Friday, December 14, 2012

When ex parte situations conceal real legal issues

ViaView, Inc. v. Blue Mist Media, 2012 WL 6007204 (D. Nev.)

The court accepted ViaView’s contention that it owned both “and all associated trademark rights and goodwill.”  Defendants used isanyoneup in various domain names, including .net,, and, where they publish “involuntary pornography.”  ViaView “purchased the ISANYONEUP mark in April of 2012” (herein lies the problem, of which more below) and associates the mark with its campaign to stop “bullying behavior.”  ViaView sued for cybersquatting, unfair competition/trademark infringement, breach of contract, civil conspiracy, and intentional interference with contractual relations.  The court only considered the ACPA claims in granting the TRO.

ACPA makes a person liable who has a bad faith intent to profit from a “mark” (not a word) and registers/uses a domain name that is identical or confusingly similar to “that mark.”

As noted, the court accepted plaintiff’s ownership claims, and that the mark was distinctive at the time defendants registered their domain names because the mark was inherently distinctive (as to what?).  Also, “it can hardly be disputed that Defendants' domain names are ‘identical or confusingly similar’ to Plaintiff's mark.”

ACPA has a nonexhaustive list of nine factors for determining bad faith, including the defendant’s potentially good reasons for using the domain name, indicia of bad behavior like registering a bunch of similar domains and providing fake contact information, and “intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site.”  The court found that “most, if not all, of these factors” supported a finding of bad faith.  Defendants used the domain names to direct consumers to another site, yougotposted, and thus had the apparent intent to divert consumers with resulting confusion.  Plus, they used the entire mark.

Irreparable injury is generally presumed from likely success on the merits in a trademark case; the balance of equities tipped in plaintiff’s favor since defendants were just using the domain names as redirects anyway; and the public interest is against confusion.  And issuing the TRO would maintain the status quo by returning the allegedly infringing domain names to the domain name registrar.  (Hunh?  Returning the parties “to the respective positions that they held before Defendants began using the allegedly infringing domains,” as the court next says, is hardly maintaining the status quo.)

**NOTICE** -, its parent ViaView Inc. and other corporate parents (the "Affiliates") have purchased only the domain name , and did so in order to shut the site down and to put an end to its ignoble activities. We have not assumed any right, interest, ownership, control or responsibility for any content previously accessible or displayed on, and expressly disclaims the same. Do not submit photographs to us, as we disagree with the prior site's business model, and flatly reject it.

That defines transfer in gross, which means that the mark has been abandoned and plaintiff has no rights in the mark for the terrible services formerly provided using the mark.  Sometimes strangers to a mark snap up an abandoned one, and at times the previous owner has been able to do something about that based on residual goodwill (which here means badwill, I guess), but that’s explicitly been disclaimed here, and the equally terrible defendants are much closer to delivering the terrible services formerly associated with the mark than the plaintiff (which is weird in its own way, as detailed in the article linked above).

Okay, you might respond, but BullyVille has a new mark for new services that began with the transfer in gross.  That seems plausible, though query whether causing a domain name to redirect to BullyVille counts as “use” of the mark for services.  If there is use, I’m sure it’s valid as inherently distinctive as to antibullying services.  But the ACPA factors wouldn’t counsel in plaintiff’s favor treating the mark as newborn: defendants have no bad faith intent to profit from the only thing plaintiffs own, the rights in the mark for antibullying services. The reason defendants used the domain names at issue is because plaintiff lacks secondary meaning in the new use.  In the simplest terms, on these facts I can’t see how defendants had a bad faith intent to profit from plaintiff’s mark, as required by the statute.  Their interest in registering these domain names would be exactly the same if plaintiff didn’t exist, because of the residual secondary meaning of the abandoned mark.  In some ways, this decision is like saying that Delta Airlines has an ACPA claim against a interloping, non-Delta Faucet registrant of deltafaucets—that’s not the Delta at issue!

Now, maybe this just doesn’t matter, because it’s unlikely to come up in anything but a somewhat bizarre set of circumstances, because it’s a TRO, and because crappy defendants get treated badly.  I hope so!

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