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Cybersquatting lawsuit filed over domain name registered 16 years before plaintiff’s use

Office Space Solutions wants a domain name registered 16 years before it started using the corresponding term in commerce. It’s taking the legal route to get it.

New York company Office Space Solutions, Inc. has filed a cybersquatting lawsuit (pdf) against Jason Kneen of Great Britain over the domain name WorkBetter.com.

Office Space Solutions filed an intent-to-use trademark application for Work Better with the U.S. Patent and Trademark Office in 2014. It began using the mark in commerce in February 2015.

Jason Kneen registered WorkBetter.com as early as 1999. Domain Tools’ historical records for this domain only go back to 2001, when Kneen is shown as the registrant.

Now Office Space Solutions wants the domain name for its business. Rather than paying for it, the company has filed a lawsuit under the Anticybersquatting Protection Act.

How does it plan to show that Kneen registered the domain in bad faith? The case mentions several times that the domain name was renewed on February 7, 2015. It seems that Office Space Solutions is making the argument that the domain name was renewed in bad faith.

The lawsuit never mentions that the defendant registered the domain name in 1999.

And there’s another problem for the plaintiff. Its case notes:

Workbetter.com is virtually identical to, and/or confusingly similar to the WORK BETTER Service Mark, which was distinctive at the time that the Defendant renewed and/or updated the registration of workbetter.com.

According to an Office Space Solutions’ filing with the USPTO, it didn’t use the term “Work Better” in commerce until February 11, 2015.

Hmm, that seems to be after the domain name was allegedly renewed. So even the spurious “renewed in bad faith” argument shouldn’t hold up.

Filing such a lawsuit is risky, given that courts have made companies pay domain name owners in cases of reverse domain name hijacking.

Office Space Solutions is represented by Roman Popov of the Bostany Law Firm, which is the same law firm that assisted the plaintiff with applying for the trademark.

I have reached out to both the plaintiff and Kneen for comment.

Update: I just talked with Jason Kneen and it’s even worse that I thought.

The lawsuit states that Kneen offered the domain name for sale to the plaintiff. As in many cases like this, the suit neglects to mention that the plaintiff reached out to the defendant to try to buy the domain name, not the other way around. Harsh Mehta reached out to Kneen on LinkedIn to try to buy the domain name.

Even stranger, Mehta’s company requested a domain name transfer of the WorkBetter.com domain name in June 2014. Here’s a twitter conversation about it, in which Harsh Mehta said it was a genuine error made by someone in his company.

Fast forward a year and Mehta’s company filed a lawsuit to try to get the domain name. It failed to acquire the domain name, and is now trying to take it via a lawsuit.

Also, I just looked at the specimen submitted with the trademark application. It’s a screenshot of a real estate listing using an email @workbetter.us, a domain name Mehta registered on April 29, 2014. Additionally, a site is up at WorkBetter.us that states “We enable entrepreneurs and positive change-makers to work better. Very soon we will unveil even more. In the meantime, sign up for updates below and meet some of our members.”

Update: Kneen has filed a response to the plaintiff’s motion for a preliminary injunction.

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  1. A says

    This is ridiculous. It is an opportunistic attempt to bypass the investment others have made with domain names. Companies don’t have have to register the domains they want, just sue others for them now. Didn’t there have to be a bad faith intent to defraud and confuse before you could just take other people’s domains before? Someone who spent the initial investment and had the early insight to register domains that may be valuable and held onto it paying every year shouldn’t just have it ripped away by the first person who likes to sue and maneuver around the way the domain system has worked since the beginning.

  2. JZ says

    the whole renewal in bad faith argument is ridiculous and should not be basis for ever losing a domain. people are expected to let domains expire once someone comes along and files a trademark? utterly moronic and goes to show who entitled trademark holders think they are.

  3. Ray J says

    Each day we see a new charade going on with the UDRP cases. I’m no longer taken aback when I read these articles, except that they continue to march on undaunted. ICANN could easily stop this madness. They can charge the plaintiff up front and then review the case. If it passes the mustard test from a panel of 3, then the defendant can decide if they want to challenge the case, but a new panel of 3 would be selected. There should never be a panel of 1 option. That would be like the supreme court having 1 judge.

    • Mike says

      @RayJ – don’t confuse this case with the UDRP cases which are decided by a panel of 1 or 3 arbitrators. This relates to a Federal Case that was filed against the owner of a domain name under the ACPA act. It’s a much more serious action that requires a thorough response.

    • Mike says

      I would leave it as “wow” for now because do not forget this is in a Court and I am sure that they and the Plaintiff will be watching closely !! Just my thoughts.

  4. Mike says

    Does anyone know,or can find out, on what date the Plaintiff company was established ?. I would guess it may be a shell company ?

    • Mike says

      Here is the record from the NY state Corporation and Business Entity Database:

      Selected Entity Name: OFFICE SPACE SOLUTIONS, INC.
      Selected Entity Status Information
      Current Entity Name: OFFICE SPACE SOLUTIONS, INC.
      DOS ID #: 2909635
      Initial DOS Filing Date: MAY 21, 2003
      County: NEW YORK
      Jurisdiction: NEW YORK
      Entity Type: DOMESTIC BUSINESS CORPORATION
      Current Entity Status: ACTIVE

      Selected Entity Address Information
      DOS Process (Address to which DOS will mail process if accepted on behalf of the entity)
      OFFICE SPACE SOLUTIONS, INC.
      33 WEST 19TH ST 3RD FL
      NEW YORK, NEW YORK, 10011
      Chief Executive Officer
      HEMANT MEHTA
      33 WEST 19TH ST
      NEW YORK, NEW YORK, 10011
      Principal Executive Office
      OFFICE SPACE SOLUTIONS, INC.
      33 WEST 19TH ST
      NEW YORK, NEW YORK, 10011
      Registered Agent
      NONE

      HEMANT MEHTA signed the trademark application on April 25, 2014 as Chief Operating Officer of OFFICE SPACE SOLUTIONS, INC. for services that include each of these:
      Advertising and marketing; Business administration and management; Business administration and office work; Business administration assistance; Business administration services; Business assistance, management and information services; Business networking; Business operation, business administration and office functions; Commercial business management; Computerised office management; Mail sorting, handling and receiving; Management of telephone call centers for others; Office administration services; Operational business assistance to enterprises; Organizational services for business purposes; Providing business support staff services; Providing office functions; Providing office support staff services; Telephone answering service.
      and
      Harsh Mehta, the CEO of OFFICE SPACE SOLUTIONS, INC. signed a statement of use with a screenshot of the front page o their current site at workbetter.us to show that their company has performed ALL of these services at least since February 11, 2015,

  5. Mike says

    This is not surprising. If the above commentator is the owner of this domain name, I hope you get your response filed soon so you can get the ball rolling on having these people (and their attorneys) held accountable.

  6. Jason Kneen says

    Andrew – no-one has reached out to me for comment – this article and a call just now from someone else, was the first I’ve heard of it. Nothing has been “served” on me as of yet.

    • Eric Lyon says

      Interesting – So, are you saying that no such event took place and that the company in question has not threatened to or has already started any filings to acquire the domain (E.g. UDRP)?

      • Jason Kneen says

        the first I’ve heard of this is some calls today from domain owners with similar experience.

        I’ve not even served anything.

        The instigator approached me last year and I wasn’t interested in selling it. he then initiated a transfer of the domain which I responded to here

        https://twitter.com/officelinks/status/481838802106060801

        he responded there plus on LinkedIn saying it was a mistake and he never intended to do it.

        next I hear that he’s filed this suit which claims I approached him to force him to buy the domain. not true – have the original emails to prove that.

          • E Gavron says

            Erhan Karabardak of Cooper Mills Lawyers in Melbourne Australia is the king of DNS issues. He understand the tech and he understands the law. I’d recommend him in a heartbeat.

            Obligatory: I did expert witness testimony for him in a DNS case.
            Ob 2: I sold walstreet.com for $1.03M.

  7. Mike says

    This is the WHOIS for the .us domain
    Domain Name: WORKBETTER.US
    Domain ID: D45002420-US
    Sponsoring Registrar: GoDaddy.com, Inc.
    Sponsoring Registrar IANA ID: 146
    Registrar URL (registration services): whois.godaddy.com
    Domain Status: clientDeleteProhibited
    Domain Status: clientRenewProhibited
    Domain Status: clientTransferProhibited
    Domain Status: clientUpdateProhibited
    Registrant ID: CR189212776
    Registrant Name: Hosein Babai
    Registrant Organization: OfficeLinks
    Registrant Address1: 33 W 19th St
    Registrant Address2: 4th Floor
    Registrant City: New York
    Registrant State/Province: New York
    Registrant Postal Code: 10011
    Registrant Country: United States
    Registrant Country Code: US
    Registrant Phone Number: +1.6462377930
    Registrant Email: olx_admin@officelinks.com
    Registrant Application Purpose: P1
    Registrant Nexus Category: C21

    • Mike says

      So on that basis how can the other company have said they were using the name when they did not own the domain on which the website (screenshot) was taken of ?.

  8. Matthew Marion Fondel says

    The real joke here is attempting to apply logic to a lawsuit. People who are NOT lawyers have this view of litigation as this proper thing where intelligent lawyers argue their cases politely before a learned stately judge. People who are lawyers and people who have litigation experience know that anything can happen in a lawsuit. If the judge hates you, you are going to lose no matter what the facts.

    The phrase used to be SLAPP SUIT, i.e., a lawsuit filed by some one with very deep pockets against someone with not a lot of visible resources with the deep pocketed party hoping that THE COST OF LITIGATION and the simple grind of litigation is enough to force the weaker party to settle the lawsuit on terms favorable to the stronger party.

    • Matthew Marion Fondel says

      I can trump this lawsuit in outrageousness with one I know of i.e. … the case of pornographer Bryan Kocis suing an under-aged performer FOR FRAUD in federal court in San Diego. The case was settled.

  9. CSW says

    This is a naive mistake on the part of an unsophisticated Plaintiff, and one can expect a solid smack from the court. The UDRP exists to field these wingnuts and unburden the courts (and to protect both parties from litigation nightmares). Normally, Kneen would sue for RDNH after a UDRP name strip. RDNH can then deliver a tidy $100,000. penalty. http://www.roylance.com/SiteCollectionDocuments/Airfx.pdf
    The 9th Cir. has already held “Re-Registration” of Domain Name Registered Before Trademark Was Adopted Cannot Support Claim Under ACPA. http://www.ca9.uscourts.gov/datastore/opinions/2011/09/22/08-56110.pdf. Given that decision, it would be my preference to move venue to make sure you’re under the more tech-savvy 9th Cir. Kneen’s name is registered at Enom, so that’s his prerogative. If I’m mistaken in the above, someone please weigh in.

  10. CSW says

    It should be pointed up that the reason this poor Plaintiff filed is because there have been four (?) decisions or so in the past few years which have trampled the clear language of the UDRP Policy and transferred a domain registered ‘before’ the TM use. The most ‘activist’ Panelist on this issue is David H. Bernstein of Debevoise and Plimpton. That’s a $700M+ law firm, and Bernstein’s clients include notorious corporate malfeasors like Bayer and Nestle. Most would posit that this is a corporate backscratcher who has slipped an earwig in a couple minds within the usually well-meaning Panelist roster. The worst of it is that Panelists are accredited by the venerable non-profit WIPO. Their arbitor liability from suit is stronger than the WIPO’s own protection. (Relevant when stripping $3M dot-coms in bulk.) There’s no question that there is or will be a class action to be built against ICANN/Fora/these Panelists. Registrants have a contractual right to have the Policy properly applied to disputes, and there surely exists a forum duty to revoke the accreditation of Panelists who have issued decisions which flatly refuse to follow clear language, precedent, and even US courts’ interpretations of the seminal ACPA language. ie., I believe the WIPO has removed Panelists for ignoring separation of powers doctrine before. But, Harvard Law Review called ‘renewal as reg’ Panelists dangerous corporate shills a few years ago, then WIPO’s 2.0 Overview on consensus was ignored, now they are really taking on liability–where is the disavowal of ‘renewal as reg’ so ICANN, et al., can get clear? The Lens.com linking holding and the 28M GoDaddy purchase (of 200K speculator domains) illustrate that these Panelists are unclear on the whole concept of how TM law is purposed to save consumer search costs, not puff up the failing new brands of an ‘opulent minority.’ If domains are not held by innumerable small investors, they will be disappeared in the bowels of mega-corps. This already happened in 1995 with Procter&Gamble. What’s that bit about ‘those who do not read history…’ (…But I degauss. Anyone correct me if they have superior intel.)

  11. J. Salvatore says

    Office Space Solutions is represented by Roman Popov of the Bostany Law Firm.

    According to his Facebook page he only graduated from New York Law School last year.

  12. Chad Folkening says

    Here is one technique to use and go after executives moving someone into prison for theft.. This is a theft attempt plain and simple.. In this case, remind the plaintiff of this federal agreement they signed when they lied when filing for a trademark/servicemark… Straight from the gov..

    “The undersigned, being hereby warned that willful false statements. and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements,and the like, may jeopardize the validity of the application or any
    resulting registration, declares that he/she is properly authorized to
    execute this application on behalf of the applicant; he/she believes the
    applicant to be the owner of the trademark/service mark sought to be
    registered, or, if the application is being filed under 15 U.S.C.
    Section 1051(b), he/she believes applicant to be entitled to use such
    mark in commerce; to the best of his/her knowledge and belief no other
    person, firm, corporation, or association has the right to use the mark
    in commerce, either in the identical form thereof or in such near
    resemblance thereto as to be likely, when used on or in connection with
    the goods/services of such other person, to cause confusion, or to cause
    mistake, or to deceive; and that all statements made of his/her own
    knowledge are true; and that all statements made on information and
    belief are believed to be true.”

    So, when they filed, they failed to disclose the owner of the .com that had it registered and in use?

  13. Sridhar Raj says

    Wow @CSW – I am blown away, would like to connect, I concur.

    I thought this article posted on another forum was very insightful as well, so sharing:

    http://iplegalcorner.com/overreaching-priority-of-rights-to-domain-names/

    We live in exciting yet very complex “IP” times and IMO panelists need to be educated, qualified and re-certified ever so often. A higher threshold needs to be met before a claim can be entertained and when no evidence of bad faith exists, then deemed frivolous, claimant should be penalized.

  14. CSW says

    Thank you for that link, @Raj—well-written article!

    I note that both you and that author are quite gracious about the rogue panelists. He calls them ‘outliers,’ and you suggest that they may need further training. But their abnegation of duty is too plain where the law itself is so plain. Whether one is to apply ‘and’ vs ‘or’ in the bad faith registration and use examination has never been uncertain, it’s explicit in the Congressional history. http://cyber.law.harvard.edu/udrp/opinion/btext.html.

    We’re presuming judicial impartiality of a system in which arbitrators are often plaintiffs’ attorneys, millionaire corporate backscratchers, and…are simply paid cash on the barrelhead. If they are willing to give Complainants what they want, Complainants elect them as panelists, and their phones keep ringing.

    Have a look a this ‘LinkedIn’ page (as in, LinkedIn, the world’s largest ‘networking-for-jobs’ website). It has commentary from one of the leading retroactive bad faith ‘rogue’ panelists, Richard G. Lyon: “[Arbitration] offers a non-public forum and allows the parties, before the dispute, some say in the type of person they wish to decide a dispute…” https://www.linkedin.com/grp/post/3424020-5882098754479235076.

    Indeed.

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