This case is a prime example of a good-faith Defendant properly prevailing against a Complainant. Lawfully employing descriptive domain names that do not infringe on the rights of others can be an effective marketing tool.
Washington, DC (PRWEB) September 20, 2012
UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA
In November 2006, Libya and Embassy of Libya filed a lawsuit in the United States District Court for the District of Columbia against Ahmad Miski. According to the court Memorandum Opinion, They asserted that Miski’s use of the domain names embassyoflibya.org, libyaembassy.com, libyaembassy.org, and libyanembassy.com violated their trademark rights under the Lanham Act and the AntiCybersquatting Consumer Protection Act.
Miski, through his Arab-American Chamber of Commerce, helps people with certification of documents, a step in the document legalization process provided solely by the Embassy. The Embassy does not provide certification services. Miski registered the above noted domains solely as a means of increasing Internet search rankings for his Arab-American Chamber of Commerce. All the domain names redirect users to Miski’s main website, arabchamber.com.
Miski was represented by domain name lawyer Eric Menhart of Lexero Law Firm, who states that:
“This case is a prime example of a good-faith Defendant properly prevailing against a Complainant. Lawfully employing descriptive domain names that do not infringe on the rights of others can be an effective marketing tool.”
The AntiCybersquatting Consumer Protection Act requires that a trademark owner must prove that it has a valid trademark, the mark must be distinctive or famous, the defendant’s domain name is identical or similar to the owner’s mark, that the defendant used, registered or trafficked in the domain name with a bad faith intent to profit from its use. There was no dispute that they did not have a registered trademark. The Latham Act provides guidelines for determining whether an unregistered mark may be entitled to protection under the AntiCybersquatting Act.
According to court documents, Libya could not prove that they had a trademark that required protection under the Latham Act. In September 2012, the Court held that Libyan embassy and embassy of Libya were best classified as descriptive marks because they do not signal a brand or product source and because they bring to mind a physical space. It ruled that it does not require an effort of the imagination to decide that those terms convey consular services, not document certification services. Since Libya could not prove that it had a trademark under the Latham Act, the Court concluded that Miski’s use of those domain names was not a violation of either the Latham or the AntiCybersquatting Acts.
Lexero Law Firm - http://www.lexero.com/blog/domain-names/libya-anticybersquatting-domain-name-lawsuit.html
Court's Full Decision - http://www.lexero.com/wp-content/uploads/2012/09/libya-domain-name-dispute-opinion.pdf