Judge rips apart cybersquatting lawsuit.
Want to see what it’s like when someone brings a weak cybersquatting case in front of a judge?
Domain Name Wire has obtained the transcript from a hearing over a motion for preliminary injunction in the WorkBetter.com case.
Office Space Solutions, run by Harsh Mehta, is starting a new business called Work Better. It tried to buy WorkBetter.com from Jason Kneen, who registered the domain name in 1999, last year. Metha then filed a trademark application. Once it was granted, he sued Kneen to get the domain name.
Office Space Solutions also sought a temporary restraining order to prevent Kneen from transferring WorkBetter.com from eNom.
Judge Lewis Kaplan heard arguments for the injunction in court last week. He smelled a bad case from the beginning, and he let the plaintiff’s attorney John Bostany know it. Kaplan started cutting Bostany off before he finished his second sentence in arguments.
Bostany: …It has been, at least in theory, the philosophical point of view of moving away from the strict requirement that the time in question be the registration initially —
Judge Kaplan: Let’s back up, because I don’t think I have to reach that question in this case. Problem number one is that I do not understand for the life of me how you have any likelihood of success on the issue of personal jurisdiction. Problem number two is that I do not understand how you’ve established any cognizable threat of irreparable injury. And I could go on. But that’s for starters.
When Bostany admitted that personal jurisdiction was his weakest argument, the judge cut him off and said “I agree with you”.
Kaplan wasn’t done with the snarky comments, and repeatedly cut of Bostany.
Bostony tried to argue that Kneen was an international businessman, and quoted from Kneen’s website:
Bostany: …He says, it’s in paragraph 7 of the Khan declaration, we quote from the defendants. “I work for clients in the U.K., U.S.A., I am a speaker on mobile development and I’m currently authoring two books on titanium.”
Judge Kaplan: So it’s the titanium you’re hanging your hat on, is that right?
Ouch.
Kaplan goes on to say that the cybersquatting case looked like a setup:
Judge Kaplan: Let’s be practical, Mr. Bostany. What went on here is you were trying to set him up. Your client was trying to set him up.
Bostany tried to withdraw the motion for an injunction, but Kaplan said he would rule on it. He also went through the elements of Anticybersquatting Protection Act cases, and came to this conclusion:
Judge Kaplan: However you slice it, there are good cybersquatting cases and there are bad ones. And this is really one of the bad ones.
Here’s Kaplan summarizing the case:
Judge Kaplan: The balance of hardships in my view, if it cuts in any direction cuts in favor of Mr. Kneen because an injunction could threaten to interfere with a perfectly lawful and appropriate course of business in which he’s been engaged since 1999, all at the behest of somebody who appears to have a — who quite obviously just went out and registered a mark that he undoubtedly knew was nearly identical to the domain name registered and used by the plaintiff for many years for perfectly legitimate reasons.
John Berryhill argued for defendant Kneen, and the transcript shows that Kaplan did not interrupt him nearly as much. That’s probably because Berryhill submitted a solid response to the request for restraining order, and the judge clearly agreed with his assessment of the case.
At the end of his ruling, Judge Kaplan said to Bostany:
…And now, Mr. Bostany, I suggest that you might have a conversation with your adversary about withdrawing something.
The next day, Office Space Solutions did indeed drop its case. It amusingly characterized that its reason for dismissing the case was that it didn’t think it would get jurisdiction. It ignored the other faults Kaplan found with the case.
Kaplan did something rather unusual: he struck from the dismissal notice the reference to jurisdiction, and wrote (pdf):
The court has stricken the first paragraph of the notice because (1) in its judgement, it is not a fair and complete statement of the court’s reasons for denying plaintiff’s motion for a preliminary injunction, which were stated on the record and are available to anyone purchasing or accessing the transcript, and (2) it is entirely gratuitous.
After reading the transcript, I’d agree with the judge on that.
John Berryhill says
There are a couple of transcription errors, like the “Worldwide Neutral Property Organization”, but the first thing I wondered was whether the Dodgers actually won the 1959 World Series.
Karen Bernstein says
John Berryhill did an outstanding job at the hearing last week! It was a pleasure to work with him as co-counsel!
Joe Santisi says
How much do you think it cost in attorney fees and expenses to get the case dismissed?
Andre says
So how much did this “victory” cost the Defendant? Why is there no provision for him to recover his costs? Why is a domain owned since 1999 still subject to this craziness? Laches?
Matthew Marion Fondel says
From what you have reported here, I get the impression that the judge in this case was some what aware of the public attention on the case.
Had the defendant (the owner of the domain name) just did routine trademark searches and routine searches of newly registered domain names, he would have seen this lawsuit coming against him long before it was filed. In almost all of these cases I see, there have never been protests of the trademark applications. It’s like people just sit back while someone registers a similar domain name and files a trademark application and they are then stunned when they are sued.
The more people who protest to the USPTO about abuses of the trademark system, the sooner the USPTO will formally allow / recognize “attempt at a reverse domain name hijacking” to be a legitimate reason (in a letter of protest) for passing the letter of protest on to the trademark examiner. Right now, arguing that someone had filed a trademark application as part of a reverse domain name hijacking scheme is NOT grounds for the USPTO accepting a Letter of Protest.