File sharing company files IP lawsuit over trademarks.

BitTorrent (and especially its users) are familiar with intellectual property lawsuits. But usually they’re on the receiving end.

Now the tables are turned. BitTorrent, Inc. has filed a federal lawsuit in California against BitTorrent Marketing GMBH for trademark infringement and cybersquatting.

According to BitTorrent, Inc. founder Bram Cohen, he first became aware of the defendant when it contacted him in 2003 and asked for permission to register the Bittorrent.de domain name. Cohen refused. The defendant went ahead and registered a lot of related domain names (including the .de domain) and managed to secure trademark registrations for the BitTorrent mark in Germany and Europe. When BitTorrent, Inc. tried to get its own trademarks in Europe, the defendant filed a petition to oppose BitTorrent, Inc’s trademark applications.

BitTorrent, Inc initiated litigation in Germany against BitTorrent Marketing GMBH in 2010. Now BitTorrent is bringing a case against the firm in the U.S.

According to Cohen’s lawsuit, the German company has registered hundreds of domain names that include “Bittorent”, such as the typo bitorrent.com, bittorrent.net, and bittorrent.de.

BitTorrent, Inc also says that the defendant has a history of bad activity in file sharing. It alleges the defendant has tried to usurp trademarks owned by other file sharing companies such as Kazaa and Morpheus.

Cohen’s company is suing for federal trademark infringement and cybersquatting, among other claims. On the cybersquatting claims it is asking for $100,000 per infringing domain name. Both the defendant and the respondent have filed cybersquatting claims in the past, but not against each other.

You can read the lawsuit here (large PDF).

Tags: bittorrent, bittorrent lawsuit

Don’t forget to prove earlier rights if you claim them.

Publisher Hidden Values has lost a dispute over the domain name TriangleKidsDirectory.com.

Hidden Values publishes the Kids’ Directory. It also has a registered trademark for KID’S DIRECTORY.

It’s an admittedly weak mark. It’s even a concurrent use registration that is limited in geographic scope.

But, the registrant of the domain name was a former licensee of Kids Directory and published the directory in the North Carolina “triangle”. And he didn’t respond to the dispute. So the odds were tipped in Hidden Values’ favor.

Regardless of what you think of the merits of this case and if UDRP is the proper venue for it, the case seems to have come down to when Hidden Values got trademark rights in “Kid’s Directory”. And this is where the company screwed up.

Hidden Values’ complaint mentions that it started using the mark in 1990. That’s the first-use-in-commerce date on its trademark application. But the trademark application wasn’t filed until 2005, after the respondent registered the TriangleKidsDirectory.com domain name. It should have been easy for the lawyer to show some common law rights previous to 2005 that would have been acceptable to the panel, but he dropped the ball:

“In the instant proceeding, Complainant has provided no documentary or other evidence to support the date of first use in Commerce referenced in its trademark application. This Panel therefore finds there to be a lack of evidentiary basis by which it might reasonably conclude that Complainant held rights in the KID’S DIRECTORY trademark prior to the May 12, 1995 [sic] date on which Respondent registered the disputed domain name.”

Had the company’s lawyer provided what should have been easy proof, I bet the company wins this case.

Tags: udrp

Every blog is supposed to write about the IPO

I’ve got to write one, right?

If religious blogs find a way to cover an IPO then a domain blog should, too.

I actually have a bit of a domain angle. This morning I googled FacebookIPO.com because I recall seeing something about the domain previously. Here’s the first result:

Facebook-IPO.com has no content whatsoever. Google still cares about exact match domain searches, even if it’s on a really esoteric search. I suspect some people will type FacebookIPO.com into their browsers today.

OK, that’s my tie-in.

Facebook is expected to start trading this morning on NASDAQ under the ticker symbol FB.

Tags: facebook ipo

A look at a few stories I haven’t covered this week…

There are a few notable stories in the domain name industry that I missed writing about over the past week, so here’s a quick run down.

A “monster” of an acquisition – Mesh Digital, which owns domain name registrar DomainMonster, has been acquired by Host Europe Group for an undisclosed sum. DomainMonster isn’t a huge registrar, but it has proven quite adept at mastering domain registrations when new top level domains enter their “general availability period”. This will come in handing with hundreds of TLDs coming on line in the next couple years.

iPhone5.com – Apple filed a UDRP to get iPhone5.com earlier this month. The owners put up an initial fight before deciding to hand the domain over the Apple this week.

Vanity.com – Quite a stink going on over at TheDomains about this UDRP filing. I hope there’s more to this story than meets the eye. For what it’s worth, the owner of the domain has had it since at least 2005. The company was formed in Nevada.

Tags: domainmonster, iphone5.com, mesh digital, vanity.com

Moniker auction nets close to $20,000 in sales.

The Moniker Premium Spring Auction at SnapNames just concluded. Here are the (unofficial) results:

drivinggloves.com 6450 – this is a recently developed site. Auction included Facebook page (with 2,000+ likes) and Twitter handle.
florists.info 3050 – good keyword, but not a bad price given how marketplace for secondary TLDs like this will change in coming years.
loaninterestrates.com 2000
obese.net 1650 – 5 bidders duked it out for this one. It was the last auction to close due to extensions.
scubadivinglessons.com 1267
bearings.net 770
alumn.com 590 – not a very common spelling of the term
njlawfirms.com 575
grilled.net 500
32a.com 470
wyvn.com 300
upcbarcodes.com 300
overnightpriority.com 300 – not to be confused with Fedex’s Priority Overnight
joggingshorts.com 300 – definitely falls under the “niche” category
attempt.net 300

Tags: Moniker, SnapNames