A lawsuit was filed against Domain Investor Chad Folkening yesterday in the United States District Court, Northern District of California for cybersquatting and Unfair Competition by Eden Technology Services, Inc.(Eden), on the domain name EdenTech.com, alleging ging that Mr. Folkening registration of EdenTech.com is confusingly similar to Plaintiff’s EdenTech.co.
Personally I have not seen a Federal Lawsuit where the .Co domain owner sued the .Com owner for cybersquatting.
There have been many UDRP cases where the .Com owner has won the rights to a .Co domain but I have never seen that in reverse, a UDRP case either.
The lawsuit was filed by Mike Rodenbaugh of San Francisco.
Here are the highlights:
“Plaintiff Eden launched its business in March 2015, and provides on demand technology services to consumers. Eden’s ‘Tech Wizards’ make on-site service calls wherein services range from installing, repairing, and supporting various consumer
technologies.
Since its launch, Eden has received much attention in the press, including articles published by Tech Crunch, Business Insider and more. Such articles tout Eden’s innovative business plan and the need for such services in today’s technology driven marketplace. A
Tech Crunch article, published on July 14, 2015, discussed Eden’s newly secured seed funding in the amount of $1.3 million dollars.
Eden alleges it has common law trademark rights arising via use in U.S. commerce, and has applied for trademark registration in the United States, including applications on July 27, 2015.
In or about March 2015, Eden attempted to purchase the Eden Tech Domain Name from the prior registrant Mr. James Homer (“Homer”).
On March 16, 2015, Mr. Homer informed Plaintiff’s counsel that he intended to use the Eden Tech Domain Name, so it was
not for sale. Yet, upon follow up, on July 23, 2015, Mr. Homer informed Eden that he was in escrow with another buyer.
As of July 28, 2015, the WHOIS record for the Eden Tech Domain indicates that it was transferred to Defendant.
On August 7, 2015, a representative from Eden contacted Defendant inquiring about the Eden Tech Domain Name. On August 16, 2015, Defendant responded that Defendant had acquired the Eden Tech Domain Name for an ‘anonymous client’.
Defendant is a known cybersquatter who has had at least four federal trademark actions filed against him in the U.S., and has lost at least two cases under ICANN’s Uniform Dispute Resolution Policy (“UDRP”).
Defendant had a bad faith intent to profit when it registered the
accounts, located at edentech.co.
Plaintiff is informed and believes that Defendant knew the Plaintiff’s trademarks were distinctive, and owned by Plaintiff, at the time Defendant registered the edentech.com domain name.
Defendant’s wrongful acts, as described in this Complaint, are unlawful, unfair and fraudulent, and cause damage to Plaintiff and injure its business, in violation of section 17200 et seq. of the California Business and Professions Code.
Plaintiff is asking for the Court to find that Defendant is cybersquatting upon Plaintiff’s trademark and engaging in unfair competition and order the domain name EdenTech.com transferred to the Plaintiff, as well as statutory damages of $100,000 pursuant to the Anti-cybersquatting Consumer Protection Act; an award for reasonable attorney’s fees and expenses, and costs of this action.””
EdenTech.com has been registered since February 11, 1997.
that actually sounds like it could actually be a legit lawsuit. from the title of your article i was ready to start steamin’ again.
Based on what was said here it seems like a very likely and easy win for the plaintiff regardless of their name being .co which I don’t see as being an issue. Why would it make nay difference? The com being first registered in 1997 makes zero difference IMO because of the recent ownership change.
How a new start business try to steal a 18 years old domain name ?
Chad is a. First xlass enterpreneur as well. Of course they forgot to mention that.
A friend of mine who was just released from a 3-year prison life for fraudulent activities just said to me that he will bring a lawsuit against a .com domain owner who has the same word with his .xyz. I told him, “You are a lunatic.”
This domain is not even his domain, but his wife’s.
Disappointing to see collegial, top-of-the-trade domain pros like Mike and Chad reduced to this kind of public ugliness. While reserving judgment on claims set forth in the complaint, out of respect for both parties, when terms like “known cybersquatter”, “fraudulent” and “statutory damages” are publicly attributed to a professional domain investor, it’s a blot on the entire industry.
Regardless of the outcome, the pleading, itself, reinforces misleading public stereotypes and narrows the distinction between domain name professionals and lawless cybersquatters. It’s bad Juju and leaves collateral damage in its wake.
While the voracity of lawsuits such as this are a tactical necessity, it would be helpful if the industry could provide domain professionals a more discreet, collegial advisory panel to independently review these kinds of squabbles BEFORE they become public record and impose collateral damage upon the parties and the industry-at-large. While the parties cannot be bound by the panels’ recommendations, their independent findings might help the parties foretell the likely outcome of a publicly litigated dispute and help facilitate a change of heart and/or a discreet settlement. Good for the clients. Good for the litigants. And good for the domain industry.
Good for the lawyers, too. I’m not suggesting that industry panelists review these cases for free. In fact, opposing parties are more likely to respect the panel recommendations when they pay for it. However, the cost of a collegial panel review should be an affordable “second opinion” investment, with a flat fee structured to incorporate the underpinnings of a community service to the industry.
In and of itself, the availability of non-binding peer case review helps burnish a sense of industry for an industry that doesn’t always make sense.
I don’t understand I thought these guys were catching names on drops, why go into escrow over such a specific name such as Eden Tech, other than for a single reason, I think the brand of the company is nothing exceptional, so why would someone go into escrow to acquire such a brand if it is not something they are setting up under.
Is this a practice that these big guys are trending under?
Just for clarity, I was doing this transaction probono for a client who is well respected in the tech /vc space and wanted to stay anonymous. More to the story will come once legal council and client decide next steps. This was an interesting transaction/story the industry should hear about/follow in which more clarity or information will come out.. Since selling Domain Holdings earlier this year, after doing over $30,000,000 last year in transactions, nothing has changed in terms of my personal and corporate motto, Do the customer right” and we acted on behalf of the customer. Just for reference, check the dates.. They filed trademark after we had the asset in escrow and sold, they were founded this year and if you want to talk common law and trademarkets then that was established in 1997 by the owner that sold the url/company to our client. When you file a trademark, you agree to these terms below and if you lie to the federal gov, they do not like that much. Failure to disclose correct information that anyone in the market has access is lying to the federal government in which is potentially fine by imprisonment. I believe in the rules and regulations and have fault early on for setting up rules and regulation, even went to White house before ICANN existed, and do believe this will settle accordingly. For reference, EdenTech.com was registered and in use since 1997. 18 years ago in which our client acquired these rights and company assets, legally and fairly…
“The undersigned, being hereby warned that willful false statements. and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements,and the like, may jeopardize the validity of the application or any
resulting registration, declares that he/she is properly authorized to
execute this application on behalf of the applicant; he/she believes the
applicant to be the owner of the trademark/service mark sought to be
registered, or, if the application is being filed under 15 U.S.C.
Section 1051(b), he/she believes applicant to be entitled to use such
mark in commerce; to the best of his/her knowledge and belief no other
person, firm, corporation, or association has the right to use the mark
in commerce, either in the identical form thereof or in such near
resemblance thereto as to be likely, when used on or in connection with
the goods/services of such other person, to cause confusion, or to cause
mistake, or to deceive; and that all statements made of his/her own
knowledge are true; and that all statements made on information and
belief are believed to be true.”
Just for the record: edente.ch seems to be available at the moment.
For those playing along at home, the prior registrant appears to be:
Registrant Name: James Homer
Registrant Organization:
Registrant Street: 16204 W. Ironwood St.
Registrant City: Surprise
Registrant State/Province: Arizona
Registrant Postal Code: 85374
Registrant Country: United States
Which would correspond to (and still in good standing in Arizona):
L15654860 EDEN TECHNOLOGIES, LLC
Domestic Address
16204 W IRONWOOD ST
SURPRISE, AZ 85374
Statutory Agent Information
Agent Name: KEYTLAW LLC
Agent Mailing/Physical Address:
3001 E CAMELBACK RD STE 130
PHOENIX, AZ 85012
Agent Status: APPOINTED 11/15/2010
Agent Last Updated: 12/16/2010
Additional Entity Information
Entity Type: DOMESTIC L.L.C. Business Type:
Incorporation Date: 11/20/2009 Corporation Life Period: PERPETUAL
Domicile: ARIZONA County: MARICOPA
Approval Date: 12/8/2009 Original Publish Date: 1/4/2010
Manager/Member Information
Name Title Address Date of Taking Office Last Updated
KIM S HOMER MEMBER
16204 W IRONWOOD ST
SURPRISE, AZ 85374
11/20/2009 12/08/2009
JAMES E HOMER MEMBER
16204 W IRONWOOD ST
SURPRISE, AZ 85374
11/20/2009 12/08/2009
—————
Obvious move is obvious.
Not seeing the obviousness John other than unneccesary posturing/muscling by Rodie
I’ll just assume that some attorneys do the stupid things their clients request of them
Chad what were the talks before this went to court? Musta gotten ugly. That would be some good blog fodder.
Eden Technology Services, Inc. and Chad Folkening have reached agreement to settle this matter. Eden Tech is glad to obtain the edentech.com domain name. Eden Tech regrets that the matter resulted in litigation filed against Mr. Folkening, and is now happy to dismiss the case with prejudice.
Classic. Give us the details Joe. We’ve already dismissed you with prejudice too, don’t worry about that.
I think this case has merit and will love to follow it till it is concluded.
Merit, really? so a company 4 months old tries to claim, or steal, a url that has multiple trademarks and companies operating under that term dating back to 1997 has merit? This is where people come in take a .co, file a trademark and try and steal the .com. That has NO merit and then try to claim they have a common law because they have such a solid well know brand, please…. Rookie mistake because I have seen cases like this go really south for people attempting this court based approach and no one wins, well attorneys do…. rules have been laid down over the years for this very reason and when push comes to shove, lying to the federal government when you file for a trademark and not claiming other companies are using the brand, let alone exact brand in existence is a lie.. THAT HAS NO MERIT, ever.