Trademark Lawsuit about domain name

[Upperlimit]

What is the name of your state (only U.S. law)? California

Simple question but first a little background.

Had a few domains before company applied for trademark. Company name wasnt distinctive or well known and did not have common law rights. After company granted trademark i was sued for mainly a gripe site and a few other domains i had before their trademark. Actually the company changed its name from a previous name and claimed infringement immediately.

In the lawsuit they claimed infringement and also that i hand over the domain names. After a few months i agreed to just hand them over but they still continued with the lawsuit while still asking for the domains to be transferred to them. I have all emails from the attorneys that confirmed when the domains were transferred but a year later they are still asking for a default judgement in their favor.

Can they continue filing court motions for something they already own and control?

As i said i have proof and the Registrar has a record of the transfer.


Thanks

 

[FlyingRon]

Certainly they can. Is control of the domains the only remedy they are asking for? If so it would seem rather pointless.

You don't ask for a default judgement in a filing. A default judgement is what you get if the other party doesn't respond. They can ask for a SUMMARY judgement which essentially says that nothing you can say could possibly be a defense and they want to short circuit the process.
If you've got a lawsuit pending, you'd probably need to find a lawyer.

 

[quincy]

What is the name of your state (only U.S. law)? California

... Had a few domains before company applied for trademark. Company name wasnt distinctive or well known and did not have common law rights. After company granted trademark i was sued for mainly a gripe site and a few other domains i had before their trademark. Actually the company changed its name from a previous name and claimed infringement immediately. ...

What you wrote puzzles me. FlyingRon addressed a couple of the confusing parts in your post.

In addition, you say the company did not have "common law rights" to their name? The rights to a trademark are gained by the use of the trademark in commerce, so the company would have rights in the name if they were using it. The company may have registered their trademark after using it, but the registration is not necessary for the rights. So I am unclear what you mean here.

You also say you had a "gripe site." If you had a gripe site "before their trademark," what were you griping about if not the company whose name you were using?

I agree with FlyingRon that if you are being sued for trademark infringement, you should have an attorney.

 

[Upperlimit]

They are suing for trademark infringement but they wont win that. They are also stating they want to sue under the Anti-Cybersquating act since i owned a few domains with their name in it.

What i wrote about them on my gripe site was what i received from their employees who had gripes of their own. I am not worried about the gripe site being taken away, only the cybersquatting part. They seemed to word the lawsuit that paints me as a criminal especially after they offered me money to take it down then after i wouldn't give in they filed suit. They did not even go the UDRP route because they knew they would lose.

With that said, I gave them the domain but after giving them the domain to squash everything, they are still suing me for control of the domains which they have owned for a year now.

 

[quincy]

They are suing for trademark infringement but they wont win that. They are also stating they want to sue under the Anti-Cybersquating act since i owned a few domains with their name in it.

What i wrote about them on my gripe site was what i received from their employees who had gripes of their own. I am not worried about the gripe site being taken away, only the cybersquatting part. They seemed to word the lawsuit that paints me as a criminal especially after they offered me money to take it down then after i wouldn't give in they filed suit. They did not even go the UDRP route because they knew they would lose.

With that said, I gave them the domain but after giving them the domain to squash everything, they are still suing me for control of the domains which they have owned for a year now.

I would guess that the suit is more likely focused on the gripe site and your use of the company's trademarked name in the domain names you have been using, rather than on the domain names you may have been sitting on and not used - if you have already turned over to the company those domain names without demanding pay in exchange.

You are not a cybersquatter unless you registered the domain names with the sole purpose of selling them to the company with the same name. This would be considered "bad faith" registration and federal law allows for names registered in bad faith to be taken away from the registrant.

If you used the domain names as a way to confuse consumers into heading to your gripe site or away from the company site, and consumers thought or were likely to think there was a sponsorship or endorsement or some other legitimate connection between your site and the company, then that can be seen as trademark infringement.

And, a trademark-based suit can arise if your use of the trademarked name diluted or tarnished the reputation of the trademark in some way.

What is mostly clear from your posts is that you need an attorney, because a lot of what you are saying still does not make a lot of sense. A personal review of the complaint, and a review of what exactly the complaint is based on, is necessary to determine what your best course of action is at this point.

 

[FlyingRon]

There's no recovery under anti-cybersquatting other than getting control of the domains. It appears the domains are only part of the issue. You're free to bring up that you've already acquiesced to those demands in answering the suit, but that's not going to mean they won't try to further recover against you for the infringement.

 

[quincy]

There's no recovery under anti-cybersquatting other than getting control of the domains. It appears the domains are only part of the issue. You're free to bring up that you've already acquiesced to those demands in answering the suit, but that's not going to mean they won't try to further recover against you for the infringement.

I think the only thing clear about Upperlimit's posts so far are they are not clear at all.

The fact that Upperlimit says the company is asking for a "default judgment in their favor" is a good indication that attorney assistance is required (and probably well past-due).