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. 

Defendant Russ Smith owns a number of online websites.  Smith contacted Domain Tools on behalf of himself and a business he is believed to own, claiming that Domain Tools infringed Smith’s copyright interests in “hundreds of websites” by displaying historical screenshots of those websites and that Domain Tools unlawfully obtained and unlawfully sells access to the public WHOIS information regarding Smith’s domain names.  Domain Tools in fact provides public access to the historical screenshots free of charge. 

Smith also threatened to seek cancellation of the federal registration of Domain Tools’ trademark.  Smith asserted that Domain Tools’ mark is not entitled to protection and that it was fraudulently obtained.  Smith registered the domain name, but does not conduct business from that website and uses it to direct traffic to one of his other websites.

Because Smith threatened to file both a copyright infringement complaint against Domain Tools and a cancellation proceeding before the USPTO to cancel Domain Tools’ trademark and sent Domain Tools draft copies of such documents, Domain Tools filed its complaint for declaratory relief to define its legal relationship with Smith. 

The relief requested from the court by Domain Tools in defining its legal relationship with Smith includes the following:

  1. That the Court enter a Judgment declaring that Domain Tools did not violate the rights of either defendant under the Copyright Act, 17 U.S.C. §101, et seq.;
  2. That the Court enter a Judgment declaring that Domain Tools did not violate the rights of either defendant under the Anticybersquatting Consumer Protection Act, 15 U.S.C. §1125(d);
  3. That the Court enter a Judgment declaring that Domain Tools did not unlawfully use or display public WHOIS information relating to the domain name registrations of either defendant;
  4. That the Court enter a Judgment declaring that each defendant lacks standing to file a petition for cancellation of the [Domain Tools] Mark with the U.S. Patent and Trademark Office;
  5. That the Court enter a Judgment declaring that the [Domain Tools] Mark is enforceable and that its registration is not subject to cancellation for the reasons claimed by either defendant.

(Complaint pdf page 14).

Regarding the copyright claim, Domain Tools alleged that Smith’s websites are purely functional, do not contain protectable expression and are therefore not entitled to protection under the Copyright Act.  Domain Tools further alleged that its use of static images of Smith’s websites is a fair use.

Regarding the anticybersquatting claim, Domain Tools alleged that Smith does not use the term “domain tools” as a source identifier, so that his use of the term cannot be distinctive or famous.  Liability under the anticybersquatting statute requires that the mark that is allegedly damaged be either distinctive or famous.  15 U.S.C. §1125(d)(1(A)(ii).  Domain Tools also alleged that it lacks the bad faith intent to profit from the other party’s mark, which is additionally required under the anticybersquatting statute.

Domain Tools alleged that Smith lacked standing to file a cancelation petition cancelling the Domain Tools mark, as Smith cannot show that he was damaged by the registration, which is a requirement under 15 U.S.C. §1064.

This case is Domain Tools, LLC v. Russ Smith, Case 2:12-cv-00498-MJP, Western District of Washington at Seattle.

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