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Judge returns mixed bag in domain dispute ruling

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Both sides get some wins and losses.

Image of Pocketbook eReader

The judge in a dispute over issued a ruling on motions to dismiss.

Judge Dolly Gee has ruled on motions to strike and dismiss in a lawsuit over the domain name

PocketBook International SA, a company that sells ebook readers, tried to get the valuable domain name through a UDRP but lost the case. It subsequently filed a lawsuit in September 2020. SiteTools, Inc, which owns the domain, countersued with claims including reverse domain name hijacking and trademark cancellation.

The judge returned a mixed result for both parties:

Denied the plaintiff’s motion to dismiss the counterclaim for trademark cancellation based on abandonment.

Granted the plaintiff’s motion to dismiss the RDNH counterclaim on basis that the domain was only temporarily suspended, not indefinitely suspended, so this doesn’t qualify as reverse domain name hijacking. I always thought of RDNH in lawsuits as a way to recover up to $100,000 for the inconvenience of spurious cybersquatting claims, but Gee wrote:

In this case, although Defendants’ Domain was temporarily suspended “for the pendency of the UDRP proceedings,” the Domain is once again live. Counterclaim at ¶ 21. The Counterclaim makes clear that the UDRP proceeding against Defendants was unsuccessful, and Plaintiff currently has no right to the Domain. Any reverse domain name hijacking claim here is therefore preemptive. Defendants make no compelling argument to the contrary.

Denied the defendant’s anti-SLAPP motion.

Denied the plaintiff’s motion to strike the defendant’s affirmative defenses, other than the ones the defendant agreed to strike

Granted the plaintiff’s motion to strike references to its failed UDRP attempt:

The Court has already held that the UDRP proceeding has no precedential value in this litigation. April 13, 2021 Ord. at 6. Moreover, Defendants’ quotation from the UDRP panel
decision is not relevant to Defendants’ surviving abandonment counterclaim. See Counterclaim at ¶ 13. Because the quotation of the UDRP panel decision is thus “immaterial,” and may cause prejudice to Plaintiff by citing to the panel’s non-binding conception of the legal standard in that arbitration, the Court GRANTS Plaintiff’s motion to strike the quoted paragraph. See Fed. R. Civ. P. 12(f); Bianchi, 120 F. Supp. 2d at 841.

The judge’s decision can be read here (pdf).

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