Who is in the wrong here?

[Deleted member 111831]

This came up on a poker forum recently. The website TwoPlusTwo.com owns the mark 'Two Plus Two' and has for many years - a domainer registered twoplustwopoker.com in 2004 and let it drop somewhere around 2008. During the time he had it registered he evidently had it pointed to gaming related ads, which I think means he had it parked and the attorneys don't know what parking is, or are seeking to exaggerate his use of the domain.

In any case, the domainer was recently served with a lawsuit by TwoPlusTwo.com's attorneys for infringing their mark. You can read the letters they sent to the domainer here, along with their claims:

http://forumserver.twoplustwo.com/29/news-views-gossip/boyd-lawsuit-statement-660963/

I think this is a ridiculous lawsuit and TwoPlusTwo has little legal ground to stand on, principally because of the fact that they now own the TwoPlusTwoPoker.com domain name - they registered it after the domainer let it drop.

Thoughts?

 

[axeman]

This is an interesting case IMO. Dutch Boyd and certain other professional poker players are starting a poker parking company, i approached them and was interested in the venture, and i was asked to be an investor, but i am dubious of Dutch Boyd and his past misdemeanors in the poker world, such as his bankruptcy of a well known poker site, which many people lost money in, so i declined the offer.

Now, it appears that this domain was dropped, and the company itself regged it, so i do however think trying to garnish revenue and traffic from the former owner is somewhat impaired by logic, i highly doubt two plus two have case, even though Dutch Boyd is of questionable character.

I do find it funny though when 2plus2 say,

"Boyd responded to our attorneys with a two-word email: “F*** off.” We filed our suit the next day.

We never enter into litigation lightly, and it is never our attempt to “bully” anyone."

It sounds to me like 2plus2 just took the bait, hook line and sinker.
Maybe im wrong, but the only winners i see here are the lawyers.

 

[Deleted member 111831]

Never heard about that parking company, Dutch send me a PM about it if you see this.

Later on in the thread Dutch said that in 5 years the domain earned him $200 - and that the lawyers were lying when they said he refused to provide traffic and revenue stats for the domain. However the fact that he let a domain earning $40 per year in parking revenue drops shows some measure of guilt I think. Why else would he not renew a profitable domain unless he were worried about TM issues?

 

[Mike Cruz]

Never heard about that parking company, Dutch send me a PM about it if you see this.

Later on in the thread Dutch said that in 5 years the domain earned him $200 - and that the lawyers were lying when they said he refused to provide traffic and revenue stats for the domain. However the fact that he let a domain earning $40 per year in parking revenue drops shows some measure of guilt I think. Why else would he not renew a profitable domain unless he were worried about TM issues?

I am guessing same reason the thousands of other people let their domain names expire so we can pick them up on Namejet, pool, snapnames, etc.

This is a very interesting case though... curious to see where it goes from here.

 

[katherine]

Dutch Boyd ? The name sounds familiar

http://www.dnforum.com/f154/broker-wanted-domain-sedo-auction-thread-335230.html
http://www.dnforum.com/f31/beware-do-anybody-know-russell-boyd-columbia-thread-307635.html

 

[Gerry]

TwoPlusTwoPoker.com would never exist if it was not for TwoPlusTwo.com being a poker site.

It is much the same way of arguing HP.com has no rights to HPcomputers.com - HPcomputers.com as a domain name would not exist if not for HP.com making and selling computers.

Telling the attorneys to "fvck off" is the quickest route to litigation that I can think of.

 

[actnow]

I stopped at page 2 of 14 at the other forum.

It appears both parties are in Nevada. That makes it easier and cheaper to file.

The time, mental energy and cost in a case like this is overwhelming.

The only groups that will benefit from this are the lawyers.
The filing lawyer has already figured where he is going to invest the legal fees proceeds.

Now, I have just wasted 10 minutes of my life that I will not get back.

 

[INFORG]

All that twoplustwo is going to get is some very expensive publicity by suing Dutch. Dutch was certainly wrong in capitalizing on a typo/tm, but very likely made next to nothing on it. Since the name was dropped and picked up by 2+2, no WIPO issue - though they would have won one easily.

While they may get a finding in court, I just can't see them proving any significant damages that would warrrant a big judgement.

Right or wrong, the question you have to ask is "would 2+2 be doing this if it was some average domainer/person?" I doubt it.

 

[draggar]

TwoPlusTwoPoker.com would never exist if it was not for TwoPlusTwo.com being a poker site.

It is much the same way of arguing HP.com has no rights to HPcomputers.com - HPcomputers.com as a domain name would not exist if not for HP.com making and selling computers.

I don't think I could have put it better myself.

TwoPlusTwo is a poker site and they have a mark on TwoPlusTwo for it's use as a poker site.

So, getting TwoPlusTwoPoker would, IMO, infringe on their mark (TwoPlusTwoRoulette would be a gray area one, TwoPlusTwoTutoring would not be infringing).

 

[dcristo]

TwoPlusTwoPoker.com would never exist if it was not for TwoPlusTwo.com being a poker site.

It is much the same way of arguing HP.com has no rights to HPcomputers.com - HPcomputers.com as a domain name would not exist if not for HP.com making and selling computers.

Telling the attorneys to "fvck off" is the quickest route to litigation that I can think of.

True. But if you are familiar with the type of members that use 2p2 forum, they are net savvy, and wouldn't be typing the url into the browser to find the forum. I'm not saying that makes it anymore right, but I very much doubt this domain name was making a lot of money infringing on their TM.

 

[Gerry]

True. But if you are familiar with the type of members that use 2p2 forum, they are net savvy, and wouldn't be typing the url into the browser to find the forum. I'm not saying that makes it anymore right, but I very much doubt this domain name was making a lot of money infringing on their TM.

I think most attorneys would argue that the intent of making money, capturing traffic, and allowing people to believe that the site was affiliated with TwoPlusTwo. And, with the bogus site being poker related, it would be a tough argument for the accused to defend.

I think all the plaintiff would have to show is the intent and the "confusingly similar" aspect of it. How much the defendant made would be irrelevant (perhaps) if the judge in a civil matter were to award damages. If damages were awarded, the judge could slam him with an amount equal to the amount of money made or $100,000; whichever is more.

I worry about the confusingly similar all the time. Some of my names are blatant knockoffs and some walk a fine line.

Irregardless, a response of f*ck off is not going to win any concessions, pity, or consideration from the other party.

 

[DutchBoyd]

I just wanted to put my two cents in here, since I'm the defendant in the lawsuit. This is a pretty important case for me to win, imo, because I am fighting for the rights of you and every other domainer out there. It is important to keep this fact in mind:

THEY OWN THE DOMAIN NAME IN QUESTION!!!!

There are three important points which I believe make this lawsuit frivolous. They are :

(1) Two Plus Two Publishing, LLC doesn't actually own a federal trademark for "TwoPlusTwo" or "TwoPlusTwo.com". They filed for those trademarks in September AFTER the domain expired and was dropped and they registered it. The federal trademark they are trying to use to go after me in federal court for statutory damages is a trademark for the image and was listed in the TESS search as "2 + 2 = 4". It's the image in the upper right of their website and on the spine of all their books. It is a picture of a two of diamonds + two of clubs = four of hearts. If you did a trademark search for the words "two plus two" this wouldn't have raised any flags from the point I registered it in 7/2004 to the point I let it expire in 7/2009.

(2) They waited FIVE YEARS to bring this action... and I can't stress this enough... brought it AFTER THE DOMAIN EXPIRED AND AFTER THEY REGISTERED IT. There is something called the Doctrine of Lacheys which basically says that if you don't actively protect your trademark rights, the law isn't going to protect you.

(3) They still don't give any sort of notice of trademarks on their site... not an (R) next to the image or a (TM) next to the TwoPlusTwo.com mark at the top. Maybe I am misreading 15 USC Section 1111 but it seems to me that giving notice of registration is obviously required if you are going after anything more than a transfer.

Basically, if they win this and get the $100k they are going after, domainers everywhere should start being a little paranoid... because it will mean that it's impossible to clean your portfolio. If you registered a domain without doing a trademark search (or if the search came up clean) and then later decided it wasn't worth the risk of holding onto it and let it drop, the mark owner can come after you and sue you for big statutory damages... even if there is only a vague connection between the mark and the domain name... and/or even if the mark is only a commonlaw trademark.

Also, just to clarify my motivation for letting it drop... after my experience with PokerHost.net, where I won a UDRP dispute and a reverse domain hijacking finding against the very firm that is bringing this civil action, Greenberg Traurig, I decided to slim my port of more than 5,000 domains and actively try to avoid any domain that could land me on the wrong side of a dispute like this unless it was really worth keeping. Dropping this one was an easy call because while the domain easily made its registration fee pre-2006's passage of the UIGEA, in the last year that I had it parked at Fabulous it didn't earn a single penny. Not worth the risk of keeping so I let it go. Started getting demand letters after that, with the final one coming in December months after Greenberg Traurig had already picked it up. They asked for $15k in damages so I told them to "f*ck off" without censoring it. They filed the lawsuit...

I guess they were in such a rage that they didn't even bother changing the complaint from their standard cut-n-paste copy because one of the remedies they are requesting is a transfer of the domain... WHICH THEY ALREADY OWN!

There was a good quote in the thread on the 2+2 thread which was taken from Grand Theft Auto and sums it up nicely :

"These days you can sue anyone for anything and probably win... or at least get a settlement."

I retained the services of a pretty cool attorney here in Vegas, Clark Walton... hopefully he'll let me do a lot of the legal legwork myself (I am, after all, the 2nd youngest law school graduate in the history of the degree) and won't take me to the cleaners TOO much.

If you want to read their full complaint, you can do so here :

http://media.lasvegassun.com/media/pdfs/blogs/documents/2009/12/11/pokersuit1211.pdf

 

[jasdon11]

Bizarre if they only started procedings after they'd got the name...if your side of events is correct, good luck with it.

BTW, looking at some of the comments in that thread, it's amazing how naive so many people are re TMs in general.

 

[Slipxaway]

Dutch,

You spend all your time playing poker, domaining and fighting lawsuits... You seriously must have no social life at all.