Company’s response in WorkBetter.com lawsuit suggests that new businesses should be able to get old domain names.
Last week I wrote about a cybersquatting lawsuit filed against the owner of WorkBetter.com. A new company has sprung up using the descriptive name Work Better, and it wants the 16-year-old .com domain name.
Office Space Solutions asked the court for a temporary restraining order to prevent the domain’s owner, Jason Kneen, from transferring the domain name. Kneen filed a response, and now Office Space Solutions has responded to that (pdf).
It’s clear from reading Office Space Solutions’ response, that it actually believes that owning descriptive, dictionary and generic domain names with the idea of some day selling them to another company or person violates the law. It believes that the 1999 U.S. Anticybersquatting Consumer Protection Act (ACPA) was created to stop this practice.
Office Space Solutions’ lawyers write:
Defendant has not made a single use of the workbetter.com domain in the 16 years that he has held onto it, was aware that companies are considering legitimate businesses with respect to the name, and is resisting allowing the Plaintiff to obtain the domain for a business called Work Better that is now operating under a registered trademark of the same name.
According to the plaintiffs, any business that decides to start using a term and gets a trademark on it should be able to obtain the matching .com domain. The owner of a domain name matching a (now) trademark should not be able to renew the domain name, instead offering it to the owner of the new mark:
Allowing courts to apply the renewal date when considering whether there is a distinctive trademark in existence, stop the very harm that is imposed by what Kneen is arguing he should be allowed to impose. Following the reasoning of the cases cited by the Plaintiff in its opening brief, allows courts to prevent the warehousing of domains as is happening here to the detriment of businesses or businesspersons that want to start legitimate commerce around those names.
By using the renewal date, it would not matter if somebody registered a domain 16 years ago or 60 years ago, because if they are not using the domain for any commerce whatsoever, and another business is, it is that business that should be allowed to use the domain with respect to the name of the business. Obviously, this result promotes commerce and reduces confusion.
You might need to re-read the two preceding paragraphs, as they’re pretty stupefying.
The lawyers continue, arguing that the public is harmed if the plaintiff, which so far looks be launching on the alternative WorkBetter.us domain name, is not allowed to have WorkBetter.com:
The opposite result, the one urged by Defendant’s counsel, is to allow warehousers or stockpilers of domains like Kneen to demand a payoff from the trademark owner or allow the public to simply be confused. There is no question that a trademark owner like the Plaintiff that established a business and continues to promote a business around the trademark Work Better, would be the appropriate source that the public should be directed to when typing in workbetter.com. But under the Defendant’s scenario, if the Plaintiff chooses not to pay the exorbitant price that the Defendant is demanding for the domain that he has warehoused, the public would be directed to whatever place Defendant sends the public when it searches for the Plaintiff’s legitimate business. Source confusion would be inevitable. This cannot possibly be the result that the legislature intended when it enacted the ACPA.
The purpose of the ACPA was to prevent people from registering existing famous trademarks with the purpose of selling them to the trademark holders. It was not to allow a new business to grab an existing .com domain name from someone else just because they aren’t using it.
Continuing:
The Defendant a highly successful international businessperson has flooded the blogosphere with messages that the Defendant and others like it should be required as a matter of policy, to pay whatever price the owner of a domain demanded. Defendant fails to discuss in his blogs that many times those that find themselves in the position of Plaintiff cannot afford a lawyer and cannot afford the payoff price and are therefore forced to create the scenario just reviewed where their business would operate under one name and the domain would exist in another source. Amazingly, counsel in her opposition brief, directs the Court to the blogs and disrespectfully suggests that the immense wisdom of this honorable Court should somehow be influenced by the blogs.
Hmm. I don’t think the opposition brief, which cites Domain Name Wire, suggests that courts should pay attention to what bloggers and commenters think about the law. But suggesting that new companies should be able to force a domain name owner to hand over a legitimately-owned domain name for whatever price the business operator wants is worthy of comment.
The plaintiff’s law firm, Bostany Law Firm, does have some experience in intellectual property law. Specifically, copyright and trademark law in the fashion, music and entertainment industries. Oh, and “Also Bostany Law Firm PLLC has a department handling “texting while driving” violations in NYC, with offices just blocks from the Department of Motor Vehicles.”
As for the new Work Better business, it looks like it’s just now gearing up to launch. On WorkBetter.us.
Looking for an awesome NYC based #PR team to help us launch #WorkBetter (WorkBetter.us)…
— Harsh Mehta (@hjmehta) July 2, 2015
CSW says
Domain name investors serve the fundamental purpose of trademark law: to reduce consumer search costs. If a company forms a mark AFTER the domain has been registered, they have made the decision not to choose an alternate name because the domain is of LIMITED IMPORTANCE to their business model. And they affirm that decision every day that passes thereafter in not acquiring it. That domain is thus available for purchase and use by a party who trades heavily in the internet space, and not wasted as a vanity plate for one who does not. (ie., Get your vanity plate out of my way when I’m looking for a company that actually moves product online.)
C.S. Watch says
Further to that, at a population of seven billion, every name is in use by others. EVERY name. And all’s well with the world. Google that WorkBetter is used by Oracle, Citrix, and Jive Software. Anybody making a ‘restraint of trade’ argument in 2015 has a digital clock blinking ’12:00′ somewhere in their house.
C.S. Watch says
This solid gold SNL sketch nicely illustrates that prestigious domain names reduce consumer search costs in that they immediately communicate that the provider has intelligence, solid financial backing (or foresight), and that they are willing to stake the trustworthiness of their ‘good name’ with a good name. (The high market value of which will be forfeit should they displease the consumer.) Take it, Chris Parnell… http://www.nbc.com/saturday-night-live/video/dillon-edwards-investments/n11241
Jen says
This is one to watch.
On the surface, this is just an attempt to grab someone else’s property for free, but if the court rules in the complainant’s favor, then this will have a chilling effect industry wise.
I can envision such a case going before the Supreme Court.
Ian Ingram says
@C.S. Watch – great comments. 🙂
This statement from their lawyer is pretty funny – “if they are not using the domain for any commerce whatsoever, and another business is, it is that business that should be allowed to use the domain…”
The simple definition of Commerce is: the activity of buying and selling.
…and what does Office Space Solutions’ lawyers think the definition of ‘domain investing’ is?
couponpages says
Exactly. Buying the domain for the express purpose of either earning income from ads, or simply to eventually sell it is clearly commerce.
It makes you wonder if the tweet about looking for #PR worked. They’re getting publicity right now… for being stupid.
One of the other interesting things is that these clowns actually are starting a company in the 21st century without making sure they can get a domain with the same name.
Oh wait… they already have WorkBetter.us. What makes them think they are entitled to the .Com?
janedoe says
Actually, the statement is more amusing than that…
If not used for commerce at all then a commercial entity should get preference.
Not only does it validate the resale of domain names as a commercial activit, it invalidates all other non commercial use as a legitimate reason for someone to legally retain a domain name.
Which means that if someone has a domain name used for a hobby/blog/redirect to their facebook page/registered for their child to use at a later date, then any commercial entity (including domain resellers) should be entitled to simply take it.
Ivan Rasskazov says
By definition, investing in domains or anything else is commerce. Otherwise, we may as well reclaim undeveloped land from owners because someone may come along and build a house there one day.
couponpages says
If somebody buys land in the middle of nowhere, but never builds on it, should he be obligated to sell it just because somebody else has plans? It doesn’t matter how long he held it, nobody can tell him he has to build on it.
If they think domain investing is wrong, based on their logic, they will create a monster 100 times worse by allowing scammers to profit by looking for millions of undeveloped domains then using the courts to take them away.
They fail to recognize that domain investors take risks by speculating the kinds of domains that may increase in value. For every domain that eventually increases, there are many more that don’t.
Ivan Rasskazov says
Well said.
IR
Andrew Allemann says
The court just published a document recording that Office Space Solutions’ motion for a preliminary injunction was DENIED.
C.S. Watch says
Thank you for the update! That bodes well.
Hopefully the Plaintiff extricates himself, this is roundly disastrous for his career, and that of the young lawyer. https://www.youtube.com/watch?v=fcCqBL1HYys
C.S. Watch says
@couponpages – Ayefirmative.
This Plaintiff/these Complainants are not ingenuous clowns. If a Complainant doesn’t have the domain today it is because 1) the domain is a vanity plate which is not critical to their business model, or 2) they connived from the outset to ‘build a mark and just take it.’ To a man. The fundamental purpose of trademark law is to reduce consumer search costs, and consumers deserve to have the former make way for future providers who actually trade heavily online, and to have the latter held to a standard of trustworthiness that flows from self-interest–their investment in their domain name. There is no merit for the ‘renewal as registration’ approach, not in policy and literally not in the Policy.
C.S. Watch says
Domain investment is only frowned upon by those who are inherently resistant to technology. Millennials were born understanding the social utility of $$ domain names. Your daughter needs a ride, do you feel safer putting her in Uber.com or RustyPanelVan.cc?
Xavier Lemay says
Same as buying a land. I own it.
Peter T says
“hose that find themselves in the position of Plaintiff cannot afford a lawyer and cannot afford the payoff price”
Oh my gosh. This is the dumbest argument ever. First of all, the legal costs usually go the other way as the defendants are forced to pay obscene amounts of money to defend themselves from frivolous lawsuits such as this one. Secondly, the amount of entitlement present here is ridiculous. If they can’t afford the domain name, then too bad. Have these people ever heard of capitalism?
C.S. Watch says
Capitalism? Have these people never heard of oligarchy!
In August 1995, Procter and Gamble discovered domain investment and registered thousands of domain names. The largest sole investor at that time was Christian Riley, with only 300-400. The National Science Foundation, in a hot sweat, immediately made domains $100 each (Sept. 1995). As only P&G could afford $500,000 in reg fees, and because they were buying up the Spanish words for all illnesses and corkers like beautiful.com and Kraft was starting in on it and things were generally getting embarrassing for the US of A, the NSF had to act. They emitted a low dog whistle that only nerds could hear: they wafted an ugly, graphics-free, ‘free name registration’ page into the ether.
What happened? Nerds blocked the wholesale devourment and destruction of the dot-com space by corporate giants like P&G. You’re welcome, economy.
The free reg option was a juggling act for the middle income watermelon farmers and housewives who answered this call and seized this opportunity. They stayed up all night, dropped their social lives, sold their cars, worked two jobs, and went deep in debt in order to keep the best in their portfolios away from the best in the business (Yun Ye), and to keep themselves afloat for the decade it took for domain investing to become a viable business model.
P&G took the first bite of the apple. Corporate giants are the reason we’re all not lounging naked in the garden with clever dot-coms hanging from every bough.
Yet corporate propagandists (and the generally dim) have been libeling these nerd investors and ripping them off for decades. The registrants of silliness like verzonwrless.com are a tangential problem, and the UDRP was created to stop them from selling names backwards to trademark holders, and in that regard it is a superb instrument that benefits all. But we owe a debt of deep gratitude to these nerd proto-investors.
Do you think P&G is taking any calls from boutique perfumists hoping to use ‘scent.com?’ Or any offers from Doctors Without Borders to buy ‘hygiene.com?’ (Both domains undeveloped…’passive holding,’ as it were.) You bet not. But small investors will take those calls from entrepreneurs, and they’ll offer back-weighted payment plans or leases-to-own.
So, if you’re a domain investor, and anyone ever gives you any sass about your field of trade, or asks whether it is a ‘legitimate interest,’ there’s only one answer:
‘I saved Latin. What did you ever do?’
C.S. Watch says
https://www.youtube.com/watch?v=HtAHucR–s0
Domainer Extraordinaire says
I have a vacant commercial parcel of land that I’m not using for commercial purposes. Using this logic, Walmart or anyone else that wants to use it for commercial purposes can take my property.