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Lawsuit filed over Celluvation.com after UDRP decision

Lawsuit asks for damages for reverse domain name hijacking.

Picture of gavel with the words "lawsuit"

Domain name investor Stanley Pace has filed a lawsuit (pdf) to halt the transfer of Celluvation.com.

World Intellectual Property Organization panelist Badgley ordered the domain name transferred in a UDRP decision dated September 11. In that decision, Badgley found that Pace registered the domain name in bad faith. Badgley said that Pace gave a “blatant falsehood” to the panel that he searched for trademarks when he registered the domain in 2011 and didn’t find any. There were two active trademarks for the domain at the time, Badgley noted.

In his lawsuit, Pace argues that Badgley’s decision was based on “false testimony” from the Complainant Jos Daniel.

Pace is seeking declaratory relief that he isn’t violating the Anticybersquatting Consumer Protection Act, as well as damages for reverse domain name hijacking.

Derek Newman of Newman Du Wors LLP is representing Pace. Newman Du Wors is based in Seattle, and Daniel submitted to jurisdiction there when filing the UDRP because the domain is registered at Epik, a Seattle-area domain name registrar. Howard Neu represented Pace in the UDRP.

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  1. Mike

    Something concerns me about this UDRP . The complainant name is Jos Daniel. The holder of the TM’s is an LLC company. On what basis does “Jos Daniel” legitimately have the right to assert TM rights ? Surely the Complainant SHOULD have been Celluvation Skin Cares, LLC

    Am I missing something ?

    • Mike

      CORRECTION. I can see now Jos Daniel is the registrant of the 2018 US TM, but not of the ones that are back in 2007 and 2008

      • Mike

        Let me ad further information. I note in UDRP it states ,quote, ” there were in fact two active registered trademarks for CELLUVATION, both owned by Complainant’s company.” END QUOTE

        Hold on there. That is jumping to a massive conclusion. (a) The Complainant may not be the sole director of the earlier Company (b) in any event the trademark rights are owned by the COMPANY, not by Jos Daniel, unless he can show otherwise.

        There just appears to be a lot of assumptions, over evidence that needs hearing in full. It is a Trademark litigation matter, not suitable for a UDRP.

  2. Patrick

    Domains and trademarks, what about TM’s that exist for multiple companies in different businesses, wouldn’t it not be fair for a company to own a domain that may be a trademark for completely different goods and services and would that domain not be registered in bad faith if the registrant does not attempt to directly sell the domain to the TM holder or uses the domain to confuse. I’ve seen trademarks for 10 companies (same name) different goods and services

  3. David Michaels

    Courts don’t review UDRP decisions as an appeal. They decide disputes de novo.

    If the Complaint makes false statements and a transfer is ordered, then the domain owner is entitled to up to $100,000 in damages under the ACPA.

    Stanley Pace’s Federal Court complaint has an error: it leads the reader to think that the ACPA claim is an appeal that reviews the decision of the UDRP panel in line of page 4:

    “The UDRP does not have an internal appeal process, instead relying on courts to review the decisions of panelist arbitrators.”

    Looking at the specimens used in the cancelled CELLUVATION registrations, it looks like Celluvation Skin Cares, LLC didn’t actually use the CELLUVATION trademark in interstate commerce. Jos Daniel signed the applications as the Manager of the LLC.

    The State of Nevada revoked the LLC in 2014 for failing to pay the annual fee and file a statement of officer.

    The Google search trends since 2004 show that there was almost no search interest in the brand since its peak in December 2008.

    Stanley Pace is probably right on this one.

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