Intellectual Property Law

Western District Dismisses Law Firm's Cybersquatting Claim Against Vendor

By Michael Atkins

Seattle-based solo law firm The Christensen Firm claims it’s having trouble with its Web development vendor. Last March, if filed suit in King County Superior Court against Chameleon Data Corp. and its president, Derek Dohn, on the alleged ground that defendants transferred ownership of plaintiff’s four domain names (thechristensenfirm.com, thechristensenfirm.net, christensenfirm.com, and cc-lawfirm.com) to themselves without plaintiff’s authorization, and shut down email service to addresses associated with plaintiff’s primary domain name, cc-lawfirm.com. Plaintiff claims defendants did so to obtain leverage in the parties’ dispute over the defendants’ bill. Defendants subsequently removed the case to the Western District.

On Jan. 31, Judge Thomas Zilly granted defendants’ motion to dismiss plaintiff’s cybersquatting and Consumer Protection Act claims on summary judgment. The minute order does not explain the basis for the decision, but the motion for reconsideration plaintiff filed today seems to shed some light on the subject.

Plaintiff stated in its motion: “On January 31, 2008, this Court granted Defendants’ motion for summary judgment on Plaintiff’s Anti-Cybersquatting and Consumer Protection Act claims on the basis that the Plaintiff’s marks were either generic (cc-lawfirm) or descriptive (The Christensen Firm).”

Plaintiff stated both rulings constituted “manifest error.” It argued the court improperly dissected plaintiff’s trademark, cc-lawfirm, and found the “lawfirm” portion is generic for legal services, and “The Christensen Firm” is descriptive without a showing of secondary meaning. Plaintiff argued its mark is instead suggestive and, therefore, inherently distinctive, and that it had acquired secondary meaning in any event.

Under Local Rule 7(h), defendants need not (and may not) respond unless the court requests that it do so.

The case cite is The Christensen Firm v. Chameleon Data Corp., No. 06-337 (W.D. Wash. Jan. 31, 2008) (Zilley, J.).

Full post as published by Seattle Trademark Lawyer on February 14, 2008 (boomark / email).