HugeDomains.com, LLC, just filed a lawsuit against ROBERT P. WILLS, MD. PA, a Texas Professional Association d/b/a AUSTIN PAIN ASSOCIATES for a declaratory judgement arising out of the UDRP decision against it on the domain name AustinPain.com.
At the time we called the UDRP decision a bad one.
While is you can not formally “appeal” a UDRP, if a domain name is ordered to be transferred by a panel, the domain owner has the right to file with a Federal Court an action for a declaratory judgement that the domain is rightfully owned, does not infringe a trademark owner and postpone or “stays” the order to transfer the domain.
We know its not cheap and pursue a federal court action so we applaud them for standing not only for their rights but for all generic domain holders.
The case is filed in the federal court in Colorado.
Here are the highlights:
HugeDomains brings this action to stay the transfer of the domain name to Defendant APA, to recover damages against APA for reverse domain name hijacking, and to obtain a declaration of lawful use of the domain name under the Anti-Cybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1114 (2)(D), and the Federal Declaratory Judgment Act, 28 U.S.C. § 2201. As set forth in more detail below, the domain name is neither identical to, confusingly similar to, nor dilutive of any mark belonging to APA.
APA has never used nor traded in the generic term “Austin Pain” and has no rights to that name. HugeDomains lawfully registered the domain name with no knowledge of APA, has legitimate interests in respect of the domain name, and has consistently acted in good faith.
In proceedings under the Uniform Domain-Name Dispute Resolution Policy (“UDRP”) of the Internet Corporation for Assigned Names and Numbers (“ICANN”), APA knowingly provided the UDRP panel with materially false, incomplete, and misleading information in an effort hijack the domain name from HugeDomains. APA knowingly and materially misrepresented that the domain was identical to, confusingly similar to, or dilutive of a mark belonging to APA. APA’s material misrepresentations caused the UDRP panel to order the transfer of the domain name to APA.
Accordingly, HugeDomains asks for a declaration of lawful use of the domain name, injunctive relief prohibiting the transfer of the domain name to APA, and for damages caused by APA’s reverse hijacking.
BACKGROUND
Andrew Reberry (“Reberry”), one of HugeDomains’ founders, registered the domain name in his name on behalf of HugeDomains on January 1, 2013. Prior to that time, the domain name had been owned by multiple different entities and individuals, but never by APA.
Reberry transferred the domain to HugeDomains on or about January 5, 2013 and HugeDomains currently owns the domain name.
HugeDomains owns and has used the domain name in good faith since its registration on January 1, 2013.
HugeDomains has developed a large portfolio of two-word domain names incorporating common words, acronyms, generic dictionary words, phrases, topics, and geo- locations, some of which are offered for sale to the general public through HugeDomains.
As a seller of generic domain names, HugeDomains owns and operates numerous domain names that are similar to the domain name at issue. In particular, HugeDomains owns domain names beginning with the word “Austin” and ending with medical terms. These domain names include, for example, , , , , , , , , , and . HugeDomains also owns and operates numerous domain names that are similar to the Domain Name at issue but focus on various cities throughout the United States.
Among other things, HugeDomains has a legitimate business interest in owning and operating generic domain names that have geo-locational value to many different cities along with industries in the medical field. HugeDomains has registered approximately 235 domain names that begin with the word “Austin” and 354 domain names that end with the word “pain.”
HugeDomains does not engage in outbound domain sales. That is, it does not send outbound emails, call third parties, or make any other outbound communication unless it receives an inquiry first initiated by an inbound party.
HugeDomains had no knowledge of APA at the time was registered.
APA has never owned the domain name.
APA has never used the name “Austin Pain” standing alone in commerce and has no rights to the name.
APA holds no federal trademark registration for the mark AUSTIN PAIN.
APA uses and has always used its name “Austin Pain Associates” or its abbreviation “APA” in connection with its goods and services.
APA’s website, found at www.austinpainmanagement.com, consistently uses the entirety of the company name “Austin Pain Associates” or its abbreviation “APA” throughout. Nowhere on the site is a TM or a ® symbol found to indicate that the shorter and more generic term “Austin Pain” is a trademark or intellectual property of the APA. Every time that the term “Austin Pain” is referenced on the site, it is followed by the word “Associates.”
APA has recorded the following seven assumed names with the Texas Secretary of State: STONEGATE PHYSICAL THERAPY, Restore FX, Austin Pain Associates, APA Clinical Laboratory, APA Clinical Labs, Advanced Rehab, and Advanced Rehabilitation. APA has never recorded “Austin Pain” as an assumed name with the Texas Secretary of State. See Exhibit 3.
APA’s Facebook page also consistently uses its name “Austin Pain Associates” or its abbreviation “APA,” and never uses “Austin Pain” standing alone. APA’s customers also exclusively use the term APA on APA’s Facebook page.
APA has no common law or federal trademark rights to AUSTIN PAIN.
HugeDomains registered and uses the domain name in good faith and its use is a bona fide use.
The two words comprising are common, generic, and geographically and industrially descriptive. As such, no likelihood of confusion exists between HugeDomains and any mark belonging to a third party including, in particular, APA.
The term “Austin Pain” is a generic two-word term which was not coined by APA; rather, it is a common phrase used by numerous third parties.
In particular, a separate and unrelated company in the same city and state as APA, Austin Pain Therapy Associates, Inc., not only uses the term “Austin Pain” as part of its company name, but this third party entity also owns Registered Trademark No. 2290889 for AUSTIN PAIN THERAPY. See Exhibit 5. This company also incorporates the two generic words “Austin” and “Pain” in its domain name . See Exhibit 6.
In addition, a separate and unrelated company in the same city and state, has registered and is using the domain name in connection with its pain management and treatment services offered at six locations in central Texas.
Further, the Austin Pain Society is a not-for-profit organization that is registered in Texas and operates using the generic words “Austin” and “Pain” as part of its organization’s name. The Austin Pain Society functions as a local chapter of the larger Texas Pain Society. Several of APA’s doctors have been members and even a past President of the Austin Pain Society.
Numerous other companies, unrelated to APA, use “Austin” and “Pain” in their websites, including austinpaininstitute.com, austinpaindocs.com, austinpaindoctor.net, austinpainreliefcenter.com, austinpainrelief.com, austinpaindr.com, austinpaincenter.com, and austinpainfree.com.
On January 4, 2013, an unknown individual contacted HugeDomains in Colorado to inquire as to whether the domain name was for sale.
On January 9, 2013, HugeDomains received an e-mail from APA offering to purchase the domain name for $6,000.
HugeDomains’ counteroffer to sell the domain name for $9,000 was rejected by APA. The parties continued to negotiate but were unable to reach an agreement.
On January 6, 2014, APA filed Case No. FA1312001536356 with the National Arbitration Forum (“NAF”) in accordance with the UDRP seeking to force HugeDomains to transfer ownership of to APA.
Reverse Domain Name Hijacking
APA initiated the UDRP proceeding against HugeDomains in a bad faith effort to deprive HugeDomains of the domain name when APA had no right to the name.
APA knowingly provided the UDRP panel with false, incomplete, and misleading information in connection with its effort to gain control over the domain name.
The panel’s decision in favor of APA was based on APA’s knowing and material misrepresentation that the domain name is identical or confusingly similar to a trademark or service mark in which APA has rights.
APA’ conduct was knowing, intentional, and improper and caused HugeDomains to suffer damages that will be established at trial.
RELIEF REQUESTED
Wherefore, HugeDomains.com requests that this Court enter judgment:
A. declaring that HugeDomains’ registration and use of the domain name is not unlawful under the Anticybersquatting Consumer Protection Act;
B. declaring that HugeDomains’ registration and use of the domain name is lawful;
C. declaring that HugeDomains is not required to transfer the registration for the domain name to APA;
D. entering a permanent injunction enjoining the registrar from transferring the domain name to APA;
E. entering a permanent injunction enjoining APA not to accept a transfer of the domain name or claiming ownership thereof;
F. awarding HugeDomains its damages caused by APA’ knowing and material misrepresentation that the domain name is identical or confusingly similar to a trademark or service mark in which APA has rights;
G. awarding HugeDomains its reasonable costs and attorneys’ fees;
H. awarding HugeDomains statutory damages under 15 U.S.C. § 1117; and
I. awarding HugeDomains such other relief as the Court deems just and proper.
REQUEST FOR JURY TRIAL
Plaintiff requests a trial by jury on all issues so triable
The legal fees and man hours will probably cost more than what they can sell it for, so Huge props to the leaders at Huge Domains for standing up against domain hijackers.
Much appreciated.
Good luck, Andrew.
The industry needs to take a stand against frivolous UDRP filings. For any domain a complaintant might want, there are probably hundreds of other domains which also contain that same keyword. But of course they don’t go after the pigeon___ domains but the ones which were registered several years prior.
The U.S. Anti-Cybersquatting Consumer Protection Act (ACPA) is a terrible piece of legislation which ought to be revised or repealed. As I’ve said here before, the fact that someone can be fined $100,000 under ACPA for nothing more than registering a domain name may be the greatest infringement on freedom of speech that exists in the U.S. today. Even if I register ThisIsTheOfficialWebsiteOfXerox.com, what harm has the mere registration of the domain, in and of itself, done the Xerox Corporation? None whatsoever.
In taking this matter before a Federal court which is charged with upholding ACPA, I hope HugeDomains is not making itself liable to a possible judgment of cybersquatting which could result in such a penalty.
Good luck, HugeDomains.
@Berkens,
This post should have referenced your earlier one posted about a week ago, Please do it. I wanted to check certain points made there. Please don’t be sloppy, even tho we appreciate your efforts, and fine blog.
Thank you!
you sound like a 3rd grade teacher trying to discipline someone.
dont be sloppy now, pick up your toys…
Yeah?
What’s the difference between a 2nd grade teacher, a 3rd, and 4th grades teacher, so we can judge your observation?
@ontheinterweb
Teachers seldom say “Please”, twice! You conveniently left those out, of course it changed both the color, and nuance of my comment. Plus, I didn’t see your take on the main point of my comment, reference or no reference, what should Berkens have done?
Here you go
BTW that is what the search box on the right is for you could have searched hugedomains and the story would have come up
http://www.thedomains.com/2014/03/24/bad-decision-hugedomains-com-turns-down-6k-loses-generic-domain-in-udrp/
Thank you, Berkens.
(No, the search box can only help those who are aware of such past posts, try to to reference anything even remotely auxiliary, and/or ancillary, to current issues.).
Good luck Andrew! You are doing a HUGE favor to all generic owners. It would be nice if the arbi”traitors” could be held liable for this nonsense decision. Having them have to pay for these ridiculous rulings would make them think twice about suggesting part of the complaintants trademark isn’t relevant to the generic domain name they are trying to steal. I hope you win HUGE. If/when you do we all win. Thanks.
since the word “Associates” adds nothing more of value to the expression “Austin Pain.”
It is like they were trying to help the complaintant steal the name at whatever cost. Sad people.
Michael, it would be a great service to your readers in writing up stories like this one to mention early on who is representing the domain registrant. There are very few lawyers familiar with this sort of action, and it would be good to know who has taken up the cause here. (likewise when you report on UDRP decisions, it is helpful to know which panelists rendered the decisions, instead of having to go look them up).
The 3 panelists in the austinpain.com UDRP case were:
Debrett G. Lyons (chair)
the Hon. Charles K. McCotter, Jr (ret.) of McCotter Ashton
Houston Putnam Lowry of Brown & Welch
I wish HugeDomains well and hope that they win the case. As times goes on I see the gap between TM laws and UDRP widening and no matter how many Court decisions reverse UDRP decisions WIPO et al just keep pumping out the same old biased opinions and decisions. I am now on my 3rd Court case to reverse UDRP decisions and will continue to litigate even if at end of day I only come out even. Speaking of costs, the Dubai company who I defeated in a UDRP failed to pay any costs awarded by the Court so now I need to go after their assets. It is never ending, what a game it is !
Hey Good Luck, Andrew. It’s good shared this stories with the readers. Thanks.