17
Dec/15

We Prevailed in a Summary Judgment Motion – ACPA and Dilution – SDNY


We won a motion for summary judgment that dismissed all claims against our client.  It’s a 77 page decision, with extensive discussion of cross-motions to strike.

Defendant NameMedia owns and administers large portfolios of domain names, which it monetizes through advertising, brokerage, and sales.  It registered the domain name NewWorldSolutions.com  in 2005.

Plaintiff New World Solutions alleged common law rights in the mark NEW WORLD SOLUTIONS in connection with staffing and IT services, claiming a date of first use in  2004.  It incorporated in 2007.  In 2010 it contacted defendant and demanded transfer of the name, which was refused.  Plaintiff then filed a U.S. trademark application, stating a date of first use of 2007.  It obtained registration in 2011 and immediately contacted defendant again, repeating its demand, which again was refused.  Plaintiff sued under ACPA, the cybersquatting statute, federal dilution, and related state torts.

Held:  As to dilution, plaintiff could not establish use of its trademark, let alone fame, prior to defendant’s registration of the name in 2005.   As to cybersquatting, it could not establish prior trademark rights prior to defendant’s registration of the domain name.  Additionally, it could not establish that defendant had been aware of plaintiff, and therefore could not have sought to divert traffic from, nor otherwise interfere with defendant.

We represented defendant with John Welch as co-counsel.

Footnote 7 is of interest.

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