CircleID

This is a horrible decision which is not based upon the law but rather upon a court being subjected to the arguments and allegations of one side - the plaintiff.  That the other side did not show up is a shame but given the economic value of an individual domain (not to mention the location of the registrants in many cases) vs the costs of litigation in the US, it is unfortunately understandable.

The taking of the domain names is a remedy but not at the injunction stage.  There is no statute that provides support for such a pre-emptive solution, particularly with an intangible right as represented by a a domain name.  The process does allow for a plaintiff to obtain a judgment (requiring proof) and then to levy on that judgment if not satisfied.

I understand the "wack-a-mole" problem.  But how is this different in any manner than a flea market or E-bay issue?  One would not expect a court to order, at a preliminary injunction stage, that the plaintiff was entitled to the flea market location or the E-bay account.  Plaintiffs are quick to argue that the domain name problem is unique because anyone can set up a domain name.  How is that different than anything else?

I could park my car by the road, put up a sign for "cheap bags" and sell knock-offs.  Does this allow the plaintiff to the title to my car?  The factories that pump out knock-offs are largely those producing the real McCoy.  They are able to sell them anywhere they can obtain a buyer.  Will seizing domains at a preliminary injunction stage stop this?  No.  Those that wish to will simply get another domain, advertise to obtain traffic and continue to sell.  As said, this is no different from any other example.  There is no logical or legal basis for creating new rules just because it is "....the Internet!...".  The same rules adopted in the "real world" should apply for the simple reason that they are there to prevent abuse by the plaintiff - they protect the minority and just as the rules applicable to the criminal system may be over-expansive in terms of protection of the defendant, so to are the rules applicable to the civil realm.  This is how it should be. 

The plaintiffs would no doubt argue that this will increase their costs.  Lets not forget that this entire exercise was to protect a government granted monopoly.  Having received the benefits of the monopoly, the TM holder should bear the burden of the costs.

The preclusion on the use of the domain name is something that could be ordered by the court.  The order can simply direct the registry NOT to allocate the domain name for registration.  Of course, this would require that the domain name itself be infringing - a situation not presented by the court action described above - where most of the domains were akin to "cheaphandbags.com" and were allegedly selling knock-offs.

Paul Keating