The domain holder who lost a UDRP on the domain name RentMyPartyBus.com has filed a lawsuit in federal court in Arizona.
Plaintiff Aleksey Silenko is the Director of Business for Safeway Transit LLC, a Minnesota company who is the named registrant for the domain name rentmypartybus.com.
It’s a pretty interesting case, since the “trademark holder” was first incorporated on May 1, 2014 but in its trademark application to the USPTO it alleged first use in 2002.
Although the domain holder first filed a federal lawsuit where it lived the domain name registrar Godaddy allegedly refused to stop the transfer of the domain unless the suit was filed in its jurisdiction of Arizona, which is not in accordance with UDRP rules, but this lawsuit was filed in Arizona
Here are the highlights:
The Plaintiff Safeway Transit began using the mark “Rent My Party Bus” in October 2008 by displaying its website at rentmypartybus.com. It has continuously used the mark on Facebook since 2008 and on Twitter since 2009. It used the mark on print advertising, including business cards, as early as 2009.
Defendant Party Bus MN LLC was formed on May 1, 2014.
As part of the application to register “Rent My Party Bus,” Defendant Party Bus MN LLC submitted a specimen to demonstrate its use of the mark in commerce.
The specimen was a screenshot of Plaintiff’s domain holders Safeway Transit’s website.
Plaintiff Silenko’s company Safeway Transit LLC initiated a lawsuit for trademark infringement against Defendant in Minnesota Federal District Court, file number 15-3701 (JRT/HB) on September 21, 2015, with the expectation that the lawsuit would suspend the ICANN arbitration.
Defendant Party Bus MN, LLC, registered “Rent My Party Bus” as a service mark on the principal register of the US Patent and Trademark Office. In the application, it claimed to have exclusively used the mark at least as early as December 31, 2002, stating “The mark has become distinctive of the goods/services through the applicant’s substantially exclusive and continuous use in commerce.”
As part of the application to register “Rent My Party Bus,” Defendant Party Bus MN LLC submitted a specimen to demonstrate its use of the mark in commerce. The specimen was a screenshot of Safeway Transit’s website.
Defendant Party Bus MN LLC’s statements regarding his use of the mark “Rent My Party Bus” were false and made in bad faith with the intent to deceive the US Patent and Trademark Office.
On August 28, 2015 Defendant Party Bus MN LLC filed a complaint with Internet Corporation for Assigned Names and Numbers (ICANN), claiming ownership rights to Plaintiff’s domain name rentmypartybus.com.
On October 7, 2015, the Arbitrator reviewing the ICANN complaint regarding the domain rentmypartybus.com issued a default order to transfer the domain name from Silenko to Party Bus MN, LLC. Absent court intervention, including the filing of this Complaint, the domain will be transferred on October 21, 2015.
On October 15, Plaintiff Silenko amended the Minnesota complaint, becoming a named plaintiff and asserting violation of 15 U.S.C. § 1114(2)(D)(v) as a result of the Arbitrator’s October 7 decision.
Subsequently, GoDaddy, the domain registrar, has stated it will still implement the decision transferring Plaintiff’s domain to Defendant Party Bus MN LLC unless a lawsuit is filed in Arizona.
Defendant, through counsel, refused to stipulate to a stay of the Arbitrator’s decision pending the Minnesota action, necessitating this action.
Based on the allegations above, Plaintiff respectfully requests that the Court determines that Plaintiff Silenko to be the rightful owner of the domain name rentmypartybus.com.
As a trademark holder and as a domain investor and developer, I hope Mr. Silenko emerges with a solid victory in this case, with few costly proceedings going forward.
Wasn’t Debrett G. Lyons the chairman in the austinpain.com UDRP case who ordered the transfer of the domain name austinpain.com?
Like HugeDomains (which lost its domain name in a UDRP judged by panel chairman Debrett G. Lyons), now the registrant of the domain name RentMyPartyBus.com, Aleksey Silenko (who has lost his domain name in a UDRP also judged by Debrett G. Lyons) is having to file a lawsuit in attempt to recover his domain name.
In the austinpain.com case, HugeDomains won and got $25k damages
http://www.domainnamebrokers.co.uk/company-pays-25k-to-resolve-lawsuit-stemming-from-udrp/
It should therefore be interesting to see the final outcome of this RentMyPartyBus.com dispute.
However, there must be something wrong with the UDRP (not necessarily the UDRP itself, but with some panelists’ decisions) that some domain name owners need to spend time and money via the court system to reverse the decisions by some UDRP panelists.
And as a footnote: wasn’t Debrett G. Lyons the sole panelist in the UDRP case for rockgaming.com which should have found Reverse Domain Name Hijacking, yet didn’t even discuss it.
The domain registrant’s attorney is in store for a second rude awakening.
First, the headline is backwards. The Respondent appears to have filed the lawsuit, in Minnesota, before the UDRP decision was issued, and apparently they submitted notice of that filing in the expectation that it would either forestall the UDRP decision, or be taken as a substantive response. On that first point, whether a panel decides to terminate a proceeding based on pending litigation is entirely discretionary with the panel. A respondent relies on the exercise of that discretion at their peril.
Second, here is where the Respondent will get screwed a second time. Even though both of these parties are in Minnesota, and a lawsuit is pending in Minnesota, that may not prevent the domain name from being transferred, pursuant to the UDRP. When a UDRP is filed, the complainant may select either the ‘location of the registrant’ or the ‘location of the registrar’ as the ‘mutual jurisdiction’ in which suit has to be filed in order to stop transfer of the domain name. While this was intended to provide at least one place where there is mutual jurisdiction over the parties, ICANN compliance interprets it as the ONLY jurisdiction that will be recognized for the purpose of preventing transfer.
So, if the complainant ticked the box for ‘location of the registrar’ which, in this case is Arizona, then absent a specific order from the court in Minnesota, that domain name is going bye-bye.
John
The domain holder who owned the UDRP and lost it was the one who filed the lawsuit so the headline is not backwards
This case I wrote about today was filed in Arizona , UNITED STATES DISTRICT COURT, DISTRICT OF ARIZONA
They did state in their complaint they filed a complaint in the federal court in Minn but Godaddy would not recognize that court’s action and required the domain holder to file this case in AZ
Debrett G. Lyons was also the sole panelist in the southpaw.com UDRP decision ordering the domain name to be transferred to the complainant :
Despite the domain being 19 years old and owned by the current registrant for 12 years, the one member panel of Debrett G. Lyons explicitly considered and rejected the concept of Laches finding that it was the “Respondent’s conduct which is relevant, not the years the domain name has been in existence. ”
To rely on a sole panelist is foolish. The WIPO is not infallible, and mistakes are made every single day.They are still trying to figure out how to run their own operations and amend the UDRP – it’s clear that some panelists think that the rules they test in the mock cases are the actual letter of policy. If your property has worth to you, pay for the panel of three always and request RDNH.