Cybersquatting will probably not increase muscle mass.
In a case recently decided by the Eastern District, a judge upheld a jury’s decision to find a man liable for $1,000 for “cybersquatting,” where he registered “www.hamptonlocations.com” in spite of the existence of “www.hamptonslocations.com.”
The case was brought by Nancy Grigor, who created Hamptons Locations Inc. in 1994. The company that finds locations in the Hamptons that are suitable for photo shoots, corporate meetings, and other purposes. Hamptons Locations can be found online at www.hamptonslocations.com.
Four years later, while marketing her services, Grigor came across the defendant’s house and taped her business card on the door. The defendant’s parents were architects, and had designed and built the house; they also used the house to market their architectural services. Grigor was eager to use the defendant’s house for her service, and she returned several times in order to induce defendant’s parents into allowing their home to be used.
In the same year, defendant, through a corporation owned by his parents, registered www.hamptonlocations.com, the identical URL as Grigor’s without the “s” after Hamptons. After initially trying to use the service to market summer rentals, defendant eventually decided to use the site to market his parents’ home to location scouts. As part of this effort, defendant emailed several location scouts, including Grigor, asking to have the house listed. When Grigor received the message, she had a lawyer send defendant a message demanding that he “cease and desist from the use of the domain name www.HamptonLocations.com” and that he “arrange for the transfer of its ownership to” Grigor.
Defendant responded by letter and claimed that he was not the owner of the domain name and that the domain name did not infringe upon Plaintiffs’ mark as it merely contained a portfolio of the Hamptons house and did not offer location scouting services. Defendant claimed he didn’t own the domain because it was purchased by one of his friends with whom he had tried to start some business ventures (though he was not sure which one).
The case went to trial and a jury found defendant liable to plaintiff. Defendant then made a motion for a Judgment as a Matter of Law – this motion essentially allows the court to overturn a jury’s verdict if it not have legally sufficient evidentiary basis to find for the party on that issue.
The court upheld the jury’s verdict finding defendant liable for cybersquatting.
LEGAL ANALYSIS
For an extended discussion of cybersquating, click here.
How is cybersquatting proved?
To prove cybersquatting, a plaintiff must prove four elements:
(1) Defendants registered, trafficked in or used a domain name;
(2) that was identical or confusingly similar to Plaintiffs’ mark;
(3) Plaintiffs’ mark, at the time Defendants registered their domain name, was distinctive; and
(4) Defendants committed these acts with a bad faith intent to profit from Plaintiffs’ mark.
(1125(d) of the Lanham Act (15 U.S.C. § 1125(d)(1)(A))).
How did the court consider the factors in this case?
(1) Defendants registered, trafficked in or used a domain name;
The defendant did not register the domain name himself; it was registered by a corporation owned by his parents. Grigor claimed that defendant “used” the name. To be held liable for “using” a domain name, a person must either be the “domain name registrant or that registrant’s authorized licensee.”
Since the domain name was purchased under the defendant’s parents’ corporation, it was not clear that defendant was an “authorized licensee.” However, the court held that based off the defendant’s testimony, a jury could reasonably find that defendant “used” the name: “Darrell was clearly involved in the development, launching, and operation of the website. In fact, Darrell was the one who suggested the name DSNY as the registrant and chose to list his parents’ address as the registrant’s address.”
(2) that was identical or confusingly similar to Plaintiffs’ mark;
This element was not at issue.
(3) Plaintiffs’ mark, at the time Defendants registered their domain name, was distinctive; and
Grigor presented evidence in the form of four newspaper articles, which she did not solicit, that featured Hampton’s Locations. The court found this was sufficient evidence for a jury to find against defendant.
(4) Defendants committed these acts with a bad faith intent to profit from Plaintiffs’ mark.
The court looks to nine factors in determining whether bad faith exists. Here, the court held that there was sufficient evidence of bad faith because Grigor went to defendant’s house several times to induce them to be listed under her service before defendant’s involvement with the similar domain name.
What was the result?
The court denied the defendant’s motion to set aside the jury verdict.
Hamptons Locations, Inc. v. Rubens, 2009 WL 1584467 (E.D.N.Y.) 2009
Suing a Cybersquatter: Taking One Letter Out Of A URL Isn’t Enough
Cybersquatting will probably not increase muscle mass.
In a case recently decided by the Eastern District, a judge upheld a jury’s decision to find a man liable for $1,000 for “cybersquatting,” where he registered “www.hamptonlocations.com” in spite of the existence of “www.hamptonslocations.com.”
The case was brought by Nancy Grigor, who created Hamptons Locations Inc. in 1994. The company that finds locations in the Hamptons that are suitable for photo shoots, corporate meetings, and other purposes. Hamptons Locations can be found online at www.hamptonslocations.com.
Four years later, while marketing her services, Grigor came across the defendant’s house and taped her business card on the door. The defendant’s parents were architects, and had designed and built the house; they also used the house to market their architectural services. Grigor was eager to use the defendant’s house for her service, and she returned several times in order to induce defendant’s parents into allowing their home to be used.
In the same year, defendant, through a corporation owned by his parents, registered www.hamptonlocations.com, the identical URL as Grigor’s without the “s” after Hamptons. After initially trying to use the service to market summer rentals, defendant eventually decided to use the site to market his parents’ home to location scouts. As part of this effort, defendant emailed several location scouts, including Grigor, asking to have the house listed. When Grigor received the message, she had a lawyer send defendant a message demanding that he “cease and desist from the use of the domain name www.HamptonLocations.com” and that he “arrange for the transfer of its ownership to” Grigor.
Defendant responded by letter and claimed that he was not the owner of the domain name and that the domain name did not infringe upon Plaintiffs’ mark as it merely contained a portfolio of the Hamptons house and did not offer location scouting services. Defendant claimed he didn’t own the domain because it was purchased by one of his friends with whom he had tried to start some business ventures (though he was not sure which one).
The case went to trial and a jury found defendant liable to plaintiff. Defendant then made a motion for a Judgment as a Matter of Law – this motion essentially allows the court to overturn a jury’s verdict if it not have legally sufficient evidentiary basis to find for the party on that issue.
The court upheld the jury’s verdict finding defendant liable for cybersquatting.
LEGAL ANALYSIS
For an extended discussion of cybersquating, click here.
How is cybersquatting proved?
To prove cybersquatting, a plaintiff must prove four elements:
(1) Defendants registered, trafficked in or used a domain name;
(2) that was identical or confusingly similar to Plaintiffs’ mark;
(3) Plaintiffs’ mark, at the time Defendants registered their domain name, was distinctive; and
(4) Defendants committed these acts with a bad faith intent to profit from Plaintiffs’ mark.
(1125(d) of the Lanham Act (15 U.S.C. § 1125(d)(1)(A))).
How did the court consider the factors in this case?
(1) Defendants registered, trafficked in or used a domain name;
The defendant did not register the domain name himself; it was registered by a corporation owned by his parents. Grigor claimed that defendant “used” the name. To be held liable for “using” a domain name, a person must either be the “domain name registrant or that registrant’s authorized licensee.”
Since the domain name was purchased under the defendant’s parents’ corporation, it was not clear that defendant was an “authorized licensee.” However, the court held that based off the defendant’s testimony, a jury could reasonably find that defendant “used” the name: “Darrell was clearly involved in the development, launching, and operation of the website. In fact, Darrell was the one who suggested the name DSNY as the registrant and chose to list his parents’ address as the registrant’s address.”
(2) that was identical or confusingly similar to Plaintiffs’ mark;
This element was not at issue.
(3) Plaintiffs’ mark, at the time Defendants registered their domain name, was distinctive; and
Grigor presented evidence in the form of four newspaper articles, which she did not solicit, that featured Hampton’s Locations. The court found this was sufficient evidence for a jury to find against defendant.
(4) Defendants committed these acts with a bad faith intent to profit from Plaintiffs’ mark.
The court looks to nine factors in determining whether bad faith exists. Here, the court held that there was sufficient evidence of bad faith because Grigor went to defendant’s house several times to induce them to be listed under her service before defendant’s involvement with the similar domain name.
What was the result?
The court denied the defendant’s motion to set aside the jury verdict.
Hamptons Locations, Inc. v. Rubens, 2009 WL 1584467 (E.D.N.Y.) 2009