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Newsguy v. Yomtobian

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Citation Edit

Newsguy, Inc. v. Yomtobian, 2004 WL 2944051 (N.D. Cal. Dec. 20, 2004).

Factual Background Edit

Plaintiff's predecessor used the domain name "" for a Usenet service that allowed users to read and post items from various Usenet newsgroups. Plaintiff owned a federal registration for the NEWSGUY mark. Defendant registered the domain name "" about a year after plaintiff's first use of NEWSGUY. Defendant used this site, which he called "," mainly to complain about his domain name registrar.

In 2002, plaintiff's predecessor filed a UDRP complaint against defendant. Although the UDRP panel found that "" was confusingly similar to plaintiff's NEWSGUY trademark, it ruled in defendant's favor because defendant had rights to, and legitimate interests in, the domain name and because of a lack of evidence that defendant used the domain name in bad faith.

Trial Court Proceedings Edit

In February 2004, plaintiff sued defendant for trademark infringement and cybersquatting. The court earlier issued a temporary restraining order and preliminary injunction against defendant, appearing pro se, enjoining him from operating the "" website.

After the preliminary injunction, defendant offered to transfer the domain name to plaintiff, but plaintiff apparently did not respond. This decision addressed plaintiff's motion for summary judgment. On the issue of infringement, the court found plaintiff's trademark NEWSGUY valid because defendant did not rebut the presumption of validity provided by plaintiff's registration. The court also noted that the parties' marks were "remarkably similar," differing only by the "s" at the end of "newsguys." According to the court, "[t]his alone, is sufficient evidence of a likelihood of confusion among Internet users."

In addition, plaintiff offered evidence of actual confusion — a potential user of plaintiff's service reported that they believed plaintiff's website was down because they had accidentally typed "" instead of "" Defendant failed to offer any evidence to rebut this likelihood of confusion, and the court granted summary judgment on plaintiff's claim of infringement.

The court denied summary judgment, however, on plaintiff's ACPA claim. The court noted that some of the bad-faith factors favored plaintiff: defendant did not possess any trademark rights in NEWSGUYS, and he changed the name of the registrant of his domain several times during the litigation. But other factors favored defendant: there was no evidence that he offered to sell the domain name; defendant claimed he developed the "" website without knowledge of ""; defendant earlier had offered to transfer the domain name to plaintiff; and defendant continued to operate his website in reliance on the UDRP decision in his favor.

Source Edit

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