General Media Communications, Inc. v. Crazy Troll, LLC (No. 06 Civ. 40581 LAKFM, Order re: partial summary judgment, January 16, 2007), 2007 WL 102988 (S.D.N.Y.)
Plaintiff, General Media, is the publisher of Penthouse magazine. At one time, it owned the domain name penthouseboutique.com, but its bankruptcy trustee allowed it to lapse. General Media still has valid trademark rights in the Penthouse Boutique mark. Defendant Crazy Troll registered the domain name after it re-entered the general pool of names. General Media then brought an action under the UDRP to recover the domain name, which it lost, and also was found by the UDRP panel to be guilty of reverse domain name hijacking. General Media brought the current case under ACPA to recover the domain. Before the Court is General Media’s motion for partial summary judgment on the count in the complaint where it seeks a declaration that it acted in good faith in bringing the UDRP action.
The Court grants General Media’s motion, noting that the UDRP panelist that found otherwise didn’t have the full facts available to it. General Media’s claims met the required elements for bringing an action. It certainly had every reason to believe that Crazy Troll had no rights or legitimate interest in the domain name, and that it was using the name in bad faith.
Reverse domain name hijacking is where a trademark owner brings an action in bad faith against an entity that has been using a domain name in good faith, but has inferior trademark rights to that of the trademark owner. It is alleged where the trademark owner is using the power of the prior trademark registration to unfairly attempt to take the domain name away from the registrant.
Since Crazy Troll had no right or legitimate interest in the domain when it registered it, General Media brought its action in good faith, and therefore was entitled to summary judgment on its declaratory relief. Further adjudication will be needed on the remaining counts in the complaint.
Cyberlaw Central Commentary:
Just because a domain name is available for registration, it does not mean that it should be registered. The Plaintiff here had legitimate trademark rights that were violated when the domain was registered and used by the Defendant. We’ll see how the remaining counts are dealt with in future opinions, but I agree with this one.