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Lawsuit Filed Over Domain Name Registered 16 Years Before Plaintiff's Use
HughPickens.com writes: Cybersquatting is registering, selling or using a domain name with the intent of profiting from the goodwill of someone else's trademark. It generally refers to the practice of buying up domain names that use the names of existing businesses with the intent to sell the names for a profit to those businesses. Now Andrew Allmann writes at Domain Name Wire that New York company Office Space Solutions, Inc. has filed a cybersquatting lawsuit against Jason Kneen over the domain name WorkBetter.com that Kneen registered in 1999 although Office Space Solutions didn't use the term "Work Better" in commerce until 2015. "Workbetter.com is virtually identical to, and/or confusingly similar to the WORK BETTER Service Mark, which was distinctive at the time that the Defendant renewed and/or updated the registration of workbetter.com," says the lawsuit. But according to an Office Space Solutions' filing with the USPTO, it didn't use the term "Work Better" in commerce until 2015. Office Space Solutions is making the argument that the domain name was renewed in bad faith. According to Kneen, Office Space previously tried to purchase the domain name from him and after it failed to acquire the domain name, is now trying to take it via a lawsuit.
1. You don't need to make commercial use to have the right of a domain
2. Use of the domain is anything that links to the domain (even if not in "public" use)
Frivoulus case by the look of it. Service Mark owners should have the case dismissed with prejudice.
Well, here's the problem with that:
Trade Marks and Service Marks are only meaningful in the area of business. It is not exclusive across all possible kinds of business. That's not how they work.
You can't simply look up a domain name and check it against trademarks and decide who owns it. You and I can Trademark the same thing, and as long as you're making concrete and I'm making balloon animals, we can both keep it, because we're doing different things which won't reasonably be confused.
So, unless the original registrant is in the same kind of business as the assholes^Wplaintiff in this case, it simply doesn't matter.
I'm of the opinion the people suing don't have a leg to stand on. This guy had registered this domain a long time ago, and renewed it before this Service Mark was applied for.
Which means unless they're in the same area of business and the Service Mark/Trade Mark then trumps prior ownership ... the assholes^Wplaintiff hasn't for a leg to stand on.
Lost at C:>. Found at C.
Tossing it will indeed prohibit them from trying again if the case is dismissed with prejudice. They could try the same stunt with a different service mark and a different defendant, but at that point any defense attorney worth his or her retainer is going to bring up the previously-dismissed suit as proof of acting in bad faith.
You're oversimplifying the legal case as well as leaving out the series of legal battles preceding the one which you're speaking about and failing to note that the payment was for legal fees. The reason that Apple Corps lost is because in a previous court battle they had agreed to legal terms that allowed Apple Computer to have the right to any services that allowed music to be played or delivered, which is essentially what the iTunes music store does, as long as they weren't distributing pre-recorded music on physical media, which is what Apple Corps was in the business of doing.
If the Apple Corps didn't want Apple Computer to even be able to sell music, they shouldn't have agreed to legal terms that would allow them to do so. Unfortunately they had a legal agreement with Apple that permitted Apple to do exactly that as long as they weren't distributing tapes, CDs, or other physical media. It's not really surprising that a record company failed to see the coming storm of digital music and was foolish enough to include language about physical media. Sucks to be them, but that was the agreement they made.
Wikipedia has a decent overview of the various court cases between the two over the years.