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Prosecuting a Claim Against a Previously Successful Respondent on a Different TLD

Complainants from time to time refile complaints on change of circumstances. Refiling is not barred but complainant must satisfy strict rules generally applied on applications to reargue or renew motions. Entered judgments do not bar commencing an entirely new case. In an early ACPA case, Cello Holdings, L.L.C. v. Lawrence-Dahl Companies, 347 F.3d 370 (2nd Cir. 2003) the Second Circuit held that “the res judicata effect of the First Action [relating to domain names] is not dispositive in the Instant Action as Cello may have a claim premised on facts arising after the First Action. The ‘bad faith intent to profit’ element of a trademark rights-holder’s ACPA claim may be premised on the domain-name registrant’s ongoing use of the domain name…. The judgment in the First Action, therefore, does not bar Cello from arguing that Storey’s use of ‘cello.com’ is unlawful insofar as Cello relies on conduct post-dating the First Action to make its claim,” (emphasis added).

The factual circumstances in American Airlines v. James Manley d/b/a Webtoast Internet Services, Inc., FA1006001330044 (Nat. Arb. Forum July 27, 2010) (<americanway.com>) offer an interesting variant on refiling and new claim prosecutions. In a previous claim of abusive registration, American Airlines Inc. v. Webtoast Internet Services Inc., FA0112000102954 (Nat. Arb. Forum February 24, 2002) the Panel denied the complaint for <americanway.biz>. The Complainant did not challenge <americanway.com> at that time (registered in 1996) because (presumably) the website was making a bona fide offering of goods or services. In the earlier case the Respondent relied (and the Panel accepted) that <americanway.biz> passed the paragraph 3(c)(ii) test. I will refer to the 2002 case as American Airlines 1 and the more recent one as American Airlines 2.

At the time the Complaint was served in American Airlines 2 the website “contained links to Complainant’s competitors.” The Respondent did not deny this but explained that its “web server was recently, very seriously, hacked.” The Panel was skeptical:

Respondent attempts to explain post-complaint website changes as some sort of restoration to the site’s complexion before a troublesome hacking incident, but the hacking incident is unsubstantiated. The effect of hacking on the website’s metamorphosis from one sponsoring ‘hunting and jumping’ videos to one where there are links to Complainant’s competitors is not explained by Respondent and not shown to be benign.

The factual record in American Airlines 1 supported the Respondent’s claim that it was using the .biz as it had been doing with the .com “an e-commerce gateway for sales of videotapes, books and CDs and as a website for access to the works of the American author, Ralph Waldo Emerson.” Somewhere along the way, the alleged hacking occurred and transformed the website, hence the Panel’s humorous reference to “metamorphosis.”

While modifying a website to remove accidental linking may in certain instances be excusable it is still a factor to be considered in assessing bad faith. In American Airlines 2 the Panel concluded that “Respondent’s lack of concern for the rights of Complainant at that time it originally registered the disputed domain name is inferred from Respondent’s recent conduct.” This may be regarded as too attenuated since the first Panel was persuaded to the contrary. However, there was another fact that told against the Respondent, its “lack of candor” in its Response to evidence about its purported application for a trademark. It “claims to have trademarked THE AMERICAN WAY, but fails to reveal that the Trademark Office records show that the registration was owned by The Pony Venture Project. The Respondent also fails to note that the Registration was canceled by the Trademark Office as a result of the owner failing to submit a declaration and supporting documentation evidencing that the alleged trademark was still in use.”

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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