Monster Worldwide, Inc. v. HR Guru.Biz Corporation

Answer, Affirmative Defenses and Counterclaims

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HRGuru.BIZ is a personnel recruitment firm which did business under the name HR GURU beginning in 2002, earning common law rights in that trademark. It could not obtain the HRGuru.com domain, however, which was being warehoused. So it opened up a website at HRGuru.biz and adopted that domain name as its corporate name and an additional business name, and applied for trademark registrations for the word HRGURU.BIZ. It was granted one in 2004 and one in 2005.

Another company did obtain the HRGuru.com domain, however, and developed its own website in the human resources area at that domain in 2006 using the name HR GURU. That company was subsequently acquired by the defendants in this case (actually by Affinity Labs, which is owned by Monster.com) which in turn "went national" with a major online project using the HR GURU name and applied for trademark registrations as well.

Affinity's trademark registration applications for HR GURU were rejected by the PTO as being confusing similar to those held by HRGuru.Biz. Meanwhile, the latter learned of Affinity's project, and demanded that it cease and desist infringing the HR GURU trademarks and compensate HRGuru.BIZ for the same. Although there some negotiation occurred, the parties could not come to an agreement.

Early in 2009, just as negotiations seemed to be at an end, Affinity announced that it was, without any waiver of rights or admission of liability, going to "walk away" from any use of the HR GURU mark and rebrand the website, and expected HRGuru.Biz to do the same. HRGuru.Biz declined to waive its rights, however. Affinity then brought a declaratory judgment action against HRGuru.Biz--the owner of the original trademarks--seeking a judgment of non-infringement based on abandonment as well as cancellation of the two HRGURU.BIZ registered marks.

This is the "Answer and Counterclaims" of HRGuru.BIZ. The case was settled very amicably.

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Published In: Business Torts Updates, Civil Remedies Updates, Communications & Media Updates, Intellectual Property Updates

Reference Info:Pleadings | Federal, 2nd Circuit, New York | United States