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WorkBetter.com owner fights back against ACPA lawsuit

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.

Kneen notes:

“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.

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  1. Elena says

    QUOTE: “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.”

    I find it disturbing that a simple domain renewal is often used as an argument of bad faith in an UDRP proceeding (or in this case lawsuit). If I register a non-trademarked domain I’m not going to suddenly drop it 10 years later just because some company applied for a trademark since then; I should be able to renew the domain without any risk for repercussions.

    It is interesting however that by making the process of renewing the domain automated the bad faith argument is arguably even less valid as the owner of the domain can argue that he didn’t manually renew the domain, that it was done automatically by the registrar. The only thing the owner did in this case was selecting an auto-renewal option probably many years before there was a live trademark on the domain. So maybe it’s a good thing to have most of your (more valuable) domains on auto-renewal.

    • Mike says

      Yes, and you should not be personally dragged into a foreign court because you declined to sell your 10+ year old domain name property to some random company / person.

      Also, some type of monetary penalty should be applied to those attempting to reverse hijack your name as you will spend significant amounts of money to defend yourself, your reputation and your property. Monetary penalties / sanctions should be assessed in those situations – in addition to amounts available from the Courts’ discretion.

  2. Matthew Marion Fondel says

    Two things pop up here.

    1. The proper (first) response to a lawsuit in which you question jurisdiction is with A Motion to Dismiss. It’s been a while but I’m pretty sure that if you don’t respond immediately with a motion to dismiss you can be deemed to have waived that objection.

    2. I don’t see the explicit language used in re workbetter.us but, I think you can legally say you used the MARK workerbetter.us in business BEFORE you registered the internet domain name workerbetter.us.

    All is all, what you’ve cited here just looks like the typical beginnings of years long litigation.

    The fact that an intent to use trademark is part of this scenario will hopefully again bring home to the USPTO that their process is being abused.

    Maybe a lawyer here can weigh in on whether or not it was a good idea for a UK citizen with no business ties to the US to even answer a lawsuit filedd in New York. Again, it is possible to waive certain objections if you don’t cite them right away.

      • Matthew Marion Fondel says

        you know, it is possible to do both at the same time; to file a motion to dismiss AND oppose the injunction. Personally, I would have made absolutely sue that the motion to dismiss was filed FIRST

        • Ivan Rasskazov says

          The respondent has multiple chances to ask the court to set aside the complaint. 12b-1 motion, or motion for summary judgement if response filed, JMOL comes in later as well.

          Still, it can be time consuming to research FCRP rules and definitely stressful.

          The Internet still doesn’t quite fit well into the traditional, stare decisis common law system. The judicial system needs time and there will be bumps along the way.

          • Matthew Marion Fondel says

            In addition to the federal rules of civil procedure, each district has rules of procedure and particular judges may have “procedures” in place. The bottom line is that before the Judge can rule on a motion for injunctive relief, the court has to first determine / establish that it has jurisdiction over the subject matter and the parties. Hence, my position that the motion to dismiss be filed first, since jurisdiction has to be established first.

  3. Michael Blend says

    I commented on the original techcrunch article on this. It is by far my most-liked comment except for when our daughter was born. Proving once again people are passionate about domain names

  4. kritika says

    Clearly Reverse Cyber Squatting Case I wish courts made company to pay domain name owner in case of reverse domain name hijacking

  5. Z. Patronis says

    Harsh Mehta of Office Space Solutions, Inc. is being represented by Roman Popov of Bostany Law Firm, PLLC.

    As Jason Kneen is a UK resident, why would Harsh Mehta’s attorney Roman Popov of Bostany Law Firm, PLLC. submit an ACPA case in the District Court of the Southern District of New York which has no jurisdiction over a UK resident?

  6. reader says

    Wonder what will come of the novel Kneen is working on: The Life and Times of William Orkbetter.

    • C.S. Watch says

      One might like to hear GoDaddy’s ‘demonstrable preparation to use’ in re the 200K names they just purchased. (Something like, ‘we heard China and India had ten times our population, so we thought we might hold a chair.’)

      Domain investment is not only a good faith use, it was foreseen by the framers as of public policy interest, ie., ensuring provider trustworthiness and preserving security of supply.

      Yet panels continue blackmailing Respondents with self-righteous demands for ‘other’ good faith uses. It is like grabbing a dog by the scruff of the neck and rubbing its nose in your own mess.

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