Quokka Sports Inc. (Nasdaq: QKKA) has filed suit against two New Zealand-based companies, claiming it negotiated the exclusive right to the AmericasCup.com domain name with trademark holder America's Cup Properties last April. However, Justin Nicholas and Arron Brett of New Zealand's Cup International Ltd. and Cup International Internet Ventures, the defendants in this case, are the current holders of the domain.
Quokka's suit alleges use of the domain constitutes trademark infringement, which is protected under traditional U.S. trademark law and the anti-cybersquatting act, signed into law on Nov. 29. The suit is believed to be the first time a plaintiff has invoked the act in pursuing their case.
'Classic cybersquatters'
"They seem to be classic cybersquatters," said Adam Belsky, lawyer for Quokka Sports. "They registered a bunch of dotcoms having to do with famous sailing races and names."
Belsky claims the site illegally purported to be an officially endorsed site of the America's Cup race, accepting advertising and even providing links to sites that offer to take bets on the Cup, something the owners of the famous yachting race are strongly opposed to.
Judge D. Lowell Jensen issued a temporary restraining order against Nicholas and Brett on Dec. 8. In a hearing scheduled for Dec. 22, Lowell is expected to decide whether to grant a preliminary injunction against the current holders of the domain. He could also transfer the domain to Quokka until a final ruling in the case is made.
Stephen Mutkoski, an intellectual property lawyer for Seattle-based firm Preston, Gates, and Ellis, has been closely watching the development of this case in the hope it may set a precedent for future cases involving violations of the anti-cybersquatting act.
"We represent a lot of technology firms that have Internet sites with trademarks that aren't necessarily famous, so the new law would allow some of the clients to sue for domain names that were speculatively gathered by domain name hoarders," said Mutkoski.
In international waters
The future enforcement of the act remains cloudy, however, because United States law typically cannot be applied overseas.
In this case, the AmericasCup.com domain was registered with a U.S.-based registrar, Network Solutions Inc., so the plaintiffs are able to argue the case falls under U.S. jurisdiction. If a judge in a countersuit filed by the defendants in New Zealand court sides with the current domain name holders, things will get "really complicated," according to Belsky.
Regardless of this case's outcome, Belsky, who specializes in Internet law, plans to continue pursuing cases using the new anti-cybersquatter act.
"It [the act] shows that cybersquatters aren't going to be able to get away with this any longer. You can't just take someone's trademark and use it as a domain name in the hope you can profit off of it," said Belsky.
