In what could be one of the most important legal decisions of the year for domain holders, the US District Court for the Eastern District of Virginia ruled that a domainer hold acquired common-law trademark rights by simple ownership and usage in domain names he owned, even though they corresponded to well-known trademarked brand names.
The ruling for domain holders is a result of a default judgment.
Here’s the deal.
Warren Weitzman, is a domainer who owns and parks some 12,000 domain names.
He filed suit against his registrar, Lead Networks, over 22 domain names, 21 of which were .com’s.
Lead Networks is located in India.
He filed the case in Virgina claimed in rem jurisidication against .com registry and the .org registry under the Anti-cybersquatting Consumer Protection Act (ACPA).
He claimed that the domain names were “extremely valuable earning in excess of $2,000 a month from parking and were worth in excess of $2,000,000”.
In his complaint he alledged that the registrar had “taken control of his domains” and was in fact parking the domain names themselves.
It is not clear from the complaint why the domains were “taken” by the registrar so I guess anything is possible including for non-payment of renewal fees,” or taking them because they violated there terms of service.
Unfortunately because the complaint is silent as the reason of why the domains were taken and since the registrar never answered the complaint, there is simply no information in the court record on this.
The domainer simply alleged that the registrar took control of his property and was now parking his domains and making the money he used to make and asked the court to award him the domains back.
From the complaint:
“Weitzman through the use of the subject marks in commerce for many years has common law rights in the subject marks”
“Lead Networks is in violation of his rights”
“Weitzman property entered into contract with his registrar, is the owner of each of the domain names and used each domain in a lawful manner”
The court upon not receving an answer from the defendant regsitrar order VeriSign and PIR the .Org registry to transfer the domains back to the domain holder.
In effect, Weitzman had succeeded in arguing that his disputed names had earned common-law rights.
The issue that has the trademark groups all hot and bothered is that some of the domain at issue were typos of famous trademarks.
The domains at issue were
For me the case raises a lot of questions.
Why were the domains taken by the registrar?
Why did an ICANN accredited registrar fail to respond to a lawsuit filed in federal court?
Does such action disqualify a registrar from being accredited and if not, why not?
How could these set of domains generated $2k a month parked and based on the set of 22, who valued them at $2 million dollars?