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Internet Trademark Case Summaries

BroadBridge Media, L.L.C. v. Hypercd.com

106 F. Supp. 2d 505 (S.D.N.Y. 2000)

Under the mark HYPERCD, plaintiff offered software that converts and compresses analog-audio information into digital information.  Plaintiff advertised its HYPERCD mark and HYPERCD.COM domain name on millions of compact discs it distributed.  After plaintiff inadvertently failed to renew its domain-name registration for HYPERCD.COM, the registration lapsed and a Canadian individual registered the domain name.  After negotiations to regain possession of the domain name failed, plaintiff filed an arbitration complaint under ICANN’s Uniform Dispute Resolution Policy.  Two days later, plaintiff brought this in rem proceeding under the ACPA.  Ten days later, plaintiff sought a temporary restraining order and the court ordered the domain-name registrar to transfer the domain name to plaintiff.  At issue in this decision was plaintiff’s motion for preliminary injunction and defendant’s motion to dismiss.  Initially, the court rejected defendant’s argument that plaintiff gave up the right to proceed in court by filing a complaint under ICANN’s Uniform Dispute Resolution Policy (UDRP), as the UDRP acknowledges that civil litigation and UDRP complaints are not mutually exclusive.  Substantively, the court granted plaintiff’s motion for preliminary injunction.  The court found irreparable harm because plaintiff had advertised HYPERCD.COM on millions of its CDs and invested a significant amount of money developing its HYPERCD trademark.  The court also noted that plaintiff’s loss of the HYPERCD.COM domain name would make it impossible for plaintiff to fulfill its contractual obligations to clients and thereby damage its reputation and goodwill.  Plaintiff showed a substantial likelihood of success on the merits because its federally registered mark HYPERCD was distinctive and the HYPERCD.COM domain name was confusingly similar.  The court also held that the plaintiff must prove the “bad faith intent to profit” required by the ACPA in an in rem action, and then found that the third-party registrant acted in bad faith primarily because he repeatedly offered to sell or lease the domain name to plaintiff for an exorbitant amount of money.  Accordingly, the court ordered the domain name registrar to maintain ownership of the HYPERCD.COM domain name in plaintiff’s name.