Security company that failed with a cybersquatting claim is now going after the domain owner for trademark infringement.
Cybersecurity company GoSecure has filed a lawsuit (pdf) against the owner of GoSecure.com after it unsuccessfully tried to reverse domain name hijack the domain.
GoSecure Inc. filed a UDRP against the domain name in July. In August, a three-person National Arbitration Forum panel found that the case was baseless because Billa Bhandari registered the domain 16 years before GoSecure Inc. had any rights to the name. That would explain why GoSecure built its business on GoSecure.net instead of .com. The panel also found that this was a case of reverse domain name hijacking.
Now, GoSecure has filed a federal lawsuit against Bhandari. But it’s not asking for a finding of cybersquatting, which would likely be dead on arrival given the domain registration date. Instead, it’s arguing that Bhandari is violating its trademark by sending emails using the gosecure.com domain, operating a blog at gosecure.wordpress.com, and using the domain for additional purposes. These were admissions Bhandari made in the UDRP response to show rights or legitimate interests in the domain.
This may all be true, but Wayback Machine archives of GoSecure dating to 2010, well before GoSecure Inc. existed, show that Bhandari used GoSecure as a trademark for an online privacy and security service.
I’m not a trademark lawyer, but it would seem that Bhandari was using GoSecure as a trademark well before the plaintiff did. I’m not sure if it matters that he apparently ceased using it for a while, at least through the public website, and what the repercussions will be for this trademark lawsuit.
GoSecure is not asking for the domain name to be transferred, but it’s possible that its strategy is to put pressure on Bhandari to settle by transferring the domain.
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C., which represented GoSecure in the Reverse Domain Name Hijacking case, is also representing the firm in the lawsuit.