Back in late December we wrote about the domain name DirectorsChoice.com which was lost in our opinion in a very bad UDRP decision.

Today the domain holder, Russ Smith, pro se, filed a federal lawsuit in the United States District Court For The District Of New Jersey pursuant to Anti-Cybersquatting Consumer Protection Act (“ACPA”) 15 U.S.C. § 1114 (2)(D) (iv) and(v) to obtain a declaration of lawful use of the domain name and obtain a declaration that the Defendant made materially false statements that caused the administrative panel to order a transfer o f the domain name and collect damages of $2,000 [15 U.S.C. § 1114 also to enter an order finding the use of the domain name is lawful.

The domain holder alleged that the domain name was registered almost 15 years ago, Defendant made materially false statements to cause an order for the domain name to be transferred to them, and there is no basis under Chapter 22 of  Title 15 of the US Code to transfer the domain name to Defendant.

Plaintiff has filed an opposition to Defendant’s trademark application for “DIRECTOR’S CHOICE” at the US Patent and Trademark Office, Trademark Trial and Appeal Board (TTAB) (Case No. 91219676). The primary overlap issue with this Complaint is whether Defendant has maintained a trademark for DIRECTOR’S CHOICE in class 39 since 1997.

Starting in 2002 Defendant contacted Plaintiffs business entities periodically over 12 years and asked to purchase the domain name.

When the domain name was offered for sale Defendant then filed UDRP complaint with the National Arbitration forum (Case No. FA1411001590433) 2014 without providing any prior notice. Defendant’s UDRP complaint claimed, among other things, placing the domain for sale was “bad faith.”

Defendant claimed in their UDRP complaint to have maintained continuous and extensive use of DIRECTOR’S CHOICE as a common law trademark for travel services in class 39 since 1997 and that it has acquired considerable distinctiveness due to longstanding use from considerable business advertising expenditures.

However, Defendant’s use of DIRECTOR’S CHOICE has not been used as an indication of the source of travel services in class 39 continuous!y since 1997:

(a) Director’s Choice, LLP (previously Director’s Choice, Inc) is a trade name used to identify a partnership of different companies offering different goods and services and using different trademarks and there is no use ofthe TMor ® symbol associated with the trade name. The various companies offer a variety of goods and services such as travel services, musical festivals, fund raising programs, candles, product brochures, cookie dough, candy, cheese, sausage, and gadgets.

(b) Defendant uses CHOICE MUSIC EVENTS (using the domain name ) and DIRECTOR’S CHOICE TOUR & TRAVEL (using the domain name ) as the marks identifying the source oftheir music and travel services.
Defendant does not use DIRECTOR’S CHOICE standing alone as a trademark for any ofits goods or services.

15. The domain name is operating as a movie review web site. A trademark application is pending at the US Patent and Trademark Office for “DIRECTOR’S CHOICE” in class 41 for that use (Application No. 86490560). Pursuant to 15 U.S.C. § 1114 (2)(D)(v) Defendant was notified and was asked to provide any objection to the current use ofthe domain name. Defendant has not provided notification of any infringement claims.

In this case:

(a) A common-law trademark was found to exist based on 2 vague references to trade names that were used in conjunction with different goods and services than what was claimed;

(b) The UDRP policy requires showing a domain registrant targeted Defendant’s trademark during registration but that was inferred simply because both entities operated in the United States;

(c) It was found to be “bad faith” to offer the site for sale even though Defendant repeatedly requested the site be placed up for sale over a period of 12 years;

(d) Laches defense was rejected even though a valid defense would be to provide business records from almost 15 years ago which no longer exist due to the delay, and

(e) It was inferred from a single banner ad displayed by the Google search engine that the domain was being used to infringe upon the Defendant’s claimed common-law trademark.

The domain holder asked the Federal Court to issue injunctive reliefto stay the transfer ofthe domain name to Defendant and declare the use of the domain name is lawful.

The domain holder also asked the federal court to issue an order to require NAF and ICANN to add a section to the published UDRP decision indicating the transfer order is reversed due to materially false claims by Defendant.

Finally the domain holder asked the court to award damages to Plaintiff of $2,000 ($1,300 arbitration fee, $300 TTAB filing fee, $400 filing fee for this Complaint) plus any other expenses or damages incurred.

You can read out thoughts about the UDRP decision here and here.

While we think the domain holder has the better legal position we still wish he would have retained the services of counsel.