In 2017, plastic bag and packaging maker Laddawn and its owner Ladd Lavallee sued former Laddawn employee Marc Bolduc for cybersquatting and defamation. Bolduc had been Laddawn’s network administrator since 1999, and is alleged to have kept information pertaining to Laddawn’s network secret from Laddawn personnel. His performance allegedly devolved over the years to the point that he was terminated in 2015. Laddawn asserts that Bolduc has password-protected its data backup and refused to turn over the passwords, and that following his termination he began a pattern of harassment of Laddawn and its employees. As a part of this, Laddawn asserts that Bolduc registered a number of domain names utilizing the federally-registered “LADDAWN” mark and made them available for sale “to the highest bidder.”
In the ensuing litigation, Bolduc repeatedly failed to comply with deadlines and discovery orders, resulting in the entry of default judgment against him. Judge Hillman has now awarded damages and costs and entered a permanent injunction. He found that Laddawn had demonstrated bad faith in Bolduc’s registration of the domain names – Bolduc testified at deposition that he had no intellectual property rights in the names registered, did not use the sites to offer goods or services, and registered the names solely to sell them for financial gain. He awarded $3000 per name in statutory damages, for a total of $24,000. He also awarded $100,000 in damages for defamation, and enjoined Bolduc from further acts of defamation or cybersquatting.
Boston Cancer Policy Institute (BCPI) sued Indonesian company Carmige and its owner, Karnadi (first name unknown), accusing them of posting a website, https://carmige.com/boston-cancer-policy-institute.html, without BCPI’s consent. Jurisdiction is based on the site being hosted by Hostinger International Limited, which has an operation site within the United States. The Carmige site is said to falsely describe the activities of BCPI and implying that the organization is involved in nutritional and exercise work as well as the actual practice of medicine. In actuality, BCPI conducts research of new social sciences and public policy analysis as well as promotion of translational science and exchange of ideas in the field of cancer medicine. BCPI’s complaint was filed by the corporation itself, which may be a problem – corporations are generally required to have an attorney and cannot represent themselves in court.
Oomph Hair filed suit against Hair Illusions and its founder, Salvatore Passariello, accusing them of infringing Oomph’s trademark, cybersquatting, falsely disparaging Oomph products, and other forms of unfair competition, as well as seeking declaratory judgment that Hair Illusion’s “hairline enhancement” trademark application is invalid as merely descriptive. Hair Illusions is purported to control 90% of the real hair fiber market (real hair fiber is, as near as I can tell, small hair fibers, that are temporarily adhered to natural hair, making thinning hair look fuller). Oomph claims that Hair Illusions uses unfair and tortious means to maintain this market share, such as threatening Oomph and Oomph customers with patent lawsuits, despite having no patent to assert (Passariello had a pair of application undergoing prosecution at the time; they have since gone abandoned). Oomph also asserts that Hair Illusion registered domain names confusingly similar to Oomph’s registered HAIR FUSION trademark, which disparage Oomph’s product (e.g., alleging that the product contains parasites) and redirect customers to Hair Illusion’s on-line store. Oomph seeks preliminary and permanent injunctive relief, transferal of the offending domain names, and monetary damages. Oomph filed a motion for a preliminary injunction concurrently with the filing of the complaint. Judge Zobel scheduled a hearing on the motion for March 28.
Solid Holdings, Solid Surface Care, Inc. and Solidcare, LLC (collectively, “Solid”) sued Solid Logic, along with two of its officers, for trademark and trade dress infringement, false designation of origin, dilution and cybersquatting. Solid alleges that it is the registrant and owner of SOLID marks in connection with cleaning and maintenance of stone, metal, concrete, terrazzo, grout and wood surfaces, as well as a distinctive trade dress using red-orange and gray. Solid asserts that, after meeting with Solid to discuss possibly becoming a franchisee, the defendants formed Solid Logic Limited to offer the same services in a deliberate attempt to poach off of the good-will of the SOLID mark and trade dress, and that its registration of its “solidlogicltd.com” website comprises cybersquatting on Solid’s “solidcare.com” domain name.
New England Anime Society (NEAS”) sued Fantastic Gatherings and Interactive Meet and Greet for trademark infringement, false designation of origin, unfair competition, and cybersquatting. NEAS holds a three day convention every spring, known as “Anime Boston,” to celebrate Japanese pop-culture, including anime, manga, J-Pop, J-Rock, and live-action Japanese media. NEAS registered the ANIME BOSTON mark and has used it in connection with this convention for sixteen years. The event garners publicity through NEAS’ promotional efforts, news coverage, and social media, and is attended by more than twenty-five thousand people from all over the world. NEAS alleges that the defendants have developed and are promoting an event to take place in Hanover, Massachusetts. The formal name of the event is Boston SouhCoast Comic Con & Collectibles Extravaganza, but is allegedly being promoted by the defendants as “Boston AnimeFest” and “Boston Anime Fest,” and the website relating to the event is at www.bostonanimefest.com, which redirects to the defendants’ webpage at www.necomicon.net. Fantastic Gatherings, the company actually sponsoring the event, is alleged to have direct knowledge of NEAS’ marks, because two of its officers and directors previously worked as volunteers for NEAS. In response to a cease and desist letter, the defendants asserted that the terms ‘Boston” and “Anime” “fall into fair use as generic when used together in either order.” NEAS asserts, however, that the PTO registered the mark after determining that the mark had acquired distinctiveness through the years of NEAS’ use. NEAS asserts that the defendants deliberately chose a confusingly similar mark to ride on the coattails of NEAS and its anime festival.
School Family Media (“SFM”) sued School Tool Box (“STB”) under the Anti-Cybersquatting Consumer Protection Act and the Lanham Act. SFM runs a website, www.teacherlists.com, that allows teachers to list materials their students will need and allows parents to order the materials online by providing connections to school supply vendors. SFM asserts that, as of November 2017, close to one and a half million supply lists were posted to the site and that the site had attracted nearly six million page views in 2017 alone. Based on this, and on several awards that the site has received, SFM asserts that the (as-yet unregistered) TeacherLists™ mark is famous. SFM obtained many similar sounding domain names to prevent others from selecting a domain name too close to its own, but mistakenly allowed its registration of “teacherlist.com” to lapse. STB, a business that sells school supplies to PTO and PTA organizations, is alleged to have registered “teacherlist.com” and to have that site redirect traffic to its www.schooltoolbox/teacherlist/ site that is alleged to be substantially identical to SFM’s site. SFM further alleges that the computer source code for the STB site was literally copied from SFM’s site. Finally, SFM alleges that, after notifying STB of its concerns with the new website, SFM’s Facebook page was merged into a TeacherList Facebook page, believed to have been caused by STB.