Monday, April 26, 2010

UFC files In Rem Cybersquatting Action Against

Las Vegas-based Zuffa LLC (“Zuffa”), the company which owns the marks THE ULTIMATE FIGHTING CHAMPIONSHIP and UFC in connection with mixed-martial arts competitions, filed an in rem lawsuit in the U.S. District Court for District of Nevada against the domain name See Zuffa, LLC v., Case No. 10-cv-00582 (D. Nev. File April 21, 2010). A copy of the complaint can be downloaded here (HT: Steve Green).

In addition to its more widely known UFC and ULTIMATE FIGHTING CHAMPIONSHIP marks, Zuffa has also registered the mark THE ULTIMATE FIGHTER in connection with the following goods/services (the applications of which were all filed June 2004 on the basis of intent to use):
  • laser video discs, digital video discs, digital versatile discs and CD-ROM discs, all featuring sports events and mixed martial arts (link here) – claimed date of first use November 2005;
  • tee-shirts; team uniform reproductions, namely jerseys featuring reproductions of professional athletic team logos; hats; caps; and for entertainment in the nature of an on-going television program in the field of sports and mixed martial arts (link here) – claimed date of first use January 2005; and
  • tank tops; shorts, headwear; workout and sports apparel, namely shorts and shirts (link here) – claimed date of first use January 2005.
According to the complaint, Zuffa (and its predecessors-in-interest) began using THE ULTIMATE FIGHTER in 2003 in connection with a reality show named “The Ultimate Fighter” - although the complaint later acknowledges that the show has been broadcast on the Spike television network since as early as 2005. There is also a vague mention of some common law rights resulting from use of the name in connection with a Las Vegas gym where the reality show was filmed.

Of course, the date when the mark became distinctive is relevant because it is only cybersquatting if the domain name was confusingly similar to a mark that was distinctive on the date of registration. The domain name in dispute was purportedly registered by Anton Resnick with the registrar eNom on January 22, 2004 (long before Zuffa’s aforementioned trademark applications). The domain name currently is redirected to a Yahoo page dedicated to mixed martial arts.

Zuffa argues that Resnick’s registration of the domain name was a bad faith intent to profit from Zuffa’s trademark rights in THE ULTIMATE FIGHTER (i.e., cybersquatting). It is puzzling, however, why Zuffa waited over six years to go after Resnick for this so-called bad faith cybersquatting for a domain name registered six months before Zuffa had even filed the aforementioned intent-to-use trademark applications. Also interesting is that Zuffa owns the domain name, but WHOIS records suggest it was created only recently in January 2010. [DotWeekly ran an article in late March about the domain name acquisition by Zuffa from Marchex -- a company known for buying and selling domain names].

As for why Zuffa chose to bring this in rem action in a jurisdiction where neither the domain name registrant, the domain name registrar, or the domain name registry is located, the following is the jurisdictional statement:

This Court has in rem jurisdiction over pursuant to 15 U.S.C. § 1125(d) and 28 U.S.C. § 1655 and interpretive case law. Upon information and belief, this Court cannot exercise personal jurisdiction over the registrant of, as the registrant is located outside of the State of Nevada and/or website is not interactive. As a separate and independent basis for in rem jurisdiction, upon service of this Complaint upon the registrar of , the registrar will deposit domain name into the registry of the Court. In addition, the situs of domain name is, or will be, in this judicial district where the owner of the trademark contained in domain name is located.

Of course, see my previous blog post here regarding another in rem cybersquatting lawsuit filed in the District of Nevada (by the same law firm) citing the same jurisdictional argument as a basis for in rem jurisdiction. In that particular case, the plaintiff brought a Motion for Temporary Restraining Order, which was not only denied by the court, but which prompted the court sua sponte to dismiss the entire in rem action outright the very next day due to lack of jurisdiction under 15 U.S.C. § 1125(d)(2)(A). A copy of the court’s order in that case, which details the relevant "interpretive case law" quite nicely, can be found here.

Nonetheless, by searching the domain names at issue in that case, it appears that just filing the complaint was enough to get the domains at issue transferred. And more than likely, that is the strategy being pursued here by Zuffa.

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