Guest Post: Court Denies Motion Against WebQuest in Hayward.com Case | DomainInvesting.com

Guest Post: Court Denies Motion Against WebQuest in Hayward.com Case

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This is a guest post written by Brett Lewis of the Lewis & Hand law firm in Brooklyn, New York regarding a ruling from the Hayward.com lawsuit filed by WebQuest.com, Inc. Brett’s firm is currently representing WebQuest. You can read some background on the bad Hayward.com UDRP decision on Mike’s Blog. It looks like the litigation is off to a good start for WebQuest, and I wish them all the best in its legal battle for this valuable geodomain name.

In the case of WebQuest.com, Inc. v. Hayward Industries, Inc., 1:10 cv00306-OWW-JLT, the Court denied Hayward Industries’ motion for judgment on the pleadings, granting an early victory in the case to WebQuest.

Hayward Industries, which manufactures pool lights, pumps, and filters, had argued that even accepting all of the facts pleaded by WebQuest in its complaint as true, there was no question that WebQuest had acted in bad faith in registering the <Hayward.com> domain name.   The Court also granted WebQuest’s motion to strike Hayward Industries’ exhibits as “unnecessary evidentiary materials.”

Hayward Industries had tried to use those exhibits to support its claim for judgment on the pleadings, a claim which the Court said “bordered on the frivolous.”  The Court denied WebQuest’s motion for sanctions, however, finding that the motion, “was not so devoid of merit that it violates Rule 11.”

The case arose after WebQuest lost a UDRP decision over the <Hayward.com> and <wwwHayward.com> domain names and filed an action in Court to stop the WIPO-ordered transfer.   Although the decision comes at an early stage in the case, the Court’s ruling may signal that Hayward Industries will face a difficult task at establishing bad faith.

The Court stated that: “Defendant cites no authority for the proposition that bad faith may be found despite an entity’s lack of knowledge of a trademark holder’s existence.”  Given WebQuest’s claim that it registered the domain names for their value as geographic identifiers for the Bay Area city of Hayward, California, the Court found that, “Plaintiff’s activity does not as a matter of law establish the quintessential case of bad faith intent to profit contemplated by section 1125.”


About The Author: Elliot Silver is an Internet entrepreneur, and he is the publisher of DomainInvesting.com, a website that shares domain investing news, insight, and strategy. Elliot is also the founder and President of Top Notch Domains, LLC, a company that has sold seven figures worth of domain names in the last five years. Please read the DomainInvesting.com Terms of Use page for additional information about the publisher, website comment policy, disclosures, and conflicts of interest.


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Comments (10)

    michael berkens

    Elliot

    I wonder if Mr. Lewis would share the amount it has cost the domain name holder in legal fees to get this far in the proceedings.

    Before anyone in the domain world thinks that Mr. Lewis is a hero to domain holders, I have a nice C & D letter I received from him on a domain we own last week

    November 9th, 2010 at 8:19 pm

    Elliot

    @ Michael

    That would be very interesting to know – or at least the approximate cost.

    It’s surprising to hear that you received a C&D from his firm, especially considering that your nameservers were named some of the most “clean” in terms of having the fewest potential trademark issues. (http://domainnamewire.com/2010/02/17/report-google-may-earn-497-million-a-year-from-typosquatting)

    Out of curiosity, do you think IP lawyers should choose either one side or the other when it comes to domain names – ie big business trademark protection vs. domain investor protection? I imagine that trademark interests would pay well, but it seems that representing them could be damaging to a firm’s reputation when it comes time to defend a domain investor.

    November 9th, 2010 at 8:26 pm

    michael berkens

    Elliot

    Excellent question.

    I can only give you my opinion.

    I think its a pretty small industry.

    While I can’t tell IP attorneys what to do, there are IP attorney’s like Mr. Berryhill to the best of my knowledge don’t play both sides of the field.

    They represent domain holders against oppressive and over reaching trademark holders as you see in this case.

    Trademark law is very complicated and some cases as we have both discussed, there is unquestionable abuse by domain holders, which are slam dunks where people are clearly abusing the system.

    Other situations like this case, Haywood.com, seem as ripe for abuse by trademark holders.

    I personally would not hire an attorney that plays both sides of the field on these types of cases and will take positions based on who is paying the bill.

    That’s just me.

    Each domainer will have to make their own determination on who they chose to represent them.

    November 9th, 2010 at 11:35 pm

    BFitz

    That’s emotion talking. I would prefer a firm who has been successful on both sides of this fight. IP law is complex and the more wins, regardless of position, the better.

    November 10th, 2010 at 10:23 am

    Brett Lewis

    Mike,

    If you received a letter from my firm, there was a reason for it. You may disagree, but there had to be a strong basis for sending the letter.

    I also disagree that an attorney should be forced to represent domainers or trademark holders. What do you do when a domainer develops a domain name into a business? Hire a different lawyer? What if the case involves two domainers?

    I do not make inconsistent arguments in the cases that I take on. I vigorously defend generic and geo domain names. Our record of winning cases is as good as anyone’s. Without knowing what you are referring to, and what letter you got, it’s impossible to respond, other than to guess. I’d welcome the chance to discuss your letter with you and your attorney.

    Brett

    November 12th, 2010 at 5:22 pm

    michael berkens

    Brett

    My attorney did respond to the letter over a week ago but we didn’t receive a response yet from your firm.

    By the way you personally sent the letter, not someone else in the firm.

    However I’m not going to litigate the case in public.

    But to your point, there are “accident attorneys” for example that proudly claim they never represent the insurance company.

    This may help these firms get clients that they would not otherwise get.

    Other law firms represent some insurance companies and sue other insurance companies at the same time.

    Ultimately its up to potential clients to choose whom they want to represent them and I think this issue is a valid consideration in that decision process.

    There are attorneys in the domain space, that represent domainers that never represent trademark interests.

    So yes I think its possible.

    Again I think this is a VERY small space and yes I was quite shocked knowing your background and you knowing mine to receive a C & D letter rather than a quick email or call 1st to discuss the issue.

    If you would like to discuss this personally which would be my preference you know where to find me

    Mike

    November 12th, 2010 at 5:36 pm

    Brett Lewis

    It’s also difficult to tell with privacy masking and offshore entities who’s who. To my knowledge, no letter went out of my office to your name. I might handle a given situation differently if I knew who the registrant actually was.

    Also, some of our recent complainant side cases have involved a former employee who registered the company’s name in his own name and tried to sell it back to the company for $100k, then redirected it to a competing business, a competitor who shared an office with a doctor and copied his trademark, and a party that copied another company’s business and trademark in another country and demanded $50k for the name. In my view, there are no sides. There are inequities. There are situations where someone is suffering harm.

    November 12th, 2010 at 5:54 pm

    Priv

    “If you would like to discuss this personally which would be my preference you know where to find me”

    Wouldn’t passing on the case be the ethical thing to do in this case?

    The other guy didn’t hire Brett to talk with the MHB privately at the possible penalty of getting bad press among domainers unless this was solved.

    November 12th, 2010 at 6:34 pm

    michael berkens

    Brett

    All of our 75,000 registration are owned by our company, Worldwide Media, Inc, with a NC address.

    We do not have privacy on any of our domains nor are our domains owned by an offshore entity.

    November 13th, 2010 at 2:02 am

    Brett Lewis

    In the words of Stephen Colbert, great American Patriot, we are going to have to agree to disagree.

    A growing number of domainers develop Websites into businesses and own common law and federally registered trademarks. Other domainers have portfolios that target trademark domains, including those of other domainers.

    It sounds appealing to say that a domain name attorney should choose sides and only represent one of them, but the reality is far more complex. When it comes to dictionary words and geo domains, and the BS arguments that many trademark attorneys make, we are consistently on the side of domainers. You also cannot always know all of the facts when you write a letter. It’s what you do with the information you receive in response that matters most.

    November 15th, 2010 at 10:44 am

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