NewportNews.com is a domain name that has quite the history. A former owner once defended a UDRP successfully but then lost an ACPA case. This led Michael Berkens to call this registrant stupid domainer of the year for 2011.
Michael wrote:
In 2009 Newport News won summary judgment against the domain holder and the court also awarded the trademark holder $80,000 in statutory damages AND it’s reasonable attorney’s fees. ”
So the domain holder took a great Geo, changed the content of the site to compete against the trademark holder and lost the domain, $80K in damages and certain six figures in attorney’s for both itself and the trademark holder.
Looks like a good ruling by the court, but the actions of the domain holder brought on the whole problem and changed a winner into a loser.
Good cautionary tale for all.
Gerald Levine lays out what happened . He used it as an example in a 2019 article at IPLegalCorner.com looking at the differences between UDRP and ACPA.
The reason for different results begins with the different evidentiary requirements. Under the UDRP a trademark complainant prevails only on proof of bad faith registration and bad faith use; bad faith use alone is insufficient (the conjunctive model).
In contrast, the ACPA is satisfied on either/or proof: bad faith registration or bad faith use or trafficking in in bad faith (the disjunctive model), with the result that mark owners can lose in the UDRP and prevail in the ACPA. Two cases illustrating this point are Newport News Holdings Corporation v. Virtual City Vision, Incorporated, d/b/a Van James Bond Tran, 650 F3d 423 (4th Cir. 2011) for <Newport news.com>; and Bulbs 4 E. Side, Inc. v. Ricks, 199 F.Supp.3d 1151 (S.D. Tex., Houston Div. August 10, 2016) for <justbulbs.com>).
In the earlier UDRP Newport News proceeding, the Respondent had successfully argued it had rights or legitimate interests because it was using the domain name in good faith to “disseminate city information in an effort to increase tourism and other visitor traffic to the city”; but years after the UDRP defendant changed its use to compete with Plaintiff.
It would not have been actionable in a new UDRP but became actionable under the ACPA. The “just bulbs” Plaintiff was unsuccessful in two UDRP complaints before it prevailed on summary judgement on the ACPA claim; its trademark infringement motion was denied on a finding of genuine issues of material fact.
Once the clothing company got control of NewportNews.com it redirected to Newport-News.com which then later redirected to spiegel.com/newport-news. According to Wikipedia, Sometime between November 2019 and February 2020, Spiegel’s website was shut down.
The domain name expired and closed at $12,338 on GoDaddy auctions. Of course this is a GEO as well and can have a multitude of uses for the new owner.
FYI the original website Newport-News.com expired in 2019. It closed at $1,502.
