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?