This certainly goes into the anyone can sue anyone, for anything at anytime, file.
Marchex (MCHX) has been sued over the domain name SmartPlanner.com by SMART PLANNER SUITE, LLC of Newton Massachusetts for trademark infringement under 15 U.S.C. § 1114(a) and cybersquatting under 15 U.S.C. § 1125(d), and violation of the Anti- Cybersquatting Consumer Protection Act (“ACPA”).
The suit was filed in the United States District Court of Massachusetts today.
The relevant allegations from the suit are contained below.
To save those who are busy or just don’t want to waste a lot of time, the Plaintiff filed for a trademark in 2014, the domain name owned by Marchex was registered in 2002. The Plaintiff alleges all sorts of common law rights but didn’t register its domain name SmartPlanner123.com until 2013.
If anything I would say its the SmartPlanner123.com which was first registered in 2013 is the one infringing on the common law marks of Marchex’s SmartPlanner.com but what do I know.
I would have to disclaim that the attorney my company retains for such matters, Mr. John Berryhill, Esq also represents Marchex, having disclosed that its my honest opinion that this lawsuit is a bunch of crap.
Here we go:
In or about 1992, Smart Planner, through its predecessor-in-interest, Jonathan D. Pond , began offering said services through its Smart Planner Program (the “Program”).
The Program was initially promoted through newsletters, books, speaking tours, a nationally broadcast television program, and websites owned by Jonathan D.Pond.
Smart Planner® (the “Mark”), was registered on the Principal Register of the United States Patent and Trademark Office on January 14, 2014 (registration number 4465800).
Smart Planner, and its predecessor-in-interest, have used the Mark in interstate commerce since 1992.
In 2013, Smart Planner made the decision to begin the process of making the Program available for sale on the Internet.
On or about, September 1, 2014, Smart Planner intends to make the Program available to the public through its website, smartplannerl23.com. The aforementioned website will be the primary way to gain access to the Program.
Smart Planner and its predecessor-in-interest, have sold the Program under the Mark for nearly twenty-three (23) years, nationwide. As a result of such longstanding, substantial, and continuous use of the Mark in interstate commerce, Smart Planner asserts that the Mark has acquired secondary meaning.
The Mark has, and continues to, indicate the source of Smart Planner’s services.
Marchex registered the domain name, smartplanner.com, on May 13, 2002, seven years following Smart Planner’s first use of the Mark in commerce.
The domain name, smartplanner.com, is a platform webpage that contains links to a variety of other webpages relating primarily to event planning services. Upon information and belief, Defendant receives advertising or “click-through” revenue from the owners ofthe included third-party links when visitors click on one of the links.
Marchex’s website (smartplanner.com) indicates that the smartplanner.com domain name “may be for sale”.
In or about February 2014, Smart Planner, in connection with its efforts to make the Program available on the Internet, discovered the existence of the domain name smartplanner.com. By letter dated February 20, 2014. Smart Planner notified Marchex of its infringement and requested that it refrain from infringing the Mark.
Marchex failed and refused to respond to the February 20, 2014 demand letter.
During some part of 2014, Marchex’s website (smartplanner.com) was apparently taken down temporarily.
In or about June 2014, Smart Planner discovered that Marchex’s website smartplanner.com was again accessible on the Internet actively displaying the sale of the domain name.
As of the date of this Verified Complaint, Marchex’s website (smartplalU1er.com) continues to be accessible and Marchex continues to offer the domain name, smartplanner.com, for sale.
“Defendant’s use of the smartplanner.com domain name constitutes a reproduction, copying, counterfeiting, and colorable imitation of the Mark in a manner that is likely to cause confusion or mistake or is likely to deceive consumers.
“Defendant’s unauthorized use of the Mark is l ikely to cause initial interest confusion by diverting Internet users away from Plaintiff’s website to Defendant’s website.
‘As a direct and proximate result of Defendant’s infringement ofthe Mark, Plaintiff has suffered, and wi!J continue to suffer, monetary loss and irreparable injury to its business, reputation and goodwill.”
WHEREFORE, Plaintiff respectfully prays that the Court grant the followi ng relief:
A. A temporary, preliminary, and permanent injunction prohibiting Defendant and its respective officers, agents, servants, employees, and/or all other persons acting in concert or participation with them from: (1) trafficking in, or maintaining a registration for, any Internet domain name containing the Mark or any confusingly similar variations thereof, alone or in combination with any other letters, words, letter strings, phrases, or designs; and (2) using the Mark or any confusingly similar variations thereof, alone or in combination with any other letters, words, letter strings, phrases, or designs in commerce, including, but not limited to, on websites, in domain names, in social network user names, in hidden website text, or in metatags;
B. A temporary, preliminary, and permanent injunction req uiring the current domain name registrar, Enom, Inc., to transfer the registration for the smartplanner.com domain name to the Plaintiff;
C. An award of compensatory, consequential, statutory, and/or puni ti ve damages to the Plaintiff in an amount to be determined in trial;
D. An award of interest, costs, and attorneys’ fees incurred by the Plaintiff in prosecuting this action
E. All other relief to which this Court deems equitable and just.
All that Michael – not to mention in a worst case scenario Laches ?
Michael Berkens says
Laches would mean they had rights way back when but didn’t raise them or enforce them.
Doesn’t seem to be they had any rights way back when, they found the internet in 2013
Marchex found it in 2002.
not so hard
exactly Michael –
even in some horribly distorted ruling that they has rights – laches would then be a defence
I couldn’t find it in the article. Did the site contain any ad links of the TM holder? Otherwise, I don’t see how a TM with limited scope can claim exclusive use of its name across the whole name space.
Mike, this is too funny 😀
Please Marchex, counter sue the shit out of them and take there business and push them back into the shithole they are.. I would pay for part of there lawsuit if they sue and win and gather any compensation or take over there business.. There is a great quote i mentioned several times in the P at T office.. if they failed to disclose others were using the mark in commerce at time of filing, its could be a fine or imprisonment.. I would push to put the ceo in prison for this crap.
I am sure our friends at Marchex are well aware of their options – including the MyArt.com deal Brett Lewis got fees on that Michael wrote about a fee weeks back