Internet Trademark Case Summaries

Novak v. Tucows, Inc.

2007 WL 922306 (E.D.N.Y. Mar. 26, 2007)

Plaintiff Robert Novak registered the “petswarehouse.com” domain name in 1997 and federally registered the mark PETSWAREHOUSE.COM in 2001. In 2003, an individual obtained a default judgment against Novak in an Alabama state court action for $50,000. Faced with the prospect of litigation in Alabama, Novak attempted to transfer his domain name to a different registrar, believing it to be held by a registrar in New York. Shortly thereafter, the Alabama plaintiff applied for a writ of execution with the Alabama court to obtain the “petswarehouse.com” domain from Tucows, the Canadian registrar for the domain. Pursuant to the Alabama court’s writ of execution, Tucows transferred control of Novak’s domain name to the court for public auction and the name directed Internet users to the local Sheriff’s office’s web page regarding the auction. The Alabama plaintiff purchased the domain at a public auction. The Alabama court’s decision was reversed on appeal, and Tucows returned control of the domain name to Novak. Novak then sued Tucows and other registrars for trademark infringement, dilution, cybersquatting, and various state law claims, claiming that his pet supply business had been destroyed due, in part, to the domain transfer carried out by Tucows. In connection with the registrars’ motions to dismiss, Tucows moved to strike several of Novak’s exhibits, including his screenshot print-outs from the Internet Archive’s “Wayback Machine.” The Wayback Machine “allow[s] a user to obtain an archived web page as it appeared at a particular moment in time.” Tucows challenged the submitted screenshots as unauthenticated and hearsay under Federal Rules of Evidence 901 and 801, respectively. The court granted Tucows’ motion to strike, finding the screenshots unauthenticated based on Novak’s lack of “any testimony or sworn statements attesting to the authenticity of the contested web page exhibits by any employee of the companies hosting the sites from which plaintiff printed the pages.” The court noted that “the web pages archived within the Wayback Machine are based upon data from third parties who compile the data by using software programs known as crawlers, who then donate such data to the Internet Archive, which preserves and provides access to it.” Thus, “the information posted on the Wayback Machine is only as valid as the third-party donating the pages decides to make it.” The court also noted that the web pages could not be authenticated without testimony or sworn statements of an “employee of the companies hosting the sites from which [Novak] printed the pages,” i.e., the Internet Archive.