Rebecca Tushnet wrote on her blog about a case that included UDRP expenses being counted as injury in a recent TM case between Migliore & Associates, LLC v. Kentuckiana Reporters, LLC.
From the article:
Intro: “The court reporter game is a tough racket. It’s tougher still when a competitor registers an internet domain name that is confusingly similar to your business name then links it to its own website.” Migliore’s website is at miglioreassociates.com. “Searches on popular internet search engines associate her with court reporting and Migliore & Associates,” and she’s spent thousands of dollars each year promoting her business through print ads, internet listing, and marketing materials. Kentuckiana registered andorreporters.com, actionreporters.com, coultereporting.com, coulterreporters.com, kentuckycourtreporting.com, kycourtreporter.com, and lisamigliore.com. Five, including the last, were similar or identical to the business names of Kentuckiana competitors. Kentuckiana redirected hits to those websites to its own site.
Migliore sent a C&D; Kentuckiana discontinued the redirection but refused to transfer the domain name. Migliore filed a UDRP action, during which Kentuckiana maintained that it registered the disputed domain name to use it as a possible “gripe site” or “fact check site” regarding Migliore’s public comments on policy issues related to the court reporter industry. But no content was ever developed for the website. The WIPO arbitrator decided that Kentuckiana acted in bad faith and ordered it to transfer the domain name to Migliore. But Kentuckiana still refused to reimburse Migliore for the costs of bringing the WIPO action, so Migliore sued.
Kentuckiana argued that Migliore lacked standing for want of injury in fact. “[J]ust because an injury is difficult to measure or quantify does not mean that the injury is nonexistent.” Injury can exist without provable money damages. “Beyond legal niceties, it borders on the absurd to assert that purchasing a domain name that includes a variation of a competitor’s personal name, then linking that website to your own, would cause no injury to your competitor…. [A]t the very least, Migliore incurred damage control costs that satisfy the injury requirement for Article III standing.”
Read the full article on Tushnet
