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.