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.

Comments

Re:Morons ...

[mwvdlee]

I hope the court punishes Office Space Solutions for trying to abuse the legal system.
Merely tossing it will not prohibit them from trying again.

Sounds very much like

[Chrisq]

Sounds very much like Nissan Motors vs. Nissan Computer, where Nissan Motors tried to claim a domain registered before the Nissan name was commonly used (they were still naming cars Datsun at the time). Basically Nissan Computer wins case after case but the motor copmpany keeps trying and in the latest move is trying for a federal trademark for the business of computers and accessories.

Re:Looks like a case of poor research

[mwvdlee]

Not just prior use of a domain name, but prior use of the trademark:

http://jdevadf.oracle.com/work...
https://www.citrix.com/go/work...
http://www.workbetterindia.com...

Re:Looks like a case of poor research

[Holi]

Hmm, Kinda like how Apple Music and Apple Computers never had to worry about a trademark battle? Industry lines are not always so defined.

The renewal is the alleged cybersquatting

[tepples]

As I understand the plaintiff's argument, each renewal is a separate act of cybersquatting. Can anybody more familiar with anti-cybersquatting law clarify whether this is a valid argument?

Copyright Law

[Anonymous Coward]

This is also a trademark law maneuver.They must defend their trademark, and unfortunately, a lawsuit is the only way that the courts will recognize it. If they didn't, then anyone could use their non-response to the workbetter domain name as evidence to take their trademark.

Re:Copyright Law

[j-beda]

This is also a trademark law maneuver.They must defend their trademark, and unfortunately, a lawsuit is the only way that the courts will recognize it. If they didn't, then anyone could use their non-response to the workbetter domain name as evidence to take their trademark.

I think that is not completely true. A simple exchange of letters and perhaps an explicit licence for a nominal sum ($1 for example) or a memorandum of agreement that the potential infringer will not enter into the domain that the trademark coveres would probably be sufficient to defend the trademark. And significantly less expensive.

This type of behaviour is stupid if they are merely trying to defend their trademark.

Sounds Like A Scumbag Company

[Jason Levine]

Jason Kneen (the domain name owner) posted some details in the comments section on the first link. First of all, he apparently hasn't been served with this lawsuit. The first he heard of it was online. Secondly, apparently the company tried to transfer the domain to themselves without his authorization. When caught on this, they claimed it was a mistake and cancelled the transfer. They tried to get him to sell the domain name, but he wasn't interested. Now, apparently, they're suing to get it.

Also, claiming that renewing the domain name was "in bad faith"? This assumes:

1) Everyone renewing a domain name must automatically look to see if any trademarks have been filed on said domain name and then transfer the domain name to said trademark holders or let the domain expire.

2) Anyone in any form of negotiations to transfer a domain name can't renew it. (Thus enabling the people you are transferring it to the opportunity to just "run out the clock" and grab the domain when it expires.)

Here's hoping the court smacks this lawsuit down fast.

Re:Sounds Like A Scumbag Company

[RatherBeAnonymous]

According to Kneen's web site, http://www.jasonified.com/doma..., workbetter.com is for sale. He currently has it redirecting to his primary domain name, www.jasonified.com. After looking at the list of domains he owns, including many that are Twitter related, he looks a lot like a cybersquatter.

Re:Morons ...

[Lumpy]

If he has any brains, simply send every time there is "discovery" the same sheet of paper proving he has had it for 15 years.

You can tell the plaintiffs lawyers to go fuck them selves over and over and over again.

I have actually used the words "go fuck yourself" in response to a lawyers letter.

Lawyers hate being called out as the spineless slime they are.

Re:Morons ...

[I'm New Around Here]

It's hard to argue you want to use such domain names for your own use, unless you happen to be a Mr. Pepsi - it could be a valid surname after all.

This happened to a man in the 1990s, Mr. Nissan.

http://www.nissan.com/Lawsuit/...