City of Paris ordered to pay for reverse domain name hijacking in groundbreaking decision

by Gray Reed & McGraw
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[author: Travis Crabtree]

I was fortunate to work with the team that won a $125,000+ judgment against the City of Paris (France, not Texas) for reverse domain name hijacking.  In laymen’s terms, that is when an alleged trademark owner overreaches and tries to hijack a domain name to which they don’t have rights.

It is a groundbreaking decision because, as far as we could tell, it was the first time a court has awarded statutory damages in a reverse domain name hijacking case under the Anti-Cybersquatting Consumer Protection Act – not just some, but the maximum amount the court could award of $100,000. 

I worked on the case with domain name attorneys John Berryhill and Paul Keating.  You can read more from Domain Name Wire.

Along with attorneys’ fees and the statutory award, Houston Federal Judge Melinda Harmon ordered the City of Paris to transfer the rights to the domain name parvi.org to a California man in the ruling this afternoon.   

It all started when Jeffrey Walter registered as a conjugated form of the Latin word parvus, meaning small, as set forth in a latin translation of a slogan from a science fiction work, Universum ingens est et nos tam parvi sumus – “The Universe is vast and we are small” – which appealed to Walter who was providing a software “kernel”, or small core of programming at the heart of a computer operating system.  A few years later the City of Paris filed domain name a UDRP complaint with the World Intellectual Property Organization because Paris obtained a French trademark for PARVI for services related to its Wi-Fi services. 

The effort was part of an all out war by the City of Paris over domain names held by U.S. citizens such as WifiParis.com, Wifi-Paris.com, paris.com and paris.tv.  The fight for parvi.org was the only one where the City of Paris was successful—at least at first.  By filing the complaint, the City of Paris agreed to jurisdiction in Texas for matters stemming from the dispute because the domain name was registered with GKG.net of Bryan, Texas.  Despite agreeing to be subject to jurisdiction in Texas, the City of Paris refused to appear and defaulted.

At the hearing, we put on evidence of Paris’s abusive efforts to take away domain names from U.S. citizens.  For years, Paris has been sending threatening cease and desist letters to holders of domain names with the word paris in it hoping the underfunded individuals would capitulate.  Despite the registration of French trademarks, the City of Paris would have no rights to the name under U.S. law.  Before formal arbitrations were filed, a couple of domain name holders preemptively sued in U.S. courts, but the City of Paris would claim immunity and nothing of lasting precedent would come from those suits. 

Much like bullies, when truly confronted and forced to defend themselves under U.S. law, the City of Paris defaulted.  The Court agreed and issued statutory penalties for the first time, we were able to find, in a reverse domain name hijacking case.  

The law was clear that trademark holders may recover statutory damages between $1,000 and $100,000.  This makes sense because it is often difficult to prove that an infringer causes damages sufficient enough to make a federal lawsuit worth it. 

The language under the reverse domain name hijacking provisions of the ACPA, make it clear Walter was entitled to “any damages.”  Any damages should include the punitive-type statutory damages to make the overreaching stop. 

There is further support for the statutory damages because the Lanham Act at 15 U.S.C. § 1117(d) says, that in cases “involving a violation of section 1125,” an election of damages in the courts discretion of “not less than $1,000 and not more than $100,000 per domain name, as the court considers just.”  Section 1125 is the portion dealing with a trademark owner’s rights.  We successfully argued that our claim was also one “involving a violation” because to establish reverse domain name hijacking, you have to show there is no violation of 1125.  Finally, the same policy that supports statutory awards against infringers supports statutory awards against the overreachers.  Without it, a judgment for attorneys’ fees would simply not to deter further hijacking.

This is the first step in the battle, but an iteresting one nonetheless.  Hopefully, it can be used as others that fall victim to overreaching and discourage reverse domain name hijacking.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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