Company formed in 2011 claims domain names registered in 2009 infringe its trademark.
Brightwurks, Inc., which owns support service Help Scout, has filed an in rem lawsuit (pdf) against the domain names HelpScout.com and Help-Scout.com.
Here’s what happened:
In 2009, Andy Eder of Germany registered the domain names.
In 2010, the plaintiff registered the domain name HelpScout.net and started building a business on it. He obviously chose the .net because the .com was taken.
In 2011, the plaintiff started using the term “Help Scout” in commerce and filed a trademark application that was registered in 2012.
Starting in 2011 the plaintiff started reaching out to Eder about buying the domain name. After not having luck reaching him, the plaintiff sent another communication and offered $5,000 for the domain:
Eder responded asking for a six figure sum.
So Brightwurks, Inc. did what any ill-minded company would do when it realized someone rightfully owned a domain name it wanted: it filed a UDRP.
The UDRP was dead on arrival because Eder registered the domain name before Brightwurks started using the Help Scout brand. Unless Eder is psychic, he didn’t register the domain name in bad faith.
Having lost the UDRP, Brightwurks decided to file an in rem lawsuit in Virginia against the domain names, claiming cybersquatting.
The suit does mention that it lost a UDRP for the name, but claims that the panel didn’t address the fact that Eder renewed the domain name in bad faith. This is the argument that if you own a domain name and someone else creates a brand around it, then the owner should for some reason relinquish the domain name rather than renew it.
Hopefully the judge will see through it, and hopefully Eder will defend his domain names.
[Update: the parties settled and Brightwurks now owns the domain name.]