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Temporary Restraining Order Issued Against Domainer's Use of "mylennar.com"

Evan D. Brown

Lennar Pacific Properties Management, Inc. v. Dauben, Inc., No. 07-1411, 2007 WL 2340487 (N.D.Tex. August 16, 2007)

Companies sometimes find that opportunistic purchasers of domain names (often referred to as "domainers"), will purchase a domain name quite similar to that of the company, and establish a site at the URL loaded with revenue-generating sponsored ads. To accomplish these purposes, domainers seem to prefer the services of companies like HitFarm and Domain Sponsor. A web user types in the confusingly similar URL and is bombarded with pop-up ads and sponsored links to goods and services, often competitive to the company whose name or trademark is being appropriated in the URL.

The Lennar Corporation, an established home builder, noticed that a company called Dauben, Inc., d/b/a "Texas International Property Associates," set up a HitFarm site at mylennar.com. Dauben's page purported to feature "resources and information on Floor plans and Building construction." It also contained a link titled "Home building," which when clicked on, took the user to another page of sponsored links to homebuilders competitive to Lennar.

Lennar filed suit for trademark infringement in Texas federal court, and sought injunctive relief. The court granted the motion for temporary restraining order, prohibiting the defendant from using, canceling or transferring the domain name to any person or entity other than Lennar, and from using any domain name that incorporated or was confusingly similar to the Lennar mark.

The court held (1) there was a substantial likelihood of Lennar's success on the merits of the trademark claim; (2) there was a substantial threat that Lennar would suffer irreparable injury if the injunction was denied; (3) the threatened injury outweighed any damage that the injunction might cause Dauben; and (4) granting the injunction would not disserve the public interest (click here for court's decision [PDF]).

It looks like this Texas International Property Associates has targeted other companies in the past, and has come up empty handed. See, e.g., this WIPO opinion, in which Fry's Electronics wrestled to get the typo-squatted domain name "fyrselectronics.com".

By Evan D. Brown, Attorney – Evan focuses on technology and intellectual property law. He maintains a law & technology focused blog called Internet Cases and is a Domain Name Panelist with the World Intellectual Property Organization deciding cases under the UDRP. Visit Page
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Re: Temporary Restraining Order Issued Against Domainer's Use of "mylennar.com" Derek A. Newman  –  Aug 21, 2007 12:47 PM PDT

Evan,

Your post is misleading.  The plaintiff obtained its TRO without any notice whatsoever.  The court granted the motion based upon the plaintiff’s (false) representation that the registrant would leave the jurisdiction if given notice of the action.

Domainers are in the business of direct navigation search services.  Consumers benefit from direct navigation because they can find desired sites by entering just a domain name.  Domainers are not nefarious, and 99% of them do anything possible to avoid names similar to trademarks.  In truth, the defendant would probably have simply transferred the name to the plaintiff if the plaintiff asked.

You cite a single adverse UDRP decision in support of your position.  However, the decision was essentially a default.  The respondent notified the panel that it would transfer the name and admitted no wrongdoing.

This injunction, entered without due process and without support in law, is unfortunate.  The defendant probably had no idea that it registered a name that might be similar to a trademark.  I bet had the plaintiff simply contacted the defendant, then the waste of judicial resources could have been avoided.

I must disclaim that I do not represent the defendant, do not know the parties, and base my conclusion solely on your post and the links to the order and UDRP decision.  It is possible that this defendant is a bad guy, but from my experience with dozens of domainers it is unlikely that this company did anything wrong.  Your post gives the false impression that domaining is unlawful or otherwise wrongful, when it is actually legal and beneficial to Internet users.

-Derek A. Newman

Re: Temporary Restraining Order Issued Against Domainer's Use of "mylennar.com" Evan D. Brown  –  Aug 21, 2007 1:35 PM PDT

Derek:

I'm surprised that anyone would take an adversarial tone to my post, as my intent was to be objective in reporting the decision.  So I wonder what in particular you find to be misleading.  The accusation that I am misleading readers is followed by your observation that the TRO was entered ex parte.  That is true.  And I do not say, or indicate anywhere in the post that the defendant had the opportunity for a hearing. And the FRCP 65 doesn't require he be afforded one.  Most intriguingly, I'm curious as to how you konw the plaintiff's representation that the defendant would leave the jurisdiction is false. 

I like your characterization of domainers as being "in the business of direct navigation search services." Great use of semantic nuance there.  High marks for that! And I particularly enjoy your unsupported conclusions abot the lack of nefariousness among domainers and the obviously scientific data regarding the percentages who just want to do the right thing.  All to help the public, right?

As for citing to the UDRP decision, you're right.  A mention of one mere case isn't fair to this poor domainer.  I guess I should have mentioned the scad of other WIPO proceedings against this company that resulted in a transfer.  See here: http://www.wipo.int/amc/en/domains/statistics/...

If that link doesn't work, just do a search at wipo.org for the name "Texas International Property Associates" I didn't even check the NAF's records.

Saying the injunction was entered without due process just doesn't cut it.  Read Rule 65.  And what do you know about what the defendant would have done had it been notified of the action?  You say you don't represent it, but you seem to have a pretty clear insight into its intentions and motives. 

You're correct in asserting that domaining, in and of itself, is not unlawful.  But trading on the goodwill of another company in a manner likely to cause confusion is. Again, I take umbrage with your accusations that I was being misleading or giving a false impression.

Re: Temporary Restraining Order Issued Against Domainer's Use of "mylennar.com" John Berryhill  –  Aug 22, 2007 12:56 AM PDT

Evan and Derek,

We could all do with less umbrage.

As we all know, stories about legal actions can be misleading to the general public.  While you, Derek, and I are all familiar with decisions on temporary restraining orders, a layperson may not realize in passing that this is not a situation in which the merits were argued by the respective sides.

As to this:

I’m curious as to how you konw the plaintiff’s representation that the defendant would leave the jurisdiction is false.

Okay, I give up.  How does a corporation "leave the jurisdiction"?  An allegation that a Texas corporation can "leave" Texas is of course facially false, as well as downright funny.  Aside from which, notifying a registrar of a pending legal action is sufficient to lock the domain anyway.

The objection to your article seems to have more to do with the implicit definition of "domainer" as "cybersquatter", as in "To accomplish these purposes, domainers..." wherein "these purposes" is defined as intentionally registering variations of company names and marks.

The news here is that an outfit which has lost a fistful of UDRP decisions has had a TRO issued against it.  While that may or may not be gripping news, I did manage to catch this story the other day:

http://www.twincities.com/localnews/ci_6644754

"A former prosecutor who is a partner at a law firm was one of the men caught up in a prostitution sting in St. Paul this week.

Officers arrested Robert Daniel Rasmus, 48, on suspicion of engaging in prostitution at 1:20 p.m. Tuesday."

Now, there are a number of ways that story could be reported.

One way would be to open the story with a catchy line like:

"People who are in the business of providing paid services, such as lawyers and prostitutes, usually prefer their clients to pay a retainer up front.  Whether you need a lawyer to perform orally, or just in briefs, lawyers will bend over backwards to accomodate you, once you have made payment arrangements."

Re: Temporary Restraining Order Issued Against Domainer's Use of "mylennar.com" Evan D. Brown  –  Aug 22, 2007 6:31 AM PDT

I agree.  Less umbrage would be a good thing.  To me it makes no sense at all to treat domainers as this opressed class of people.  If they're as savvy and good intentioned as one would believe from reading Derek's post, then it looks like they can take care of themselves!

Re: Temporary Restraining Order Issued Against Domainer's Use of "mylennar.com" Brett Lewis  –  Oct 24, 2007 8:37 AM PDT

In truth, the defendant would probably have simply transferred the name to the plaintiff if the plaintiff asked.

A colleague sent this entity a cease and desist letter. Texas International sued them in a Civil Court in Texas.  Apparently, a number of similar suits had been filed.  The trademark rights asserted in that case were legitimate.

Domainers are not nefarious, and 99% of them do anything possible to avoid names similar to trademarks.

There are many legitimate domainers, but also many bad actors.  I'm not sure how you get 99%. 

You cite a single adverse UDRP decision in support of your position.  However, the decision was essentially a default.

There are at least 55 decisions — NAF and WIPO — involving Texas International.  All but a handful of the complaints were granted.  Disputed domains included: orvistravel.com, disneycasting.com, westlegalcenter.com, westllaw.com, honeywll.com, aliantcreditunion.com, californiaacademyofsciences.com, and grandtheftauto6.com.  There were also a number of others based on dictionary word combinations that, some of which, on their face, did not seem indefensible, but I did not dig deep enough to see whether the complainants had registered trademarks, how the domains were being used, and whether there were any other facts that might shed light on the issue of bad faith.

It is possible that this defendant is a bad guy, but from my experience with dozens of domainers it is unlikely that this company did anything wrong. 

Therein lies the rub.  How can you tell based on very limited information whether a particular defendant is a bad actor?  Although monetizing generic type-in traffic can be a legitimate service, I have encountered enough individuals with multiple identities, off-shore entities and hordes of trademark typos to question your underlying assumption that all domainers are basically good guys, save for a few rogue actors.  There are more than a few, and they make life much more difficult for the rest of them.

I do agree that perception is out of whack, and that the public largely associates domainers or speculators with cybersquatters.  This is the unfortunate result of media bias and lack of information.  There are just as many, if not more, trademark bullies out there asserting overreaching claims as there are actual cybersquatters.
Threatening individuals with legal action and statutory fines, based on meritless claims — i.e., using corporate muscle to intimidate people into forfeiting their legitimate dictionary word domains —
is deplorable.

Brett E. Lewis, Esq.
www.lewishand.com

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