Company sues to keep domain after surprise UDRP decision.
Michael Berken’s company, WorldWide Media, Inc., has sued Traditional Medicinals Inc., in order to retain the domain name SmoothMove.com.
Earlier this month, a National Arbitration Forum panel found that Worldwide Media must transfer its ownership of SmoothMove.com to Traditional Medicinals. Traditional Medicinals offers a laxative tea called Smooth Move.
WorldWide Media, represented by attorney Ari Goldberger, argues that Traditional Medicinals does not have exclusive rights to the term “smooth move” and the domain name was registered without knowledge of any trademark. The company is seeking declaratory relief stating that the domain name does not infringe, does not violate the Anticybersquatting Consumer Protection Act, and is being used legally. The lawsuit also seeks payment of WorldWide Media’s legal fees associated with this case.
Under UDRP guidelines, a transfer of the domain name is not initiated if a lawsuit in the proper jurisdiction is filed within 10 days of the decision.
WorldWide Media’s complaint notes that several other companies have trademarks for “smooth move” covering products such as electronic controls, seasonings, and lingerie. Over 50 businesses in the United States use the term “smooth move” in their business names and there are over 150,000 search results in Google for “smooth move”.
The lawsuit was filed in the Federal Court – Western District of North Carolina. View the complaint here (pdf).
This case is very amusing, since the phrase “Smooth move ExLax” was originated I believe by the movie Sixteen Candles, but I’m not 100% sure. Either way the complainant essentially stole a very popular catch-phrase of the 80’s, and being as clever as they are actually believed they could steal the domain name as well. The very fact that the UDRP went to their favor, shows how biased the process is against domainers.
I look forward to the outcome of this case.
1. WorldWide Media has this domain parked and for sale:
– “Inquire about this Domain”
– ns2.this-domain-is-4-sale.com
2. Traditional Medicinals has 30+ years of commercial usage and a Principal trademark (1983) prior to WorldWide Media’s registration.
3. In order to get declaratory relief WorldWide Media must show overwhelming evidence in their favor. It does not exist.
4. Getting a Federal judge to cancel or set aside a longstanding Principal Federal trademark is a very high hurdle to overcome.
5. By demonstrating that several other parties also have trademark rights to the name only further weakens WorldWide Media’s position. Any one of those companies could claim rights including Traditional Medicinals. Having many separate trademarks with the same term does not dilute the rights of the company enforcing their own. It is that company which is proactive in trademark rights enforcement that secures their rights among all others.
6. Winning Attorney’s fees in Federal court is rarely granted. That’s because most cases are settled or defaulted before they ever get to that point. It is also another high hurdle. WorldWide Media must show willful and malicious intent by Traditional Medicinals in attempting to claim the domain name. Read number 2 again. That’s not going to happen and if this case goes all the way it’s going to cost 50-100k in fees.
“if this case goes all the way it’s going to cost 50-100k in fees”
Knowing Michael’s tenacity, I’m sure he will see this thru to the end. If only to just keep his record clear.
Since, Michael is also a lawyer he knows what is involved.
As for the $ 50-100K, I suspect he has already mentally budgeted the money.
So Traditional Medicinals has 30+ years of commercial usage and a Principal trademark from 1983, but the domain was still available for registration in 2003? And then they don’t come after it till 2009?
I guess they were busy trying figure out these crazy interwebs. Maybe some of those herbal remedies clouded their judgement 😉
7. touche
I see laches here
Hey “K”
Which law firm do you work for ?
Scott, their interweb pipes were clogged. They took some herbals to fix that though.
Laches is a good argument.
It’s been about five years since ownership of the domain changed over to WorldWide Media (WWM). Does that qualify for laches? There mere existence of a delay does not qualify for Laches.
WorldWide Media will need to show that Traditional Medicinals delay was:
1. Inexcusable
2. Traditional Medicinals knew of WWM’s usage
3. WWM would be prejudiced
The Lanham Act does not have a statute of limitations. Five years is on the cusp of qualifying for ‘inexcusable’ but WWM still has a hurdle to clear in providing evidence to the three points above.
WWM won’t hang their hat on any one argument. The filing of a Federal case alone tends to fend off many aggressors. If history is an indicator, this case will eventually be settled out of court under nondisclosure.
“the domain name was registered without knowledge of any trademark.” WWM
This is a flawed argument. You are required to perform due diligence in researching any third party trademark rights before laying claim to a word mark or registering a domain name. Read any registrar’s T&C.
To say that Traditional Medicinals should have known about WWM’s ownership of the domain name is also to say that WWM’s owner/lawyer should have researched USPTO.gov before registering the domain name.
It works both ways. The difference here is that Traditional Medicinals’ rights supplants WWM because of their previous Principal Federal trademark.
I have just finished reading through WWM’s filing. Here are some observations.
“26. Because “smooth move” is a common term subject to substantial third party
use, Plaintiff believed it was a term that was free to be used by anyone PROVIDED THAT such use did not infringe upon another party’s trademark rights.” WWM filing
– The only way WWM would have known this was to do their due diligence in researching any trademarks prior to registering the domain name. It’s reasonable to state that WWM’s owner/lawyer would and should have done this back in 2003; either via Google or USPTO, at which point WWM would have had knowledge of Traditional Medicinals’ Principal trademark.
“30. Plaintiff believed the Domain Name was desirable and valuable as the name for a web site associated with moving services, as this term is often associated with such businesses.” WWM filing
– As per Archive.org, this clearly did not occur until 2007. Three years after the domain was registered by WWM. They need to show evidence to support this argument.
“31. Plaintiff also believed that the Domain Name would be a good name for a dating web site because of the colloquial meaning of the term “smooth move.”” WWM filing
– WWM needs to show evidence of work they have done relating to this potential business model predating this case.
“32. At NO TIME has Plaintiff displayed any links on the Domain Name for tea, laxatives, or any beverage, medicinal product, or anything even remotely related to Defendant’s business.” WWM filing
– Not true. Archive.org pages from at least 2004-2006 (three years) show links for but not limited to ‘Health, Nutrition, Diet, Food’. Not until 2007 did the links change to what they are currently now.
“35. Reg. No. 33443 62 was not registered until November 27,2001, fout years after the Domain Name was registered.” WWM filing
– Clearly this one would not apply. But REG #1258223 (reg. 1983, FIRST USE 1971) does apply. Registered TWENTY years before Plaintiff’s domain registration. It only takes one.
“36. Defendant did not object to Plaintiffls registration and use of the Domain Name for more than five years following Plaintiff s registration of Domain Name.” WWM filing
– Traditional Medicinals is now and they are within their right to do so. Not filing within the past five years does not diminish any inherent rights previously or currently.
“c. A Google search for “smooth move” yielded over 150,000 third party uses of the term.” WWM filing
– The first page of results contains mostly websites promoting Traditional Medicinals’ trademarked product.
Note:
—–
– Refernces to UDRP decisions hold no weight in Federal court except for references made in UDRP decisions to any Federal cases.
“c. A Google search for “smooth move” yielded over 150,000 third party uses of the term.” WWM filing
– The first page of results contains mostly websites promoting Traditional Medicinals’ trademarked product.
And your point being they had SEO work done?
Just LOL, the domainer business model seems severly hurt these days. No more parking income, rare sales outside the domainer crowd just exchanging domains at artificial high values, and know high legal costs to eventually keep the domains.
“K”
It looks like you have a dog in this fight?
Bernard,
You are correct.
Most domainers have seen a decrease in ppc revenue. But, many have already moved (or are headed in that direction) into domain development which is more lucative.
I’m positive we don’t need to run a fundraiser for WWM.
It will interesting to see if Medicinals and Mr. Drake have the stomach for this legal battle. It usually brings out data that sometimes the company doesn’t want to become public.
Should be interesting to watch.
Hi Domainer,
I have no direct or indirect association with this case. I’m an outside observer.
WIPO and UDRP are very well known to be corrupt and once again this proves the case,if the domain was parked and it the links were not selling anything to do with the TM holders business there clearly should be no case to answer………..yet the udrp come up with these bullshit decisions,there should not be such thing as wipo or udrp and just make it a straight court battle that would stop most of the bullshit cases happening.
“Traditional Medicinals has 30+ years of commercial usage and a Principal trademark (1983) prior to WorldWide Media’s registration.”
Yup K. But was/is the TM famous enough to be noticed and accepted as “famous enough”.
Is the common man aware of “Smooth Move” tea?. Even the arbiters may have never heard about that before.
Just because someone has registered trademark rights in a generic name does not mean that they shall have exclusive right over it, just due to the virtue of first or continuing use.
This is like McDonalds tradmarking “Burger” and going after burger.com
http://www.SmoothMove.com has been recently transferred.
What was the outcome of the lawsuit?
@ UDRPTalk – they reached a confidential settlement in August, which included the domain being transferred to Traditional Medicinals.