Jeffrey Wilens D/B/A Lakeshore Law Center filed a federal lawsuit today against Google, the parent company of Word Press Automatic, Inc, and the registrar TLDS L.L.C. which appears to be owned by Web.com for trademark infringement and violation of the ACPA on his common law marks of Jeffrey Wilens and Lakeshore Law Center along with a bunch of registrants referred to as “Does”
The eight page complaint is in my opinion less than impressive.
We will quote from the Complaint below but basically Mr. Wilens who is an attorney and claims he has common law rights in his name since at least 1992 didn’t bother to register his own name, JeffreyWilens.com since 1992.
Actually no one registered the domain name JeffreyWilens.com until December 9th 2013 when it was registered by a “Konstantin Petrov” of Russia.
The domain was registered through TLDS L.L.C. d/b/a SRSPlus which seems to be a owned by Web.com so he sued them
Mr. Wilens sued Word Press because the guy in Russia used Word Press to put the domain name JeffreyWilens.com into a site.
One of the owners of the domain names is using Google’s Blogger.com service and therefore Google was sued
However what is not mentioned anywhere in the lawsuit is why Mr. Wilens didn’t invest $10 to register the .com domain of his own domain for some 25 plus years when it was available to be registered,
I also have no idea of why Mr. Wilens didn’t file a UDRP on the domain(s) which is much cheaper and quicker rather than sue Companies like Google, Web.com and Word Press in federal court none of which registered the domains.
Also I have no idea of why Mr. Wilens doesn’t seem to know that federal law protects registrars from a lawsuit when a third party uses their service to simply register a domain.
I also have a problem with the statement in the Complaint that the domain holders name “is obviously a fake name and address and in no way related to Plaintiff”
Well I have no doubt that Mr. Petrov is not related to Mr. Wilens but have no idea of how he can say its obviously a fake name.
Finally not sure why Mr. Wiliens is not as upset with the registration of LakeShoreLawCenter.com which was just registered in January under privacy at Reg.com which is the Russian registrar Reg.Ru.
That company was not named in the lawsuit.
Mr. Wilens does own some domains, therefore he knows something about domains and how to register them.
Blame for failing to register you’re own domain name, especially if your a professional like an attorney who uses that name in business and to then fails to register the name of you’re own law firm for more than two decades seems to fall squarely on the attorney, not Word Press or the Registrar or Google.
That’s my two cents here are the highlights of the Complaint:
“”Plaintiff is an attorney licensed in the State of California
Plaintiff holds trademarks or service marks on “Jeffrey Wilens” and “Lakeshore Law Center.”
He has had these since at least 1992.
These common law trademarks are pending registration under serial numbers 86193592 and 86193589 respectively.
Plaintiff operates a national law office under these trademarks and maintains websites at lakeshorelaw.org and creditrepairdebt.org as well as at other Internet locations.
There is only one attorney named Jeffrey Wilens in the USA and only one law firm named Lakeshore Law Center in the USA.
Plaintiff is known for a specialized practice in consumer and employment law and it is not unusual for him to receive inquiries from potential clients throughout the United States.
Over the past 20 years, Plaintiff has spent tens of thousands of dollars advertising and promoting his personal and business name.
Defendant TLDS L.L.C. DBA SRSPLUS is the domain name registrar for jeffreywilens.com.
The registrant for that domain name is listed as “Konstantin Petrov, Montazhnikov 24, Sankt-Peterburg, Russia,” which is obviously a fake name and address and in no way related to Plaintiff.
The registrant also lists a phone number of 812-000-0000, which is a fake number.
Doe Defendant No. 1 is a currently unidentified person who has created a number of websites for the purposes of diverting search engine traffic by clients and potential clients of Plaintiff from Plaintiff’s websites to the websites controlled by Doe No. 1. He did this for purposes of commercial gain and with intent to tarnish or disparage Plaintiff’s marks by creating likelihood of confusion.
To that end, Doe No. 1 created an account with AUTOMATTIC, INC. so that he could create WordPress-hosted websites.
Doe No. 1 was allowed by this defendant to use the trademarked names in prominent fashion. Specifically, Doe No. 1 was allowed by AUTOMATTIC, INC. to create websites using the names: lakeshorelawcenter.wordpress.com; attorneyjeffreywilens.wordpress.com; jeffreywilenslawyer.wordpress.com; unitedvictimsofjeffreywilens.wordpress.com; and jeffreywilenslakeshorelaw.wordpress.com.
Similarly, Doe No. 1 created an account with GOOGLE INC. which allowed him to created a Blogger hosted website using the name jeffreywilens.blogspot.com.
Similarly, Doe No. 1 hired SRSPLUS to register the name “jeffreywilens.com” for a website owned by Doe No. 1. SRSPLUS was immediately aware of the fake registrant information provided by Doe No. 1.
Each of the Defendants knew or should have known Doe No. 1 was not Plaintiff and had no legitimate purpose for using Plaintiff’s personal or business name in the domain name of the websites.
Each of the Defendants is aware their actions were and are contributing to the trademark infringements in that Plaintiff provided written notice on or about March 3, 2014 to each of the Defendants and provided specific information describing the trademark infringements and each particular defendant’s role in perpetuating them. Each of the Defendants responded in writing and stated they would not take any actions to stop the trademark infringements which they were assisting absent an order from a court of competent jurisdiction.
Defendants violated 15 U.S.C. § 1125, subdivision (a) (1) by using in commerce the terms or names “Jeffrey Wilens” and/or “Lakeshore Law Center” in a manner that is likely to cause confusion or to deceive as to the affiliation, connection or association of the ownership of the aforementioned websites.
As a result of these trademark infringements, Plaintiff has suffered damages in that potential and actual clients have been misdirected to the offending websites by virtue of the fact they appear prominently in the list of websites generated by “Googling” Jeffrey Wilens or Lakeshore Law Center. If Doe No. 1 had not been allowed to use the names “Jeffrey Wilens” or “Lakeshore Law Center” as the domain names, the search engines COMPLAINT would not have ranked these offending websites so highly.
Pursuant to 15 U.S.C. § 1116 and 15 U.S.C. § 1117, Plaintiff is entitled to recover equitable relief in the form of an injunction and cancellation of the improper domain names, and damages sustained by Plaintiff.
SECOND CAUSE OF ACTION FOR VIOLATION OF THE ANTI– CYBERSQUATTING PROTECTION ACT (ACPA), 15 U.S.C. § 1125(d)
Plaintiff has trademark rights to the domain names;
The domain names consist of the legal name of Plaintiff and of his business;
There is no history of prior use of these domain names by Defendants before October 2013;
Defendants intended to divert consumers from Plaintiff’s legitimate websites to sites controlled by Defendants which were set up to harm the goodwill represented by the marks and to disparage the marks and create confusion;
Doe No. 1 provided false contact information when applying to register the domain names and Defendants knowingly published that false information; Doe No. 1 registered or set up multiple websites with domain names Defendants knew were identical or confusingly similar to the marks of Plaintiff and Defendants permitted him to do this.
Pursuant to 15 U.S.C. § 1116, 15 U.S.C. § 1117 and 15 U.S.C. § 1125 (d) (1) (C), Plaintiff is entitled to recover equitable relief in the form of an injunction, forfeiture or cancellation of the domain names being used by Doe No. 1 and transfer of same to Plaintiff, and damages sustained by Plaintiff.
31. In the alternative to actual damages, Plaintiff may elect to receive statutory damages of $1,000 to $100,000 per domain name from Defendants.
WHEREFORE, Plaintiff prays for judgment on all causes of action against Defendants as follows:
1. For a permanent injunction enjoining Defendants from misusing Plaintiff’s trademarks or service marks and cancellation of domain names and/or transfer of them to Plaintiff;
2. For actual damages on the first and second causes of action in an amount according to
proof;
3. For statutory damages of $100,000 for each domain name that was misused as alleged
above on the second cause of action;
4. For interest on the sum of money awarded as damages”””
The case was filed in the United States District Court for the Northern District of California.
Mike, I love your breakdown of the complaint. Much better than the actual complaint itself.
The “why didn’t he register the domains” question is not as interesting as the “why this action against these defendants”?
The “why is ‘Konstantin Petrov’ a ‘fake name'” part is fascinating. A Google search indicates there are quite a number of Konstantin Petrov’s and dozens of them on LinkedIn.
Given that “Konstantin Petrov” doesn’t sound like a very exceptional name for a Russian registering a domain name through a Russian registrar, it’s hard to understand why it would be necessarily be assumed to be fake. Under the circumstances, it is unlikely that anyone will reach through that tangled international rabbit hole of discovery and pull out a living, breathing Konstantin Petrov; but then again, certain other of the defendants are within easier reach and with considerably more jingle in their pockets than any real Konstantin Petrov would likely have, absent being a close personal friend of the president of his country. Be that as it may, then alleging, perhaps on the basis of knowing a wee little “too much”, that there is no Konstantin Petrov, is not an allegation which any defendant actually appearing in the suit can affirmatively deny.
In other words, it serves other purposes for which this action was launched – “Hey, I might be able to make out a claim against Google!” – more conveniently if the non-existence of Mr. Petrov is taken as fact which, for reasons unknown and others darkly supposed, Mr. Wilens appears to know on the basis of “information and belief” developed in the course of reasonable diligence to ascertain it as a fact.
Of all phrases repeated to the point of losing meaning, the term “information and belief” in relation to ones epistemological basis for an allegation. Too many attorneys fail to notice the word “information” in there. It is not enough to merely believe something, and therefore speak it into existence like Adam’s bellybutton. While we all respect one another’s various faiths – the belief in things unseen – in the expression “information and belief”, we ordinarily expect the belief to proceed FROM the information. I’ve seen attorneys finally and completely break down and start hearing voices telling them what to do, or hiding out in basements and subway tunnels because if they go above ground then “they” will be able to detect their thoughts. I mean, good golly, so many attorneys are aimless balls of narcissism and paranoia, there’s no end to what sort of brain malfunction may cause them to believe any number of things.
But, in other words, there is no “lucky guess” rule of pleading. So taking the allegation at face value, one wonders what information Mr. Wilens may have which informs his belief that “Konstantin Petrov” is a fake name.
Now, perhaps there is some Russian in-joke about “Konstantin Petrov”, which makes them giggle every time they hear it, but that remains to be seen…
I also have a problem with Jeffrey Wilens common sense;
jeffreywilens.me** Available
jeffreywilens.us* Available
jeffreywilens.net Available
jeffreywilens.org Available
lol
sue them all!
Within reading the first couple paragraphs, it was obvious to me he was going for hush money. He knows it is unlikely he could collect a judgment against the guy in Russia. But, the 2 public companies are easy marks.
I’m sure he is hoping G and W calculates it is cheaper to pay him $ xx,000 than $ xxx,000 to the 2 different law firms.
The advice on the blog ranges from lazy to worthless. It is not possible for an individual or small firm lawyer to “register” every possible variation of his name. Do you realize after the federal court ordered jeffreywilens.com to be shut down, the perpetrator (yes it has been confirmed it is a fake name Petrov) created jeffrey-wilens.com. That was also shut down. It would be truly whack a mole to try to register every possible domain name including all variations of punctuation, adding a letter or number, etc.
If I was an unethical and crooked bastard, like the one targeting me, I could easily create several domains using variations of Michael Berkens of theDomains.com. With some skill, I could get them on the first page of any search for Mr. Berkens and print whatever defamatory BS I chose to print. It would be easy.
You should also know UDRP is not going to give me federal court subpoena power needed to try to track down an anonymous stalker. And at $2500 or so per domain name it could get quite expensive. Further UDRP would have done nothing to get rid of numerous WordPress or Google Blogs.
So Mr. Berkens, respectfully, if you have not ever actually handled a case of this nature, you should not be so casual in your analysis.
I suggest you review this news article. http://www.trademarksandbrandsonline.com/news/us-lawyer-transfers-domains-that-defamed-his-practice-4449