Jason Kneen fights motion for preliminary injunction and points out plaintiff’s apparent shenanigans.
Earlier this week I wrote about how New York company Office Space Solutions, Inc. had filed a cybersquatting lawsuit against Jason Kneen of the UK over the domain name WorkBetter.com. Kneen registered the domain name in 1999, well before Office Space Solutions had any idea of using the name in 2014.
Office Space Solutions also asked for a preliminary injunction on the domain name. [Update 7/7/15: the judge denied the motion for preliminary injunction.]
Kneen has submitted an opposition to the motion for preliminary injunction (pdf), outlining what appear to be rather questionable assertions made by Office Space Solutions and Harsh Mehta.
Here’s a general timeline of events according to Kneen:
1999 – Kneen registers WorkBetter.com along with WorkHarder.com and WorkFaster.com.
April 23, 2014 – Plaintiff contacts Kneen via Linked to see if he’ll sell the domain name WorkBetter.com. (You can see the communication in this PDF.)
April 25, 2014 – Plaintiff files an intent-to-use trademark application for Work Better.
June 23, 2014 – Plaintiff submitted a transfer request for the domain name WorkBetter.com at its registrar. When confronted over twitter, Harsh Mehta blamed others in his company and apologized.
March 2015 – Plaintiff submitted a “statement of use” statement to the USPTO with a sworn declaration stating a first use date of April 1, 2014 and first use in commerce of February 11, 2015. The proof of use specimen was a printout of a page from workbetter.us, but that domain wasn’t registered until April 29, 2014.
As Kneen’s lawyer points out:
While any number of unusual events are customarily associated with the first of April, claiming use of an internet domain name 28 days before its own registration as a domain name, is not likely to fool many.
The response provides several defenses to the motion for preliminary injunction:
1. No personal jurisdiction in New York of Kneen, who lives in the UK
2. Plaintiff Has Failed To Demonstrate Irreparable Harm
On this second point, Kneen asks how there can suddenly by irreparable harm if the domain has remained registered for 16 years and:
Despite the parties clearly having communicated on the subject of Mr. Kneen’s domain name more than a year ago, the Plaintiff has taken no action whatsoever to secure the domain name against the supposed evasive tendencies of Mr. Kneen which the Plaintiff now fears.
3. Plaintiff Lacks Likelihood of Success On The Merits
On the likelihood of success, Kneen’s attorneys make a spirited defense.
For one thing, the Anticybersquatting Consumer Protection Act (ACPA) requires the mark to be distinctive at the time the domain name is registered. Yet the domain name was registered 15 years before the trademark application was filed.
“The Plaintiff’s USPTO filing just after contacting Mr. Kneen cannot be a mere coincidence, but evinces a plan by the Plaintiff to instigate a conversation to purchase the domain name roughly concurrent with filing the application, for the sole purpose of making the ACPA claim advanced here.
The plaintiff is trying to make an argument that the domain name was renewed in bad faith. The reply notes it was an automated renewal and doesn’t qualify as any sort of transfer under ACPA case history.
The opposition also explains how Kneen did not have a bad faith intent to profit off the domain name.
Instead, the opposition argues that the plaintiff has “unclean hands”, stating that the plaintiff has undertaken
“apparent fraud in its representations to this court, its dealings with Mr. Kneen, fraud in the procurement of
the trademark registration in which it here claims rights, and attempted theft of the domain name.”
The opposition writes:
While the classic ACPA scenario involves the registration of a domain name junior to a trademark for the purpose of extorting a known senior trademark owner, the sequence of events present here suggests a scheme concocted by the Plaintiff to manufacture a claim of supposed “trademark rights” to assert against a known senior domain registrant for the purpose of proceeding under color of the ACPA to extort the domain name; and to elicit a purchase price from Mr. Kneen in order to claim the domain name is being held hostage to monetary demands based in bad faith to profit from the Plaintiff’s supposed trademark rights.
It certainly appears there are some shenanigans going on here. Depending on how the case progresses, I wouldn’t be surprised if Kneen seeks damages for reverse domain name hijacking.
Kneen is represented by John Berryhill with Karen Bernstein as local counsel.