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Case law that may help you take down a Trademark Domain Bully in Arizona

Posted by Steve Vondran | Jan 07, 2022 | 0 Comments

Attorney Steve® Internet Law Essentials - Domain Disputes and Punitive Damages - Arizona

three globes domain dispute

Introduction

GoDaddy is located in Scottsdale Arizona.  They sell a ton of the internet domains that are sold in the United States and abroad.  Thus, when a domain bully seeks to obtain your domain (reverse cybersquatter) and loses badly in a WIPO domain dispute arbitration proceeding ("UDRP"), an administrative proceeding, jurisdiction may properly lie in the State of Arizona.  

Here is some Arizona case law that may assist in bringing a case against a reverse domain bully to recover for damages, attorney fees, and even punitive damages in the right case.

Arizona and California Case Law (that may be on point) following a bad faith UDRP filing with WIPO or NAF

Here are the theories I researched (there may be others depending upon the facts of your case):

  1. RDNH (reverse domain name hijacking).  Usually, the UDRP panel (if you had three instead of one panel member) will find that the complainant brought the domain dispute in bad faith and which amounted to an "abuse of the administrative proceeding."  Attorneys, especially those holding themselves out as experienced IP lawyers (copyright, trademark) may be held to a higher standard.
  2. Tortious interference with contract or prospective business advantage (Where a complainant, by filing a meritless UDRP claim with no realistic chance of winning, may be found to have tortiously interfered with the GoDaddy contract with its users).  For example, the domain may have been taken out of your name, frozen or disabled for use, and transferred into another party's name).  This has the affect of causing or inducing GoDaddy to  not be able to provide you with the services you would otherwise be entitled to and to enjoy the full use and rights that comes with owning a domain name. 
  3. Wrongful institution of civil proceedings (some lawyers may go "over the top" and file the UDRP arbitration with WIPO or or NAF just to harass or intimidate a person or competitor and cause them to incur legal fees). This can also be actionable.
  4. Aiding and abetting (this is recognized in AZ and used to tie others in, including any business partners at the law firm that filed the UDRP who had knowledge of the frivolous action, and agreed or acquiesced to its filing after being put on notice of the frivolity of the complaint. Partners in a law firm can generally be held liable for the business actions of the other.

The reason courts appear willing to treat this as wrongful institution with an admin proceeding as opposed to a civil suit is due to the rise in arbitration clauses and non-lawsuit cases noting that the harm is still the same to the person on the other side.  Punitive damages also appear proper in Arizona for “ill will, embarrassment, harassment, etc., which appears to be a lower standard than you may find in California (in California you must prove malice or oppression, a higher standard in my opinion.  However, you need facts pointing to the ill-will and discovery and depositions can help show the bad motives especially against a competitor who files a meritless UDRP arbitration complaint).  

Here are a few cases worth noting that may apply:

  1. Arnoldo vs. Coogan (doctor accused of wrongful death obtained 8 mil judgment). 
  2. Dent v. Lottto (court awards over 250k in attorney fees)
  3. GoForIt vs. Digimedia (Texas case) RDNH and tortious interference case
  4. Nienstedt – 133 AZ 354 - exposing one to attorney fees
  5. Filing suit to obtain collateral advantages - Morn – 152 AZ 167 (motives may be inferred), also see Rondelli 120 AZ 489
  6. If a Defendant argues they had a "litigation privilege" to file an abusive UDRP action that can also be challenged (in general the litigation privilege is a qualified privilege, meaning, if you abuse you lose it).  See Giles 195 AZ 358
  7. Emotional duress, humiliation, inconvenience, and anxiety recoverable – See Crackel 208 AZ 264
  8. CA case recognizing administrative proceedings as potential for wrongful initiation of suit cause of action - See Hardy vs. Vial 
  9. Also another AZ case regarding punitive damages standard – See Nelson v. Cail – spite, ill-will, reckless or indifference to Plaintiff's interests deemed sufficient as a standard for assessing punitive damages. 

Contact a Domain Dispute Law Firm

That is what I found with a cursory search and will hopefully help point one in the right direction.  If you need help with a domain dispute, ICANN issue, UDRP defense with WIPO (World Intellectual Property Organization) or NAF (National Arbitration Forum) or with a case of reverse domain bullying, including accompanying trademark cancellation issues that may apply, and typo or social media handle squatting, call us at (877) 276-5084.  

We recently defended and won a case involving two law firms trying to obtain a domain name from the other by filing a WIPO dispute.  The 3 panel judge in majority decision found the Complainant engaged in a bad faith abuse of the administrative procedure.

About the Author

Steve Vondran

Thank you for viewing our blogs, videos and podcasts. As noted, all information on this website is Attorney Advertising. Decisions to hire an attorney should never be based on advertising alone. Any past results discussed herein do not guarantee or predict any future results. All blogs are written by Steve Vondran, Esq. unless otherwise indicated. Our firm handles a wide variety of intellectual property and entertainment law cases from music and video law, Youtube disputes, DMCA litigation, copyright infringement cases involving software licensing disputes (ex. BSA, SIIA, Siemens, Autodesk, Vero, CNC, VB Conversion and others), torrent internet file-sharing (Strike 3 and Malibu Media), California right of publicity, TV Signal Piracy, and many other types of IP, piracy, technology, and social media disputes. Call us at (877) 276-5084. AZ Bar Lic. #025911 CA. Bar Lic. #232337

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