Intellectual Property Law

Domain Name Misappropriation Case Set for Trial in the Western District

By Michael Atkins

The case between a Seattle law firm and its Web development vendor goes to jury trial on May 21. STL readers may recall that the Seattle-based law firm The Christensen Firm sued Chameleon Data Corp. and its president, Derek Dohn, on the ground that defendants allegedly 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, in order to get leverage over plaintiff in a dispute over the defendants’ bill.

This interesting dispute became less of a trademark case on Jan. 18, when Judge Zilly dismissed plaintiff’s Lanham Act and Washington State cybersquatting claims on the basis that the plaintiff’s marks were either generic (cc-lawfirm) or descriptive (The Christensen Firm).

One trademark issue still alive at trial is defendants’ claim for attorney’s fees as an “exceptional case” under the Lanham Act. Defendants’ trial brief argues:

“In this case, it was obvious that the Alleged Marks were generic, yet Christensen pursued her bogus trademark claims with full force. This alone warrants a determination that this case is exceptional and an award of Defendants’ reasonable attorneys’ fees and costs.

“Further Christensen never even produced any credible evidence that she had used the Alleged Marks as trademarks. Christensen is her surname, as well as the surname of numerous other people, all of whom have the right to use that name in connection with their own businesses. “CC law firm” has a number of generic meanings as indicated above. During the course of this trial, Christensen never produced any evidence indicating the Alleged Marks were anything other than generic. She produced no evidence indicating consumers view either of the Alleged Marks as denoting her as the single source of services offered in connection with that mark. …”

Given the arguments made in its motion for reconsideration (which the court denied), plaintiff undoubtedly disputes these allegations, though it does not address the fees issue in its trial brief.

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

Full post as published by Seattle Trademark Lawyer on May 06, 2008 (boomark / email).