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California restaurant chain fights over domain name

Cafe fights marketing firm for domain name.

A picture of a loaf of sourdough with the words "A Sour Lawsuit"

A California restaurant chain has gone to court to try to recover a domain name that it says it rightfully owns.

West Coast Sourdough filed an in rem lawsuit (pdf) in Federal District Court in Virginia on Thursday to try to get the domain name WestCoastSourdough .com.

According to the restaurant chain, the domain was registered on its behalf on January 7. The Plaintiff says that it subsequently engaged with  James Terry and Sacramento Connected for social media marketing website design and development services. The restaurant alleges that those parties “fraudulently induced Plaintiff to authorize Sacramento Connected to turn over control of the
Domain.”

Historical Whois records at DomainTools show that the domain was registered to someone in India on January 7. It has been under Whois privacy since at least April.

I suspect the plaintiffs chose a lawsuit instead of UDRP because the restaurant chain first used the mark earlier this year and might have difficulty showing that the domain was registered in bad faith given the timeline. A UDRP panel might also view it as a contractual dispute not fit for UDRP.

It does seem a bit odd that this dispute would proceed as an in rem lawsuit. The suit is against John Does, but the complaint makes it clear who the Plaintiff believes has taken over control of the domain.

In the meantime, the restaurant chain has been relegated to using the matching .net domain.

 

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  1. John Poole

    Andrew, why do you say, “It does seem a bit odd that this dispute would proceed as an in rem lawsuit”? Why isn’t it appropriate and logical for the plaintiff to proceed with ‘in rem’ claims — plaintiff is seeking to establish its rights in the “rem,” i.e., the domain name, as against all other parties in the world, known and unknown, some of whom may not be subject to personal jurisdiction by any U.S. court) — and venue in the US District Court, Eastern District of Virginia, is appropriate as the registry operator Verisign is located there. See https://www.law.cornell.edu/constitution-conan/amendment-14/section-1/actions-in-rem-proceeding-against-property

    • John Berryhill

      “Why isn’t it appropriate and logical for the plaintiff to proceed with ‘in rem’ claims?”

      Because one of the requirements to proceed in rem is that personal jurisdiction over the domain registrant is not possible.

      First line of the complaint linked in the article:

      “This action arises under the Anticybersquatting Consumer Protection Act (“ACPA”), 15 USC 1125”

      If you take a look at the relevant part of the statute on which the case is premised, it says:

      ————-
      (d)(2)
      (A) The owner of a mark may file an in rem civil action against a domain name in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located if—

      (i) the domain name violates any right of the owner of a mark registered in the Patent and Trademark Office, or protected under subsection (a) or (c); and

      (ii) the court finds that the owner—

      (I) is not able to obtain in personam jurisdiction over a person who would have been a defendant in a civil action under paragraph (1); or

      (II) through due diligence was not able to find a person who would have been a defendant in a civil action under paragraph (1) by—

      (aa) sending a notice of the alleged violation and intent to proceed under this paragraph to the registrant of the domain name at the postal and e-mail address provided by the registrant to the registrar; and

      (bb) publishing notice of the action as the court may direct promptly after filing the action.

      ——————————-

      You’ll notice the alternative requirements of “we can’t get jurisdiction over the person” or “we don’t know who the person is.”

      This part of the statute was written for disputes where the plaintiff is either unable to locate the registrant or unable to obtain jurisdiction over the defendant.

      Now, both the plaintiff and the defendant are in California and they certainly know each other and can sue each other out there all they’d like. So, there is something unusual in this plaintiff going from California to Virginia in order to file a lawsuit over a domain name held by someone else in California, premised on the claim that “we can’t get jurisdiction over these guys.”

      • John Poole

        John Berryhill what makes you think “the domain name [is] held by someone else in California”? Andrew’s article clearly says “Historical Whois records at DomainTools show that the domain was registered to someone in India on January 7. It has been under Whois privacy since at least April.” Hence the multiple “John Doe” defendants named in the complaint, clearly a situation that calls for 15 U.S. Code § 1125 (d) (2) (A): “The owner of a mark may file an in rem civil action against a domain name in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located if—
        (i)the domain name violates any right of the owner of a mark registered in the Patent and Trademark Office, or protected under subsection (a) or (c); and
        (ii)the court finds that the owner—
        (I)is not able to obtain in personam jurisdiction over a person who would have been a defendant in a civil action under paragraph (1); or
        (II)through due diligence was not able to find a person who would have been a defendant in a civil action under paragraph (1) by—
        (aa)sending a notice of the alleged violation and intent to proceed under this paragraph to the registrant of the domain name at the postal and e-mail address provided by the registrant to the registrar; and
        (bb)publishing notice of the action as the court may direct promptly after filing the action….”

  2. John Poole

    I agree Andrew, a better drafted complaint would have stated the same information you uncovered in your exam of the historical WHOIS record, which would have made it clear to everyone (including you and John Berryhill) why they were naming multiple John Doe defendants and proceeding with an “in rem civil action against a domain name.” The plaintiff’s lawyers may have been in a hurry to file, the complaint states “Plaintiff will seek leave of Court to amend this Complaint to insert the true names and capacities of such [John Doe] Defendants when same have been ascertained …”

    • Andrew Allemann

      I don’t think there’s an issue with the original registration. The lawsuit states “The Domain was registered for and on behalf of Plaintiff on or about January 7, 2020.” So that registration was made with permission. Perhaps it was a service provider in India who registered it. Then the plaintiff claims that the other two parties took the domain from it. So the original registrant isn’t an issue.

  3. James

    These guys never owned the domain.I purchased the domain for business I thought I would be part of. These guys are scam artists that take. Once again they never had this domain in their possession.

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