V'soske, Inc. v. vsoske.com, 2001 U.S. Dist. LEXIS 6675 (S.D.N.Y. May 23, 2001); 2003 U.S. Dist. LEXIS 5025 (S.D.N.Y. Mar. 31, 2003).
Factual Background Edit
Plaintiff V'soske, Inc. manufactured luxury carpets and floor coverings since 1924. In 1951, plaintiff created V'soske-Joyce Ltd. to manufacture products in Ireland. Plaintiff later sold its interest in V'soske-Joyce to Michael Dixon in 1979, and the parties entered into an agreement that permitted V'soske-Joyce to use the V'soske trade name on rugs made in Ireland.
In 1994, plaintiff purportedly ended the agreement after V'soske-Joyce tried to directly compete in the United States market, but V'soske-Joyce continued to use the V'soske mark. In 2000, Tony Dixon, a principal of V'soske-Joyce, registered the domain names "vsoske.com" and "vsoske-joyce.com."
Trial Court Proceedings Edit
Plaintiff initially filed an in rem action under the ACPA against the "vsoske.com" domain name, but later moved to amend the complaint to assert claims for trademark infringement and unfair competition against V'soske-Joyce and an ACPA claim against Dixon, relying on newly discovered facts to support personal jurisdiction over those parties. In the alternative, plaintiff moved to amend the existing in rem action to include the later discovered domain name "vsoske-joyce.com."
The court granted leave only to amend the complaint to assert an in rem action against "vsoske-joyce.com" because of a lack of personal jurisdiction over V'soske-Joyce and Dixon. In addition, V'soske-Joyce moved for judgment on the pleadings on the ground, among others, that it came within the "safe harbor" provision of the ACPA and that plaintiff failed to adequately plead bad faith on the part of V'soske-Joyce. Plaintiff's amended complaint, however, specifically alleged that Dixon registered the domain names in bad faith. Accordingly, because the court had to accept this allegation as true for purposes of a motion for judgment on the pleadings, it concluded that V'soske had sufficiently stated a claim under ACPA.
The district court later denied plaintiff's motion for summary judgment regarding its ACPA and Lanham Act claims, finding that: (1) the 1994 agreement was not terminated by plaintiff under a 1990 decision by an Ireland court holding to the contrary, (2) there were genuine issues of material fact on whether the agreement was renewed in 1999, and (3) even if the agreement were renewed in 1999, a genuine issue existed on whether the license allowed defendant to register the domain names "vsoske.com" and "vsoskejoyce.com".
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