Marchex Sales Inc, filed a Federal Lawsuit in the Eastern District of Virginia today over the domain names, banco24horas.com and banco24horas.net which were awarded in a UDRP to Tecnologia Bancaria S.A. of Brazil.

The lawsuit is for Reverse Domain Hijacking and for Declaratory Relief Under the Lanham Act 15 USC 1114(2)(d)(iv)-(v) & For Tortious Interference with a Contract.

In addition Marchex is asking the court to block the transfer of the domains, for its attorney’s fees and costs and for statutory damages up to $100K per domain.

Here are the highlights:

This case is brought pursuant to 15 U.S.C. 1114(2)(D)(iv)-(v) and for declaratory relief pursuant to 28 U.S.C. 2201-2202 to establish that Plaintiffs registration and use of the internet domain names and (the “Domain Names”) is not unlawful under the Anti-cybersquatting Consumer Protection Act (15U.S.C. $ 1125(d)(“ACPA”) or otherwise under the Lanham Act (15 U.S.C. $ 1051 et. seq.), and to prevent the transfer of the Domain Name to Defendant, which were ordered in an administrative panel decision notified on September 26, 2014 under the Uniform Domain Name Dispute Policy (“UDRP”) in a proceeding captioned: Tecnologia Bancaria S.A. v. Marchex Sales Inc., WIPO Case No. D2014-0834.

The phrase “banco 24 horas” means “24 hour bank” in Spanish, the second most widely-spoken language in the United States.

The Domain Names have been registered and used by Plaintiff for more than seven years prior to this action to provide websites advertising banks and banking services.

Notwithstanding Plaintiffs senior use of the Domain Names in the United States, on 21 November 2011, Defendant filed US Trademark Registration Application No. 85/478047 for a figurative presentation of 11BANC024HORAS” for 11ATM banking services11 with the United States Patent and Trademark Office (USPTO). The Complainant’s application was refused on 8 March 2012; the Defendant responded on 6 September 2012; the application was then finally refused on 7 October 2012, and abandoned 6 May 2013.

In refusing the Defendant’s application for trademark registration, the USPTO Examining Attorney stated:

“The English equivalent of 24 HORAS term is “24 hours,” which is commonly used in the banking industry to indicate that a services is offered 24 hours per day. Further, the English equivalent of BANCO is the term BANK, which is commonly used to indicate that services are related to banking services.

In this case, both the individual components and the composite result are descriptive of applicant’s goods and/or services and do not create a unique, incongruous or nondescriptive meaning in relation to the goods and/or services. Specifically, BANK 24 HOURS is not incongruous and immediately conveys knowledge that the establishment offers bank services available 24 hours per day.

Because BANC024HORAS merely describes a feature of applicant’s services, applicant’s mark is refused registration under Section 2(e)(l) of the Trademark Act.”

The USPTO’s final refusal of Defendant’s trademark registration application is consistent with an earlier refusal of the USPTO of US Application No. 73/42,3471 for “Mini-Banco 24 Horas for “Automatic Teller Machine Banking Services” filed by Banco de Ponce of Puerto Rico, which was likewise finally refused and abandoned.

The Defendant did not appeal final refusal of its trademark registration application, and abandoned its application for trademark registration.

Notwithstanding the USPTO’s denial of Defendant’s claim under the Lanham Act, the Defendant proceeded, on or about May 20, 2014, to file a complaint under the UDRP with the World Intellectual Property Organization.

At the time the Defendant certified the UDRP complaint to be “complete and accurate” the Defendant knew its claim of rights under the Lanham Act – the applicable law of the Mutual Jurisdiction – had been finally refused by the USPTO. The Defendant did not disclose refusal of its claim under the Lanham Act in its certified “complete and accurate” UDRP complaint.

On September 26, 2014, the World Intellectual Property Organization notified the parties and Network Solutions LLC of a decision issued by a three-member panel; consisting of a barrister admitted in Australian and Hong Kong, a Swiss trademark attorney, and a US trademark attorney. By a two to one majority, the panel ordered transfer of the Domain Names from Plaintiff to the Defendant.

The only US intellectual property attorney appointed to the WIPO panel dissented from the panel decision, stating:

“‘[T]he complainant… misled the panel’ by not bothering to disclose its unsuccessful attempt at USPTO registration. Though sloughed off by the Panel majority, this action by a national trademark registry is surely relevant to the circumstances of any basis for Respondent’s actual knowledge when registering the disputed domain names (or belief as to a right to register). Even more is it pertinent to Complainant’s argument, rejected by the USPTO and contrary to common sense, that its mark is not descriptive.

Complainant has flouted two express provisions of the Rules.

[T]his Complaint is frivolous and a complainant, particularly a represented complainant, should have known it.

Complainant has advanced an argument that depends upon distinctiveness of its marks, something the USPTO has twice found not to be the case. All Complainant has alleged is ownership of trademarks and an active business in Brazil. Nothing in the Complaint states or suggests any logical reason why Respondent should have any knowledge of a Brazilian bank or its trademarks. A finding of abuse of this proceeding and an attempt at Reverse Domain Name Hijacking is richly deserved.”

Under the UDRP, Network Solutions LLC will transfer the Domain Names to the Defendant unless legal action is commenced by in a “court of competent jurisdiction for independent resolution” which counsel for Network Solutions LLC has communicated to Plaintiff to be this Court.

On information and belief, at the time the Domain Names were registered by the Plaintiff, the Defendant’s alleged mark was neither distinctive nor famous under the Lanham Act, and in fact the Defendant’s claim under the Lanham Act was refused and abandoned long after Plaintiff had registered and been using the Domain Names.

On information and belief, the Defendant possessed no common law trade or service mark right at the time the Domain Names were registered by the Plaintiff, and the Defendant still possesses no such rights in what has been determined by the USPTO to be a merely descriptive term in connection with banking services.

The Plaintiff does not provide ATM banking network services.

FIRST CAUSE OF ACTION- REVERSE DOMAIN HI-JACKING UNDER 15 U.S.C. 1114(2)(D)(IV)-(V)

Plaintiffs Domain Names have been locked beyond Plaintiffs full enjoyment of the benefits of registration thereof in consequence of false statements made by Defendant under a dispute policy (the UDRP) followed by the domain registrar Network Solutions LLC. The Domain Names have been ordered transferred, and would be transferred to Defendant but for this Action.

Plaintiff has incurred costs in seeking to prevent transfer of the Domain Names as a consequence of Defendant’s false statements.

Plaintiffs registration or use of the Domain Names do not violate any cognizable right of the Defendant under the Lanham Act.

Plaintiff is being harmed through the loss of it’s domains, loss ofthe income generated and loss of the associated advertising opportunities.

SECOND CAUSE OF ACTION DECLARATORY RELIEF- 28 U.S.C. $2201 NON VIOLATION OF LANHAM ACT

Plaintiffs registration or use of the Domain Names does not violate Defendant’s rights under the Lanham Act. In registering the Domain Name, Plaintiff did not have “bad faith intent,” as provided in 15 U.S.C. 1125(d)(l)(A)(i), to profit from Defendant’s alleged trademark. At the time Plaintiff registered the Domain Names, the Defendant’s alleged mark was neither “distinctive” nor “famous” as provided under 15 U.S.C. 1125(d)(1)(A)(ii). Marchex had reasonable grounds to believe that its registration and/or use of the Domain Names was a fair use or otherwise lawful, as provided in 15 U.S.C. 1125(d)(l)(B)(ii) in accordance with the directly descriptive meaning of”banco 24 horas”.

Defendant does not employ “BANCO 24 HORAS” as a trade or service mark under the Lanham Act.

Defendant’s claimed marks are not famous under the Federal Anti-Dilution Act, 15 USC 1125.

Plaintiffs registration and use of the Domain Names does not, and is not likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or association of Plaintiff with Defendant, or as to the origin, sponsorship, or approval of Plaintiffls goods, services, or commercial activities by Defendant.

Plaintiffs registration and use of the Domain Name do not misrepresent the nature, characteristics, qualities, or geographic origin of Plaintiffs or Defendant’s goods, services, or commercial activities.

THIRD CAUSE OF ACTION -TORTIOUS INTERFERENCE

Knowing its allegations were not “complete and accurate”, Defendant certified otherwise in its UDRP complaint for the purpose of depriving the Plaintiff of its rights under the domain registration contract.

Defendant’s misrepresentations in the UDRP Complaint were made for the purpose of inducing a mis-application of the dispute policy of Plaintiffs domain registration contract, to cause breach thereof in that the UDRP panel was misled, and the UDRP was mis-interpreted and mis-applied in the course of the UDRP Proceeding.

WHEREFORE, plaintiff respectfully requests judgment against Defendant as follows:

A. Declaration by the Court, pursuant to 28 U.S.C. §2201, that plaintiffs registration, ownership and use of the Domain Names and is lawful and proper and does not infringe on any right the Defendant may claim in the United States;

B. A Judgment that Defendant has attempted unlawfully to interfere with Plaintiffs rights and expectations under its domain name registration contract and has induced a breach thereof by making false statements resulting in mis-application of the dispute policy embodied therein;

C. Cost and expenses, including costs under 15 U.S.C. 1114(2)(D)(iv)-(v) and reasonable attorney’s fees;

As this is an action “involving a violation of 15 USC 1125(d)(l)” by way of determining that no such violation in fact has occurred, “an award of statutory damages in the amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just” as provided under 15 USC 1117(d); and