Website Designer Likely Violated Anticybersquatting Act

Jysk Bed’N Linen is a retailer selling home, office and patio furniture from its stores located in Georgia, New Jersey and North Carolina.  Since 1990, Jysk has operated under the By Design trade name and common law trademark.  Jysk contracted with Monosij Dutta-Roy and several others to create an online shopping website in 1999.  Dutta-Roy registered the domain name bydesignfurniture.com, listing himself as the domain name owner.  Dutta-Roy’s involvement with the bydesignfurniture.com website ended in 2003. 

When Dutta-Roy’s registration of bydesignfurniture.com expired on April 9, 2012, Jysk’s website went down.  Jysk then discovered that it did not own the registration and asked Dutta-Roy to re-register the website in Jysk’s name.  Dutta-Roy refused.  A few weeks later, Dutta-Roy re-registered bydesignfurniture.com (presumably bringing that website back up) and also registered the domain names bydesignfurniture.org, bydesignfurnitures.com, and bydesign-furnitures.com.  Dutta-Roy offered to transfer the domain names to Jysk in exchange for compensation for over 4,000 hours work under a non-existent agreement.  Jysk brought suit against Dutta-Roy for cybersquatting, among other claims.  The district court granted Jysk’s motion for a preliminary injunction and the Eleventh Circuit Court of Appeals affirmed.

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GoDaddy Kicks Contributory Cybersquatting Ass Like It Knows it Should

Petroliam Nasional Berhad (Petronas), a major oil and gas company, owns the trademark PETRONAS.  GoDaddy.com, Inc. is a domain name registrar, “Helping you kick ass in your venture. Like you always knew you could, like you told ‘em you would.”  Petronas sued GoDaddy for contributory cybersquatting when GoDaddy took no action regarding an alleged cybersquatter using GoDaddy’s registration and forwarding services in the cybersquatting activities.  A cybersquatter is someone who registers “a domain name associated with a protected trademark either to ransom the domain name to the mark holder or to divert business from the mark holder.”  (Opinion pdf page 8).  In this case, the cybersquatter registered the domain names “petronastower.net” and “petronastowers.net” and forwarded traffic to those domains names to an adult website.

The Ninth Circuit Court of Appeals:

We hold that the ACPA [Anticybersquatting Consumer Protection Act] does not include a cause of action for contributory cybersquatting because: (1) the text of the Act does not apply to the conduct that would be actionable under such a theory; (2) Congress did not intend to implicitly include common law doctrines applicable to trademark infringement because the ACPA created a new cause of action that is distinct from traditional trademark remedies; and (3) allowing suits against registrars for contributory cybersquatting would not advance the goals of the statute.

(Opinion pdf page 8).

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Domain Tools Seeks Declaratory Relief in Copyright and Trademark Dispute

This is a summary of the allegations in Domain Tools’ complaintDomain Tools, LLC is a King County-based company offering online domain name research and monitoring services.  Domain Tools’ services include domain name research, registration research, WHOIS information, historical WHOIS information and historical static screenshots of the home pages of websites that have been associated with specific domain names.  WHOIS information is the contact information that everyone who registers a domain name must provide, as per ICANN requirements.  ICANN is the Internet Corporation for Assigned Names and Numbers and is the entity that controls the domain name system. 

The historical screenshots provided by Domain Tools are not interactive and do not substitute for live websites.  Domain Tools believes that by providing access to historical information about the Internet, it provides a service that benefits the public.  The DOMAINTOOLS trademark is registered on the U.S. Patent and Trademark Office (USPTO) Principal Register, which means that it is a distinctive trademark.  Domain Tools, LLC is the exclusive licensee of the mark. 

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