Re/Max Files Cybersquatting Lawsuit Against Las Vegas Real Estate Agent

Steve Green of the Las Vegas Sun reported today (link here) on a cybersquatting and trademark infringement lawsuit filed by RE/MAX International, Inc. (“Re/Max”), against Cristine Rosa Lefkowitz and her corporation, C. Rosa, Inc. (“Defendants”). See RE/MAX International, Inc. v. C. Rosa, Inc. et al, Case No. 09-cv-01168 (D. Nev. June 29, 2009). A copy of the complaint can be downloaded here.

Re/Max, the owner of numerous trademark registrations the RE/MAX mark, offers real estate brokerage services through its numerous franchise offices located throughout the United States and in 70 countries worldwide. Re/Max has promoted its services online at http://www.remax.com/ since 1995.

According to the complaint, Re/Max became aware of the domain name http://www.remaxbrazil.com/ sometime in April 2007. The registrant was GoDaddy’s privacy service, Domains By Proxy. After threatening Domains By Proxy with liability if it didn’t reveal the name, Re/Max was contacted by Lefkowitz, a local Las Vegas real estate agent specializing in high-end Las Vegas real estate although she has not worked under or been affiliated with Re/Max (pictured below -- some locals might recognize her face as one of those agents advertising at the bus stops around town). Lefkowitz acknowledged owning the domain name as well as http://www.remaxriodejaneiro.com/. She claimed to have spoken with a Re/Max representative in Brazil about a master franchise for the country.

Cristine Rosa Lefkowitz

In May 2007, Re/Max’s counsel, after confirming that no one in Re/Max’s international department spoke with Lefkowitz, sent a letter to Lefkowitz’s counsel requesting that the domain names bet transferred to Re/Max. Re/Max also became aware of at least 10 other “remax” related domain names owned, through Domains By Proxy, by Lefkowitz.

At first, Lefkowitz’s counsel indicated that Lefkowitz would transfer the domain names to Re/Max. However, the same counsel later indicated he no longer represented Lefkowitz. When her new counsel contacted Re/Max, Lefkowitz apparently was no longer interested in transferring the domain names. However, this counsel did indicate that she would sell them to Re/Max for $15,000. When Re/Max reiterated its cybersquatting position, Lefkowitz’s counsel, in rejecting Re/Max’s offer to reimburse Lefkowitz for the registration costs of the domain names, stated that Lefkowitz would accept a “nuisance value settlement of $6,000.”

According to the complaint, since April 207, Defendants have purportedly been registering a litany of “remax” related domain names with the names of countries worldwide including remaxfrance.com, remaxsouthkorea.com, remaxbrunei.com, remaxmontecarlo.com, remaxperu.com, and remaxsrilanka.com.

Re/Max’s causes of action are for cybersquatting, registered trademark infringement, unfair competition, Nevada state trademark infringement, common law trademark infringement, and deceptive trade practices under Nevada law (NRS §598.0915).

Re/Max seeks an injunction against the Defendants to stop them from registering any more “remax” domain names, an court order transferring any and all “remax” domain names owned by Defendants to Re/Max, as well as cybersquatting statutory damages under 1117(d) (not less than $1,000 and not more than $100,000 per domain name as the court considers just).

Of course, the above reflects Re/Max’s side of the story. Steve Green’s article provides the “other side of the story” (as reporters are so often much better at providing than attorneys). According to Lefkowitz, who was surprised by the lawsuit and denied infringing on the RE/MAX trademark [Comment: but possibly not understanding cybersquatting law], said the names were registered years ago but “never activated” (which in her mind probably means she never put up anything – possibly not realizing that GoDaddy gladly puts up a “landing page” for its customers – of course, whether or not she shared in any click-through revenue is another issue). Lefkowitz stated that all of the domain names expired except remaxbrazil.com, which will expire in a few months.

Note: A quick WHOIS check of remaxperu.com and remaxsouthkorea.com reveals that they are set to expire June 9, 2010, and still in the name of C. Rosa Inc.

Nevada District Court Clarifies Nevada Limitations Period for Laches Presumption

A Nevada District Court has clarified that, for purposes of determining whether the presumption of laches applies in a trademark infringement lawsuit filed in Nevada, the applicable statute of limitations period is four years. See Aristocrat Technologies, Inc. et al v. High Impact Design & Entertainment, et al, Case No. 07-cv-01033 (D. Nev. June 23, 2009).

Aristocrat Technologies, Inc. (“ATI”) produces and sells gaming machines under the word and design trademarks ARISTOCRAT (here and here), which ATI has registered both in the U.S. and internationally. High Impact Design & Entertainment (“HIDE Nevada”) had an agreement with ATI to purchase ATI’s gaming machines – an agreement that clearly indicated that ATI retained all rights, title and interest in its trademarks, and HIDE Nevada had no such rights. In June 2003, HIDE Nevada (without ATI's knowledge) applied to register the ARISTOCRAT design mark in Venezuela. ATI discovered HIDE Nevada’s Venezuelan application in December 2003 and demanded that HIDE Nevada withdraw the application; however, HIDE Nevada convinced ATI to wait until the mark had registered and then assign it to ATI later in order to avoid spending more time and money in registering the mark. ATI took no action at the time, and waited until it registered to HIDE Nevada’s Venezuelan affiliate company. But when the mark registered, HIDE Nevada refused to assign the mark over to ATI.

ATI initially sued HIDE Venezuela in August 2007. In August 2008, ATI filed an amended complaint adding HIDE Nevada and some individual defendants to the action. The defendants’ initial motion to dismiss for lack of subject matter jurisdiction was dismissed. Shortly thereafter, three of the Defendants (the “Moving Defendants”) filed Motions to Dismiss Case not Commenced within Three Years

The Moving Defendants argued that ATI's Lanham Act trademark infringement claims were not timely commenced and therefore the doctrine of laches should apply to bar the complaint based on the nearly four year delay from the time ATI learned of HIDE Nevada’s application for trademark registration in Venezuela and the date that ATI filed suit.

The court described the significance of the statute of limitations with respect to the defense of laches as follows:

While laches and the statute of limitations are distinct defenses, if the plaintiff filed a Lanham Act claim within the analogous limitations period under state law, courts strongly presume that laches is inapplicable. Reno Air Racing Ass'n, Inc. v. McCord, 452 F.3d 1126, 1138-39 (9th Cir. 2006). If the plaintiff filed suit outside the analogous period, courts have often presumed that laches is applicable. Id. at 1139. Because the Lanham Act contains no explicit statute of limitation, courts "borrow" the analogous state time period. Id. In determining the presumption for laches, the limitations period runs from the time the plaintiff knew or should have known about his cause of action. Id.

In this case, the Moving Defendants’ position was that the analogous statute of limitations under Nevada law is three years, and because ATI waited more than four years to file suit, ATI's suit should be barred as untimely. The Moving Defendants relied upon the Reno Air case which cited to NRS §11.190(3), which provides for a three-year statute of limitations for actions involving fraud, as the applicable statute of limitations.

However, the court noted that the issue of the applicable statute of limitations was not really at issue in the Reno Air case:

The [Reno Air] Defendant asserted that the doctrine of laches should apply to bar the Plaintiff's claim, and the court specifically noted that the parties in that case had agreed that the three-year limitation period in NRS §11.190(3) should apply to determine the presumption for laches. Id. at 1139. Notably, as Plaintiffs in this case point out, the court in Reno Air did not specifically hold that the applicable statute of limitations for a Lanham Act claim is three years under NRS §11.190(3). Id. Rather, the Reno Air court accepted the parties' understanding without discussion, and undertook its analysis of the laches issue based on the fact that the parties agreed that the three-year period should apply. Id.

(bold italics emphasis added).

The court then went on to address which of Nevada’s statute of limitations should apply – agreeing with ATI’s arguments that it should be four years based on Nevada’s four year statute of limitations period for actions under Nevada’s deceptive trade practices laws:

By contrast, Plaintiffs in this case argue that the Court should look to the four-year statute of limitations in NRS §11.190(2) for actions involving deceptive trade practices in violation of NRS §598.0903 to 598.0999. (Pl.'s Opp'n (# 48) 4). They argue that both the Lanham Act and Nevada's deceptive trade practices statute are "designed to prevent consumer confusion and deception in the marketplace with respect to the source, sponsorship, approval, affiliation, connection, or association of goods and services" and therefore Nevada's four-year statute of limitations for deceptive trade practices is the most closely analogous. Id. at 5. This Court agrees. A review of the Lanham Act provisions regarding trademark infringement and Nevada's deceptive trade practices statute reveals that the two are indeed analogous and appear to address similar wrongs including the false or deceptive use of another's mark or product.

(bold italics emphasis added).

Accordingly, the court applied the four-year limitations period to determine whether laches is applicable in this case. In this case, accepting the Moving Defendants' assertion that Plaintiffs discovered the offending use in December 2003, the suit, filed on August 3, 2007, was within the four-year statute of limitations period, and therefore, the court presumed that laches was inapplicable.

The court added that, even though ATI’s suit was presumed to have been timely filed, laches could still apply if the Moving Defendants could show that they suffered prejudiced as a result of the ATI’s unreasonable delay in filing suit. The court noted that, given HIDE Nevada’s assurances that it would assign the Venezuelan trademark upon registration, it was not unreasonable for ATI to delay in filing its action upon initially discovering the application in December 2003. Moreover, the Moving Defendants apparently had not shown any evidence of prejudice as a result of the alleged delay. Thus, the court denied the Moving Defendants’ Motion to Dismiss.

Chicago’s SUPERDAWG Files Trademark Infringement Against NYC’s SUPERDOG

Chicago's Superdawg

The Chicago Tribune reported earlier this week on the lawsuit filed by the owner of Chicago’s famed SUPERDAWG restaurant (pictured above) against a New York man, Danny Omari, doing business under the SUPERDOG. See Superdawg Drive-In, Inc. v. Danny Omari d/b/a Superdog, Case No. 09-CV-03758 (N.D. Ill. June 22, 2009). A copy of the complaint is available here.

Superdawg Drive-In, owner of the registered SUPERDAWG mark, claims that Omari’s use of SUPERDOG infringes their nationwide reputation (because Superdawg does not currently have a NYC location) . Superdawg even cites an NY article about Omari’s new eatery – adding the disclaimer that Omari’s Superdog is “no relation to Chicago’s iconic Superdawg”

Omari has a trademark registration application pending with the PTO for the design mark HOT DOG CONCEPT SUPERDOG (pictured above). Surprisingly, the PTO did not find his mark to be conflicting with Superdawg’s registered mark.

Interestingly, Omari has already modified his home page slight in what appears to be an attempt to distinguish his mark from Superdawg – the design appears as below to read SUPER HOT DOG. [Comment: hmm...probably not enough to call off the dawgs].

Eighth Circuit Overturns Lower Court’s Laches Decision in CRISTAL Trademark Infringement Lawsuit

The relatively new-on-the-block Minnesota Law, Technology & Intellectual Property Blog reports on the decision by the Eighth Circuit Court of Appeals overturning a lower court’s decision dismissing a trademark infringement lawsuit on the basis of laches. See Champagne Louis Roederer v. J. Garcia Carrion, S.A., et al., No. 08-2907 (8th Cir. June 24, 2009).

Cristal Champagne

Champagne Louis Roederer, maker of CRISTAL CHAMPAGNE, sued J. Garcia Carrion, S.A., maker of a sparkling wine sold under the mark CRISTALINO, for trademark infringement. The lower court dismissed the lawsuit on the basis that Roederer had constructive notice of Carrion’s use of the CRISTALINO mark as early as 1995 and the action was therefore barred by the doctrine of laches.

Cristalino Cava

The Court of Appeals found that the district court had not done a meaningful analysis of the issue of progressive encroachment to determine if 1995 was really the date when Carrion’s use became actionable infringement for purposes of applying the doctrine of laches.

The Court further noted that Carrion was certainly on notice regarding Roederer’s objection to Carrion’s use of the CRISTALINO mark. Roederer had opposed several trademark registration applications filed by Carrion in Spain, the U.S. and Columbia in the early and late 1990s -- long before Carrion has made a significant investment in improving a particular production plant in 2003.

Finally, the Court found that the district court had erred in finding that Carrion would be prejudiced by this delay if Roederer’s lawsuit proceeded. Carrion’s investment in improving its production plant did not appear to be so related to the CRISTALINO brand (only 9% of the plant’s output) that Carrion would not have otherwise made it without the CRISTALINO brand. Thus, Carrion had failed to show that it suffered undue prejudice as a result of Roederer's delay in bringing suit. The Court found that this alone was sufficient to bar Carrion’s use of the laches defense.

GIRLS GONE WILD Sues Wireless Companies Over GIRLS GONE MOBILE

Xbiz reports (link here) on the trademark infringement lawsuit filed last week in the U.S. District Court for the Central District of California by the companies behind the GIRLS GONE WILD brand (Mantra Films, Inc. and GGW Marketing, LLC) against several wireless carriers (including AT&T and Verizon) and mobile phone content providers for using the mark GIRLS GONE MOBILE to promote “adult themed entertainment products” such as downloadable videos, photos, and wallpaper of “youthful women.” See Mantra Films, Inc. et al v. Oasys Mobile, Inc. et al, Case No. 09-cv-04420 (C.D. Cal. June 19, 2009). A copy of the complaint can be downloaded here.

One of the Defendants, Oasys Mobile, Inc., filed an intent-to-use application to register the mark GIRLS GONE MOBILE back in 2007. No opposition was filed when it was published for opposition in December 2008 and a notice of allowance has issued.

In addition to the usual trademark infringement, unfair competition, trademark dilution, cybersquatting, and intentional interference claims, there is also a breach of contract claim against one of the Defendants, Waat Media, Inc. According to the complaint, Waat had a Wireless Distribution Agreement with Mantra for exclusive rights to distribute Girls Gone Wild content over wireless networks. Mantra claims that Waat has breach this Agreement by not paying the quarterly royalties due since June 30, 2008.

Eric Gardner over at THR,Esq. gives his thoughts on the complaint.

Bellagio Loses Bet on Specimen of Use for DUNES mark for Casino Services

The TTABlog® writes today (link here) on the Trademark Trial and Appeal Board’s decision affirming the PTO’s refusal to allow Bellagio, LLC, the MGM-Mirage subsidiary which owns the Bellagio Hotel & Casino, to register the mark DUNES for “casino services” based on a specimen of use showing the mark on a slot machine (pictured below). See In re Bellagio, LLC, Serial No. 77175007 (June 2, 2009) (not precedential).

Bellagio argued that its DUNES slot machines, which appear throughout the Bellagio casino floor (and are not themselves available for purchase by casino patrons), are used for gaming in Bellagio's casino, thus offering casino services to customers and thereby creating an association between the DUNES mark and the Bellagio.

However, the Board found that this specimen failed to provide the necessary “direct association” between the mark and the applied-for services such that the mark would be “readily perceived as identifying the source of the services.” The Board also noted that there was no evidence that “placing a mark on a slot machine is a typical manner for a casino to use its mark in connection with casino services” nor did Bellagio provide any evidence that the DUNES mark was used on other advertising to promote its casino services.

In the end, the Board found that the association that Bellagio argued customers encountering the DUNES slot machine would have in connecting such slot machines to Bellagio’s casino services offerred where the slot machine is located was not direct, but instead would require “at least one mental” step (including possibly an awareness of the fact that the Bellagio is located where the former Dunes Hotel & Casino used to stand).

The Dunes Hotel & Casino
(demolished in 1993 to make way for the Bellagio)

[Query: Do you think it would have made a difference if the services recited in Bellagio's application had been "gambling services" instead of "casino services"?]

Toy Maker Seeks Declaratory Judgment That “Boogie Board” is Generic for … Guess What?

Wham-O's BOOGIE® body board

Hong Kong based toy company Manley Toys, Ltd., the maker of the BANZAI line of water toys including a water slide with a Banzai “boogie board” (pictured below), filed a declaratory judgment action against Wham-O, Inc., the owner of the registered trademark BOOGIE (for body boards), after receiving a cease and desist from Wham-O over the use of the term “boogie board”. See Manley Toys, Ltd. v. Wham-O, Inc., Case No. 09-cv-04198 (C.D. Cal. June 12, 2009). A copy of the complaint is available here.

Banzai's Water Slide with "Boogie Board"