Yet another company called Bespoke wants to get Bespoke.com without paying for it.
But he has.
First, a Swiss company filed a UDRP and lost. Now, a Louisiana company has filed a cybersquatting lawsuit in U.S. court (pdf).
Plaintiff Bespoke LLC markets custom tours in New Orleans. It was created in 2013.
It claims that Piesse is cybersquatting by holding the generic and dictionary domain name Bespoke.com.
From what I can tell in the lawsuit, it appears that the Louisiana company inquired through a Uniregistry Market landing page about buying the domain name. Piesse responded with an $8.5 million asking price.
The Louisiana company’s lawsuit claims:
Upon information and belief, Defendant routinely and regularly engages in similar
activities and ploys. http://whois.domaintools.com/piesse.com indicates Piesse is associated with
about 39,330 domain names.
I think the plaintiff fundamentally misunderstands what cybersquatting is. Its characterization of the ACPA furthers this belief:
In enacting the Anticybersquatting Consumer Protection Act of 1999 (“ACPA”), 15 U.S.C.
§ 1125(d), Congress recognized and condemned the growing practice in which a “Cybersquatter,”
often through the use of a computer program that buys up a name as soon as it becomes available,
buys multiple domain names (typically for a retail price well under $100 each) and then holds the
names hostage, and attempts to re-sell them (often, as here, with the assistance of a broker) at an
inflated price to a company or individual with a legitimate interest in or use for the domain name.
This characterization of ACPA seems to be missing a key element, doesn’t it?
Amusingly, I imagine Piesse can point to the previous cybersquatting complaint against the domain name as proof that the domain name has value beyond this plaintiff!
OVER 50 (Fifty) Pending Trade Mark Applications have been NEWLY filed in the USA alone in the very recent past for the word/including word “Bespoke” !!! That is excluding Registered, Expired and Ended status .
will keep on happening if he never sues over damages for reverse domain name hijacking
How about domain broker Stephanie and Uniregistry? Shouldn’t they be footing the bill for this defense? It only takes one question to vett an opportunist/wingnut and protect the client from these expensive hassles. Is she a potted plant or a retained advisor?
Brokerages know the law. Sedo holds training seminars on it…they just don’t pass the info on to registrants. Domain brokers feign ignorance and willfully expose their clients’ assets to risk…’like it’s their job.’ That business model is looking pretty damn passé.
@ C.S.
My name is Jeffrey Gabriel. I am the Vice President of Sales at Uniregistry.
I assure you Stephanie is not a potted plant. Additionally, all of Brokers receive regular training from the best attorney in the industry.
If you asked Garth, he would have great things to say about our Brokerage.
Jeffrey Gabriel
1-949-416-2555
Gabriel,
I got many emails from you offering me domain/s I asked about prices in the past.
You always write in your automatic, copy-paste emails that I recently inquired about domain/s which is always not true.
The problem is I inquired about names at least over year or years ago (I don’t inquiry about any names from your platform since I noticed how you work).
I emailed Uniregistry not to spam me but it doesn’t work. Stop spamming me right now!
If you lie here that you do not do that I will create a thread on Namepros and find people who have similar experience with you. I am sure you do that to many people.
There is nothing in the sales thread that would flag this inquiry as litigious. I or any broker would not see this coming, It’s extraordinary.
agreed
I have no doubt it will be defended victoriously.
However the real Bespoke we should look out for is this one….
bespoke tranche or bespoke tranche opportunity
https://www.bustle.com/articles/136706-what-is-a-bespoke-tranche-opportunity-the-big-short-ends-with-a-big-warning
Get ready because in the years that come THAT is the $8.5M word….much much more to the Nation.
Cases like this (dictionary words) should not even be permitted to be filed or immediately throughn out. The defense is obvious.
@clasione,
If UDRP forums had a fixed budget and every case they took on where an added cost burden, then they would prioritize legitimate disputes and exclude cases like this.
But UDRP forums are monetized the other way round – paid in proportion to the number of cases they entertain.
Is it possible that attorney Patrick H. Patrick, maritime lawyer in Louisiana, simply does not know that a dictionary domain like ‘BESPOKE.COM’ will have been registered since the 90s, nor how to obtain that data? Possibly. Because the UDRP panel in the past dispute chose to kick the ‘date of registration’ issue downstream…
The ACPA exists to address ‘targeting’ (verznwirlss.com, etc.). In keeping with that, courts have held that the ‘original’ registration date is the relevant registration date. A name which was registered by ANY party prior to the trademark, even if the original registrant is unrelated to the present registrant, does not violate the statute. [AIRFX.com et al. v. AirFX LLC, 2012 U.S. Dist. LEXIS 120285 (D. Ariz. August 23, 2012).]
Obviously, BESPOKE.COM is outside the ACPA as a dictionary word used worldwide (ie., 656 trademark filings in the WIPO feature ‘bespoke’). But even if this were a coined name like AirFX or GoPets, the fact that one can readily prove that it was already registered by others AT LEAST as early as 2000 protect it from this plaintiff, whose trademark use began in 2013.
The fact that BESPOKE.COM was dropped/caught in 2014, rendering the Whois data incomplete, does not alter the fact that there can be no targeting where a domain underwent a registration prior to the trademark. Any and all prior registrations support a finding that the mark is not distinctive and that the domain asset has inherent value which later trademark filers are not entitled to target and strip for themselves.
Otherwise, court-clogging thieves like Michael Gleissner would be invited to take potshots at assets which have changed hands for millions of dollars in the past, simply by mining DNS histories for drops and mailing in a $350 USPTO filing.
Good post, thanks.