Trying to get a domain name that existed before your trademark.
I’m a big supporter of intellectual property rights. Unfortunately I’m stuck writing more often about lawyers and companies that overstep their bounds.
The latest case: Smart Tax Holdings, LLC. The company filed a federal lawsuit (pdf) against Marchex for the domain name SmartTax.com.
The plaintiff started using the name “Smart Tax” in 2006 and filed a trademark on it. The trademark was granted in November 2008.
SmartTax.com was originally registered in 2000. It was part of the Ultimate Search portfolio later acquired by Marchex.
So Marchex has owned the domain name since well before Smart Tax Holdings, LLC even started using the Smart Tax term. Yet its lawyer has the gall to write this:
Defendant has not used Plaintiff’s mark coincidentally, but rather chose to associate Plaintiff’s mark with its own website for the sole purpose of unfairly steering traffic thereto.
How can you suggest that a company is “unfairly steering traffic” to a domain name it owned many years before you existed?
RaTHeaD says
as america begins to sink into the abyss… the magicians come onstage doing parlor tricks to convince you that you are free. and they have. god bless america… god bless the lwayers… god bless all the cheaters, liars and frauds.
Kevin M. says
With all the varying and baffling decisions that are regularly handed down on various domain UDRPs etc, nowadays the filing lawyers probably figure – “what the heck, you never know what ‘dumb reasoning’ will fly with the right panel”!!
George Kirikos says
They allege that Marchex didn’t respond to the C&D, so perhaps they’re hoping for a default, i.e. that Marchex won’t defend the case. That’s likely not going to happen. I expect Marchex will have an easy time, and we’ll see a quiet settlement in a few months.
Trico says
“With all the varying and baffling decisions that are regularly handed down on various domain UDRPs etc, nowadays the filing lawyers probably figure – “what the heck, you never know what ‘dumb reasoning’ will fly with the right panel”!!”
Kevin,
If I read Andrew’s posting correctly this is not a UDRP filing but a Federal lawsuit.
Meyer says
Do they really think Marchex is going to roll over and play dead?
It is a public company, they will come with a machine gun to a knife fight.
It is a clear case of attempted domain hi-jacking.
There are a number of firms that go by the name ‘Smart Tax’.
Interesting observation, I wonder who created the logo first?
SmartTaxFranchise ,com (NY)
SmartTaxCPA ,com (different firm – Michigan)
(it appears one borrowed the basic idea from the other) 🙂
George Kirikos says
Also, the mark is only on the Supplemental register, not the Principal one, see:
http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=78817386
This should make it much easier for Marchex.
fx says
no wonder these guys didn’t go udrp.
it’s a supplemental registry TM.
Andrew Allemann says
Thanks for pointing out the supplemental, guys.
Peter says
all this trademark suits are getting out of hand.just because the company do not wish to spend money to buy those domains already registered,they start to suit.Bully like Google,FB,Disney are nothing but cowards!
UDRPtalk says
What about the fact that an unrelated site http://www.Smartax.com claims to have been in business since 2004 for the very same services.
Wouldn’t SmartTax Holdings be infringing on the confusingly similar http://www.Smartax.com?
Paul Keating says
What about fraud here? The TM 1applicant had to declare that there was no one else out there using the same mark in a manner that was identical or confusingly similar. Since the domain was out there and most likely being used in connection with tax adverts in PPC, a simple search would have found it.
There is precedent in this area in connection with the firehouse tms which have now been invalidated on this ground.