Seattle Trademark Lawyer

MakeMyTrip (India) Pvt. Ltd. sued Tata Sons Ltd. last year in the Western District to prevent the transfer of its oktatabyebye.com domain name following an adverse WIPO decision finding that MakeMyTrip had registered the domain name in bad faith. (STL post here.)

MakeMyTrip argued that “Ok, tata, bye bye,” is a common phrase in India. Tata Sons argued the domain name infringed its TATA trademarks.

As of March 18, the case is stayed.

At the time MakeMyTrip filed suit, the parties already had a similar action going in India. The parties stipulated that “The India action is based on substantially similar facts as the U.S. action, and, like the U.S. action, also seeks to prevent the transfer of the oktatabyebye.com domain name to Tata Sons.”

To avoid the duplication of parallel suits, the parties agreed to stay the Western District action pending the outcome of the India action. Indeed, the parties agreed to accept the outcome of the India action if it results in a judgment.

In the parties’ words: “The parties agree that, in the event the court presiding over the India action rules or otherwise determines that one of the parties is entitled to the oktatabyebye.com domain name, the parties will cooperate with one another and perform any other acts reasonably necessary to secure that party’s control of the oktatabyebye.com domain name and resolve this action.” 

The case cite is MakeMyTrip (India) Pvt. Ltd. v. Tata Sons Ltd., 09-1261 (W.D. Wash. March 19, 2010).

Routine lawsuit. Interesting back story, courtesy of SeattlePI.com.

On March 11, Microsoft Corp. filed a typosquatting complaint in the Western District against Alf Temme, Lars Temme, and their unincorporated company known as “Romfab” and “Rom Fab.”

Microsoft says the father-and-son team registered 25 domain names that are confusingly similar to Microsoft’s HOTMAIL brand. Think ho0tmail.com, hotma9l.com and hlotmail.com. 

The plan? To get additional eyeballs on a Web site advertising their $14,615 exercise machines.

Yes, they’re apparently behind the odd-looking ROM “Time Machine” exerciser advertised in magazines that claims to provide a full workout in “exactly 4 minutes per day.”

The P-I talked with the senior Temme, who explained his strategy in registering the domain names. (He also denies his son is involved.)

“Every form of advertising is a form of annoyance,” he said. “The bottom line is, though, for every kinda 10,000 views, one person might buy something.”

He defended his strategy as fair competition.

“It’s just like if you were to buy some property next to Disneyland. Put a hotel on it, you should not be able to get sued for ‘property squatting,’” he said. “It basically means that one is taking advantage of a situation where people who, prior to getting to the Disneyland Hotel, bump into this hotel that is offering a competing rate.”

Mr. Temme reportedly told the P-I he is willing to give up the domain names. He has not yet answered Microsoft’s complaint.

The case cite is Microsoft Corp. v. Temme, No. 10-408 (W.D. Wash.).

On March 9, Network and IT Management Ltd. filed suit in the Western District for a declaration that its registration of the bachoco.com domain name does not violate the Anti-Cybersquatting Consumer Protection Act or infringe defendant Bachoco, S.A. de C.V.’s trademark rights.

On March 10, the Western District entered a show cause order requiring plaintiff to explain why its case should not be dismissed.

The problem?

“The complaint is signed ‘May Greenberg, Manager,’” the court found. “The complaint is not signed on behalf of Plaintiff, a business entity. It appears Plaintiff is attempting to proceed in this matter pro se.”

That’s not allowed by court rules.

“Although an individual may represent himself or herself pro se, see 28 U.S.C. § 1654, the rules are clear that a business entity is not permitted to proceed pro se unless an exception applies.”

The case cite is Network and IT Management Ltd. v. Bachoco, S.A. de C.V., No. 10-5158 (W.D. Wash.).

There’s no middle ground here.

Either the defendants were completely clueless or they just didn’t care. My money’s on the latter.

On Sept. 19, 2009, Montana Thomas and Credit.com, Inc., allegedly registered mastercard.cm. 

On March 10, 2010, Mastercard International, Inc., filed suit against Mr. Thomas and Credit.com in the Western District.

The case is situated here because defendants allegedly registered the domain name through eNom Inc., which is headquartered in Bellevue.

Mastercard alleges half a dozen causes of action, from cybersquatting to dilution.

Defendants have not yet answered Mastercard’s complaint.

Anyone taking bets on whether defendants will default?

The case cite is Mastercard International, Inc. v. Thomas, No. 10-361 (W.D. Wash. 2010).

In December 2000, Office Depot, Inc., obtained a judgment against John Zuccarini under the Anticybersquatting Consumer Protection Act (ACPA) arising out of Mr. Zuccarini’s registration of offic-depot.com as a domain name. Office Depot was unable to collect on its judgment and eventually assigned it to DS Holdings, LLC.

DS Holdings sought to levy upon 190 “.com” domain names that Mr. Zuccarini had registered. To this end, it registered Office Depot’s judgment in the Northern District of California, where Verisign, Inc., the registry for “.com” and “.net” top-level domain names, is located. After some procedural jockeying, it moved for the appointment of a receiver under California law to obtain and sell the domain names and use the proceeds to satisfy the judgment.

The Northern District granted the motion. Mr. Zuccarini appealed, arguing the district court lacked personal jurisdiction to enter the order.

On Feb. 26, the Ninth Circuit affirmed, finding that for purposes of establishing quasi in rem jurisdiction, domain names are located both where the registry and the relevant registrar are located. It took its cue from the ACPA, which it deemed to be persuasive authority.

The court found: “Under the ACPA, a trademark owner in a civil cybersquatting action can proceed in personam against the cybersquatter. If there is no in personam jurisdiction in any judicial district of the United States, the owner may proceed in rem against the allegedly infringing domain name. The ACPA provides that in rem jurisdiction over these domain names shall be ‘in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located….’ The ACPA also provides for the legal situs of the domain name once a lawsuit has been filed….”

Given the ACPA’s persuasive authority and the practicalities involved in bringing suit to execute judgments against owners of domain names, the court found “under California law that domain names are located where the registry is located for the purpose of asserting quasi in rem jurisdiction. Although the question is not directly before us, we add that we see no reason why for that purpose domain names are not also located where the relevant registrar is located.”

This led the court to affirm the district court’s order appointing the receiver.

The case cite is Office Depot, Inc. v. Zuccarini, __ F.3d __, 2010 WL 669263, No. 07-16788 (9th Cir. Feb. 26, 2010).