas.
Further, the Austin Pain Society is a not-for-profit organization that is registered in Texas and operates using the generic words “Austin” and “Pain” as part of its organization’s name. The Austin Pain Society functions as a local chapter of the larger Texas Pain Society.  Several of APA’s doctors have been members and even a past President of the Austin Pain Society.
Numerous other companies, unrelated to APA, use “Austin” and “Pain” in their websites, including austinpaininstitute.com, austinpaindocs.com, austinpaindoctor.net, austinpainreliefcenter.com, austinpainrelief.com, austinpaindr.com, austinpaincenter.com, and austinpainfree.com.

On January 4, 2013, an unknown individual contacted HugeDomains in Colorado to inquire as to whether the domain name was for sale.

On January 9, 2013, HugeDomains received an e-mail from APA offering to purchase the domain name for $6,000.

HugeDomains’ counteroffer to sell the domain name for $9,000 was rejected by APA. The parties continued to negotiate but were unable to reach an agreement.

On January 6, 2014, APA filed Case No. FA1312001536356 with the National Arbitration Forum (“NAF”) in accordance with the UDRP seeking to force HugeDomains to transfer ownership of to APA.

Reverse Domain Name Hijacking

APA initiated the UDRP proceeding against HugeDomains in a bad faith effort to deprive HugeDomains of the domain name when APA had no right to the name.
APA knowingly provided the UDRP panel with false, incomplete, and misleading information in connection with its effort to gain control over the domain name.

The panel’s decision in favor of APA was based on APA’s knowing and material misrepresentation that the domain name is identical or confusingly similar to a trademark or service mark in which APA has rights.
APA’ conduct was knowing, intentional, and improper and caused HugeDomains to suffer damages that will be established at trial.

RELIEF REQUESTED
Wherefore, HugeDomains.com requests that this Court enter judgment:
A. declaring that HugeDomains’ registration and use of the domain name is not unlawful under the Anticybersquatting Consumer Protection Act;

B. declaring that HugeDomains’ registration and use of the domain name is lawful;

C. declaring that HugeDomains is not required to transfer the registration for the domain name to APA;

D. entering a permanent injunction enjoining the registrar from transferring the domain name to APA;

E. entering a permanent injunction enjoining APA not to accept a transfer of the domain name or claiming ownership thereof;

F. awarding HugeDomains its damages caused by APA’ knowing and material misrepresentation that the domain name is identical or confusingly similar to a trademark or service mark in which APA has rights;

G. awarding HugeDomains its reasonable costs and attorneys’ fees;

H. awarding HugeDomains statutory damages under 15 U.S.C. § 1117; and

I. awarding HugeDomains such other relief as the Court deems just and proper.
REQUEST FOR JURY TRIAL

Plaintiff requests a trial by jury on all issues so triable

More Trademark Clearing House Abuse: Texas & Venture Triggers Notice

A couple of weeks ago we wrote about Trademark holders of generic terms applying to the Trademark Clearing House (TMCH) where trademarks on many of which were causing some of those 500,000 “warnings” to go out to people trying to register a new gTLD domain name.

Today we bring you the world famous trademarks for the term “Texas” and “Venture”

“”1. TEXAS
Jurisdiction: United States of America

Goods: IC 041. US 107. G & S: Educational Services-Namely, Providing College and Graduate Level Courses of Instruction, Continuing Education Courses and Seminars and Opportunities for Students to Participate in Research Programs, and Entertainment Services-Namely, Providing College Athletic and Sporting Events and Performances of Dramatic Works.

FIRST USE: 19140000. FIRST USE IN COMMERCE: 19140000

International Class of Goods and Services or Equivalent: class number 41: Education; providing of training; entertainment; sporting and cultural activities.

Trademark Registrant: Board of Regents, The University of Texas System

Trademark Registrant Contact: 201 West 7th Street, 78701 Austin, TX, US”"

I guess Texas A&M and Texas Tech, and Texas Christian University (TCU) are all in violation of the The University of Texas System trademark and should be ordered immediately by a court of competent jurisdiction to have to change their name might as well go after Texas High School as well.

Ridiculous

As for the 2nd generic trademark for today we have the word “venture” which has two trademarks:

1. Mark: @VENTURE

Jurisdiction: United States of America

Goods: RISK MANAGEMENT INFORMATION SERVICES International Class of Goods and Services or Equivalent:

class number 36: Insurance; financial affairs; monetary affairs; real estate affairs.

Trademark Registrant: Hartford Fire Insurance Company Trademark Registrant

Contact: One Hartford Plaza, Hartford, CT, US

2. Mark: VENTURE

Jurisdiction: United States of America Goods:

G & S: LIFE INSURANCE SERVICES, NAMELY UNDERWRITING AND ADMINISTERING ANNUITIES. FIRST USE: 19850921. FIRST USE IN COMMERCE: 19850921

International Class of Goods and Services or Equivalent: class number 36: Insurance; financial affairs; monetary affairs; real estate affairs. Trademark

Registrant: John Hancock Life Insurance Company USA – Declaration

Trademark Registrant Contact: 601 CONGRESS STREET, 02210 BOSTON, MASSACHUSETTS, US”

I wonder how Capital One has been allowed to spend tens of millions of dollars on Television commercials promoting their Venture Card?
Isn’t a credit card something that falls into financial or monetary affairs?
Isn’t the new gTLD .Ventures itself in violation of the world famous Venture trademark?  Shouldn’t any registration for a .Ventures domain trigger the TMCH notice?
Ridiculous
Fail!



			

Meet The 1st .Email Cybersquatter Grabs Up ESPN, Pepsi, Starbucks, Chevrolet, NFL & More

We just went through the zone file for the .email new gTLD to see what interesting new domain registrations I found.

I couldn’t help miss the registrations by a organization out of Los Alamitos, CA named Viva Las Vegas who wound up getting a great domain in LasVegas.email, but went after and got domain names matching some trademarked and well known companies.

It should be noted all these were acquired before general avaliabity so the company paid extra to get priority registrations on these  .email registrations:

Boeing.email

Chevrolet.email

CocaCola.email

ESPN.email

NFL.email

Pepsi.email

Starbucks.email

UFC.email

The company also got its matching domain  vivalasvegas.email.

The comapny also got three domains that could go either way as being a brand or generic but based on these three registrations taken as a group as well as other registrations, I don’t think a URS or UDRP panel would look kindly on them:

Delta.email

Southwest.email

United.email

 

The .Com Firewall: Is A .Com Registration Better Protection From New gTLD’s Than Trademarks?

An interesting point of view on new gTLD’s, trademarks and .com registrants was published today by Cybrands.com

Basically the author of the post is claiming that owning a .com can be better protection against potentially infringing new gTLD domain names than a trademark.

He calls it the .com firewall:

“In computing terms, firewall has many definitions.”

In domaining terms, what I’m referring to is the practice of registering the .com version of a domain name which can effectively quash incentive for anyone to register any other version of that particular name.”

The fact is that there are several practical advantages and inherent rights protections that are in play that are built into the fabric of owning and using a .com domain name for business purposes. :

Is owning the .com version (and using the name in commerce) of a particular domain name a rights protection strategy unto itself that you could employ. ”

Even possibly equal to or better than a registered trademark?

First of all, as far as your intellectual property rights are concerned. If you own a .com domain name and you use it in commerce you have very likely established common law trademark rights to that name.

According the the USPTO “businesses automatically receive common law trademark rights in the normal course of commerce.”

Common law trademarks are something that I like to call a “usemarks.”

From Bitlaw.com”

The term “common law” indicates that the trademark rights that are developed through use are not governed by statute. Instead, common law trademark rights have been developed under a judicially created scheme of rights governed by state law. Federal registration, a system created by federal statute, is not required to establish common law rights in a mark, nor is it required to begin use of a mark.

Now if course, registered trademarks are usually more powerful than common law trademarks, however, not necessarily and there is case law to prove that.

My main point has to do with the inherent value of owning the .com version of your domain name or website.

First of all this is the definition of “inherent” from Dictionary.com:

existing in someone or something as a permanent and inseparable element, quality, or attribute: an inherent distrust of strangers.

Here are a few related points:

If you own the .com version of a name, the name is not likely (highly unlikely) trademarked by another party.

The reasons are that if the name were trademarked by another entity you likely would have never been able to register it- or you would have already been asked to cease using it.

Either by court order or less formally.

Either way you would know that there is an issue with the use of the name.

There are too many rights protections mechanisms in place with the domain registries and with ICANN right off the bat. (see Trademark Clearinghouse) for one.

Also, you would have likely gotten tripped up with improper usage of the name if there were any conflicts. The high likelihood is that the business that owns the registered trademark would also have likely already purchased the .com version of the name.

If you use the name for trade/commerce then you have likely already engendered “common law” trademark rights which are actually significant. However, not likely as powerful as a State or Federally (USPTO) registered trademark. However, the “common law” mark could trump them all based on prior use and if it is a “strong” mark. (see usemarks)

The fact is that if you own the .com version of a domain name, no other party is likely to register the name with another extension and use it for business purposes.

Let me give you an example.

Lets say you own the domain name Trinexeo.com.

Just made that domain name up and it is currently unregistered.

So for my example, what if someone registered that domain name and used it for commerce.

They would likely have soon established common law trademark rights as well as developed a business brand with that name.

What if the chance of someone then going out and registering say Trinexia.biz or Trinexia.anything and trying to use it for businesss?

They would be foolish to use that name.

They may infringe your common law trademark.

They may create a confusingly similar business name which is no benefit to them.

So part of the inherent value of owning the .com version of your domain name is that it effectively can serve as an unofficial “trademark block” of sorts to further registrations.

Why would someone else waste their good money on another extension when you own the .com?

They might and you might sue them. They might register another version of your .com name and if they use the name in commerce (in violation of your common law trademark) they will probably send traffic and customers to your site business. They might try to trademark the name after you are already using the .com version in commerce and they will lose in arbitration.

So back to my main point regarding the value of owning the .com version of a good domain name that doesn’t infringe on another parties registered trademark, trade name or usemark. You can take the dot whatever.

I’ll take my .com domain name into battle any day of the week.

I call that my firewall.”"”"

Like I said an interesting point of view.

Of course we see companies starting on domains that are either available for registration or on the second market which can easily be confused with the left and right of the dot.

The only real case on record is the UDRP for Tes.co where the panel took into account the left and the right of the dot to find the registrant infringed on the TESCO trademark but again that was based on a trademark not just a .com registration.

Anyway interesting.