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.
I thought it was a clear case of property piracy via administrative process back when this decision was first decided.
Wisely, the owner sought competent representation to claw back their rightful property.
Domainers must accept the legal aspect of domain speculation and always be prepared to defend your most valuable intangible property in the Courts.
Good luck to the plaintiff and please keep us up to date on this important case.
Thank you very much to Loo Tze Ming for filing suit. How great that Berryhill is in it, after the Dent/Lotto decision (DC for Arizona…there are some domains there). That court’s elucidation of the obvious, that ANY pre-dating registration defeats the claim, shed a sanitizing light, thank you for it.
Looking forward to higher, more impactful, damages this time with TRX.COM, to seal off this greed bleed on court resources. Sorkin’s ludicrous decision outs these arbitration forums for the ‘FIFA non-profits’ they are. If a domain was registered before the Complainant’s mark by the Respondent, OR BY ANYONE, there obviously cannot be targeting. Targeting is the stated justification for the diminishment of due process rights effected by the UDRP and ACPA.
We’re only to shoot fish in a barrel with the UDRP, and those fish are the ‘narrow class’ of VARIZOMWIRELUSS.COM wingnuts. That’s why the panelist pay is fourteen days and a thousand bucks, it is a simple job. If a panelist is puffing up a non-distinctive mark used already by several non-parties, or parsing a TM dispute, or for the love of God, pretending any complainant is entitled to steal a three-letter acronym, then that panelist is cobbling together a payday made of corporate trademark clients, free marketing, and resume padding. Who is unclear on that.
What mush is this panelist spooning out, and to what baby? First sneak thief gets it? What about the other 1,600+ ‘TRX’ mark holders on file at the WIPO? Shouldn’t they have the right to grease up for a cage match? 1,600 men enter, one man leave? Is the last bleedy man standing the ‘most’ distinctive? Hilarious.
The arbitration forum directors won’t give up these cash cow panelists, so let’s please get these flapping vultures out of everybody’s face via some real statutory damages.