Friday, September 26, 2008

Pennsylvania Law Firm Sues Domainer Company Using Firm’s Name to Host Web Directory Sites

On September 22, 2008, the Pennsylvania law firm of Hourigan, Kluger & Quinn, P.C. (“HKQ”) filed a trademark infringement and cybersquatting lawsuit in the U.S. District Court for the Middle District of Pennsylvania against Domain Discreet, a Canadian company (based on its phone number since its whois record lists an address in the remote Portugal island of Madeira) in the business of domaining (buying and selling domain names like real estate - its inventory of domain names reportedly is in excess of 300,000 domain names and growing). See Hourigan, Kluger & Quinn, P.C. v. Domain Discreet, Case No. 08-cv-01753 (M.D. Penn.). Click here for an article on the lawsuit.

HKQ has been in business since May 1, 1997. The law firm received a registration for its name HOURIGAN, KLUGER & QUINN as a servicemark for legal services in 1998. In 2004, the firm also registered the initials HK&Q for legal services, and more recently received in 2007 a registration for the above design mark HKQ HOURIGAN, KLUGER & QUINN, PC NO ONE WILL WORK HARDER FOR YOU for legal services.

Around March 13, 2000, Domain Discreet registered several domain names incorporating the law firm’s registered service mark, including houriganklugerquinn.com and houriganklugerquinn.net (the company supposedly purchased houriganklugerquinn.org, but a quick search reveals that name to now be available). The websites currently lead to the typical “web directory” page with multiple click-through links to other law firms with pay-per-click ads.

HKQ argues that Domain Discreet’s use of its trademarked name in connection with its web directory site takes advantage of HKQ’s name to generate revenue through its pay-per-click links to competitors and causes HKQ to lose potential clients.

Given HKQ’s clear cut cybersquatting case against Domain Discreet, one wonders why HKQ opted for a lawsuit against Domain Discreet versus a UDRP action. Perhaps HKQ is hoping that it can obtain a judgment for the $100,000 per domain name statutory damages for Domain Discreet’s cybersquatting. See 15 U.S.C. §1117(d). Of course, given the personal jurisdiction issues that HKQ is likely to face in going after a company located outside the U.S. (be it Canada or Portugal), HKQ will likely be limited to an in rem civil action under 15 U.S.C. §1125(d)(2) against Domain Discreet’s domain name registrar in which case HKQ’s ultimate remedies will be limited to an order against the domain name registrar transferring the domain names anyway (the same outcome as a successful UDRP action).

Of course, the real question is why would a law firm which had the foresight to file a trademark application to register its name as a federal service mark not also obtain the related domain names?

1 comment:

Marc J. Randazza said...

I think it may be possible that the firm filed an ACPA claim instead of a UDRP claim because the UDRP process has become so flawed.

A class of "respondent's panelists" have emerged, and these panelists will set aside any notion of law or common sense and demonstrate a gullibility that would make a loser in three-card-monte laugh.

Look at any decision by Diane Cabell, and 90% of those by David Sorkin as examples. Naturally, it takes two to tango (in a three member panel), but when you consider the respondent's panelist is likely the one with the most spare time, their income stream dependent upon their efforts on behalf of cybersquatters, their opinion will usually wind up being the controlling one.

I still use the UDRP, but the process has become so perverted that I usually recommend skipping the process and going right to an ACPA claim.

The sad thing is that a lot of domainers are legitimate businessmen. Unfortunately, they do not clean their own house. They hold up illegitimate decisions as "victories for their side" -- not realizing that each illegitimate UDRP victory means that complainants are more likely to sue them in court -- seeking damages.