A large investment firm tries to secure a valuable domain registered long before its corresponding trademark exists.
Earlier this year, Elliot Silver wrote of a cybersquatting lawsuit against empower.com. The judge is currently considering a motion to dismiss and this prompted me to look into the case.
This case sounds the alarm bells for what I consider the plaintiff’s ridiculous claims. Here are the facts:
- The owner of the domain ran a business using empower.com called Empower Geographics. He acquired the estate in 2002 at the latest.
- The applicants, Great-West Life & Annuity Insurance Company and Empower Retirement, LLC, began using the Empower brand in 2014.
- Empower Geographics stopped using the domain in 2016 and began offering it for sale.
Although the owner of the domain acquired the domain 12 years before Empower began using his trademark, the plaintiffs argue that this is a case of cybersquatting. They throw whatever twisted arguments they can think of to explain the dates, including that the estate was renewed in bad faith.
Empower retirement argues that the domain is no longer used in good faith. Complainants are unhappy that the domain is being offered for sale and that the domain owner is using scare tactics in their approach, such as saying they are contacting competitors.
But what this deal really boils down to is the price. The plaintiffs want the domain. They can’t agree on the price. They therefore argue that the owner of the domain refuses to receive reasonable offers. He argues,
To this end, the parties have repeatedly entered into negotiations for the sale and transfer of the Empower domain to the applicants. Notwithstanding the good faith of the applicants
efforts, the defendants refused to accept reasonable offers.
Reasonable offers? And what could they be? In a motion to dismiss, attorneys for Empower Geographics, John Berryhill and David Berten, note:
The plaintiffs ask this Court to establish a “reasonable” or “fair” price that defendants should be required by law to accept, and beyond which defendants should be considered cybersquatters. Great-West Life launched this action as a cynical tactic in an obvious attempt to lower the price of an asset it covets.
This is a similar argument to a dispute over Pocketbook.com. In this case, the plaintiff PocketBook International SA argues:
For example, Pocketbook offered to buy the domain name from the defendants, but the defendants refused to come to an agreement by shamelessly offering to sell the “six-digit” domain name even though the domain name was not used. only for counterfeit and illegal purposes.
Did you refuse to agree? It seems that PocketBook International refused to agree.
Empower Retirement suggests that the Anticybersquatting Consumer Protection Act must have been designed to apply when a domain is registered in good faith and then used in bad faith despite the language of the law. In a opposition to the motion to dismiss, the complainants write that the idea that a domain should be registered after the creation of the complainant’s mark is false:
According to the defendants’ interpretation, an owner of a domain name similar to a distinctive mark could start using the domain to redirect traffic to a competitor or engage in fraudulent “phishing” schemes, but be in the process of using the domain to redirect traffic to a competitor or engage in fraudulent “phishing” schemes. shielded from the responsibility of cybersquatting, an absurd result.
There are many laws that would deal with such a situation, including trademark law. But cybersquatting? Both sides make arguments over how APAC views registration dates.
But let’s be clear: the defendant is not using the domain to phish the plaintiff’s brands or redirect traffic to a competitor. He’s just trying to sell a business asset that he’s been using for over a decade.
The response of the owner of the domain in support of the motion for dismissal is valid read in its entirety. Here is an exerpt :
The ordinary end step of any legitimate business is the sale of its valuable assets, not just the simple abandonment of them. The defendants, given Mr. Machinis’ advanced age and lack of immortality, have the right, like any other business, to decide when to sell the binders, photocopier, paper clips and, yes, the domain name. in which years of hard work and goodwill were invested, and which was recorded at a time when words in the .com dictionary were readily available. If the defendants had operated a taxi business, it would be laughable to claim that they somehow give up legitimate title to their vehicles by parking them, putting up “for sale” signs and using a broker to sell them, instead of continuing to carry passengers. That is all the defendants have effectively done with the domain name at issue here. ACPA was not intended to grant a party, let alone a person with a junior non-exclusive claim to the arbitrary use of a dictionary word, a “springing interest” in a domain name. legitimately registered and detained. The ACPA was also not intended to upset the basic principles of trademark law embodied in decisions made under the Federal Trademark Dilution Act, which was the least specific tool in the anti-cybersquatting kit before the ACPA. “Nothing in trademark law requires that the title of domain names that incorporate trademarks or parts of trademarks be provided to trademark owners. “HQM, Ltd. vs. Hatfield, 71 F. Supp. 2d 500, 508 (D. Md. 1999) (citing Washington Speakers Bur., Inc. v. Leading Auth. Inc., 49 F. Supp. 2d 496, 498 (ED Va. 1999)). Indeed, “cyber” has been added to the concept of “squatting” property as an analogy with people physically occupying property already owned by another, and not simply staying on their own property.
The Applicant contends that this procedure involves a “campaign of several years to sow confusion”. The defendants strongly agree. The complaint details how the plaintiff, knowing full well that the domain name was registered in the defendants’ names, nonetheless launched an impressive multi-year campaign to become one of many companies calling themselves “EMPOWER”. The plaintiff has generated the confusion of which she complains, but throws it on the defendants. The plaintiffs boast of having “spent over $ 50 million annually in the United States alone to promote and advertise the EMPOWER brand” (DI 27-2), since making the reckless decision to ” adopt a trademark that he knew already registered under the name of a domain name. The defendants, which include a wholly owned geographic mapping company and its owner, simply cannot stand up to the plaintiff’s massive $ 50 million a year campaign to create confusion. The defendant is simply not engaged in such activities as decorating nationally famous sports facilities with the word “EMPOWER”. This is admitted in the complaint as being the only work of the plaintiffs for which, like the plaintiffs’ sole choice as to how to mark the branch in 2014, the defendant cannot be plausibly held responsible.
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