Domain owner halts transfer of domain with lawsuit.
The owner of trx.com has filed a lawsuit (pdf) in the wake of an adverse UDRP decision.
A National Arbitration Forum panelist awarded Fitness Anywhere LLC the domain name in a dispute decided last month. The domain owner didn’t respond in that dispute.
Now, Loo Tze Ming has filed a lawsuit to halt the transfer. He is also asking for a finding of reverse domain name hijacking.
According to the suit, he bought the domain as an investment for about $138,000 in April this year at 4.cn. He overlooked the UDRP dispute notice, in part because it was not in his native language.
There are a couple of interesting aspects to this case.
First, the plaintiff argues that Fitness Anywhere LLC doesn’t actually own the TRX marks it relied on in the UDRP, despite certifying that to be the case. Fitness Anywhere LLC had actually assigned the trademarks to JFXD TRX ACQ LLC before the dispute. It looks like Fitness Anywhere LLC filed for bankruptcy in June, transferred its US trademarks in August (and was recorded by the USPTO in September), and filed the UDRP in October.
Second, TRX.com was originally registered in 1999 and used for various legitimate purposes since then. In a UDRP, the panel looks at the date that the domain owner acquired the domain. Under the Anticybersquatting Consumer Protection Act (ACPA), courts under the Ninth Circuit (where this case was filed) have ruled that the original registration date is what matters.
The plaintiff is asking the court to declare that he is not infringing on Fitness Anywhere’s rights and to award statutory damages of up to $100,000 in addition to attorneys’ fees.
Schmeiser, Olsen & Watts LLP filed on behalf of the plaintiff, with John Berryhill also participating.