After losing two UDRPs, light bulb store files federal lawsuit.
If at first you don’t succeed…
New York City light bulb store Just Bulbs has filed a federal lawsuit (pdf) against the owner of the JustBulbs.com domain name, marking its third attempt to get the domain name through an arbitration or legal filing.
The company filed and lost a UDRP against domain name owner Greg Ricks in 2003. It then filed a case in 2013 that it also lost. Now it’s turning to the courts to try to get the domain name.
In the original UDRP, the panel was impressed that Ricks changed the use of the parked page on the domain name to refer to flower bulbs instead of light bulbs. The panel in the second UDRP referred to the finding in the first case that the domain name wasn’t registered in bad faith, even if it was allegedly used in bad faith subsequently.
The lawsuit goes beyond claiming violation of the Anti-cybersquatting Consumer Protection Act to include five other causes of action.
Just Bulbs uses the domain names JustBulbsNYC.com and JustBulbs.nyc.
This is the insane part of owning a domain vs other assets. Even if one is right it costs them a lot of time and money without any recourse. The system needs reform with clear rules.
To me, the ICANN should have almost no role in determining who has the right to buy or sell a domain. None. Trademarks ownership should not even be considered.
The ICANN’s only role in dispute resolution should be to enforce court ordered transfers requests when Trademark infringement cases are decided. They shouldn’t even get involved in the details of the case itself.
The sole purpose of a Trademark is to stop people who try to confuse the public into thinking they represent the Trademark Owner. That’s it.
A Trademark does not protect companies from free speech. So, it’s okay to stand in the middle of Times Square with a sign that says “GoDaddy Sucks”, just as it should not prevent somebody from placing print ads with a dog urinating on the GoDaddy logo… and from registering GoDaddySucks.Com.
You have every right to use a Trademark Owners Mark online and offline, as your entire domain, or part of it, as long as it’s not used in such a way as to imply you represent the Trademark Owner.
That said, Cybersquatting rules were created to prevent people from intentionally buying domains that matched Trademarks for the sole purpose of extorting money. I understand that, but the solution is not to use the ICANN to block or force a transfer. Trademark owners should simply take the “squatter” to existing courts, and demonstrate abuse; if they win, present the court oder to the ICANN or the Registrar.
In this case, if the JustBulbs.Com website does not confuse consumers into thinking he represents the New York City store of the same name, the courts would have no reason to decide in favor of the store. In fact, it would even be possible, although a lot more difficult, for the domain owner to sell lightbulbs, as long as the public is clearly aware they are not the same company. One way would be to build a larger site that sells other unrelated products, then redirect JustBulbs.Com visitors to one section on that site, that is… just bulbs.
Just losers. Lolol
These people could use a dose of common sense. They lose a second UDRP to someone that didn’t even respond other than send one sentence to the panelist and now they take the advice of the panelist that sided against them.
“In short, under the circumstances of this refiled case, Complainant must seek its relief elsewhere. Thus, plaintiff commenced this case.”
Their trademark is for a retail location. It’s obvious there is no retail location at JustBulbs.com.
It’s interesting they sued a bunch of whois privacy services so they could connect a bunch whois privacy UDRP losses to the JustBulbs.com owner.
As if Greg Ricks is the owner of every domain name that has whois privacy.
I’d be willing to bet they could have owned JustBulbs.com 11 years ago had they offered 1/4 of what they have spent in legal fees to buy the name. I think owning JustBulbs opposed to JustBulbsNYC.com over these last 11 years would have benefited them greatly. I doubt they will ever own the name.
Don’t they know you “don’t mess with Texas” , good luck Rick, pullin for ya.
I got some info straight from the horses’ mouth. Turns out when Greg Ricks received the first UDRP and found out that they previously owned the name, he offered them the name through John Berryhill to their lawyer for $800, the amount of money they would get in a refund from WIPO if they cancelled the UDRP. Essentially they would have had the name for free 11 years ago. Rather than take that offer, they proceeded with the UDRP. Greg Ricks then paid John Berryhill to defend him and won. Lawyers love people that stupid.