I recently successfully represented Mr. Ahmad Miski in a matter originally captioned as “The Great Socialist People’s Libyan Arab Jamahiriya and the Embassy of the Libyan Arab Jamahiriya v. Miski.” Stated another way, my client was sued by the “Embassy” of Libya. The case was a domain name matter involving the domain names embassyoflibya.org, libyaembassy.com, libyaembassy.org, and libyanembassy.com. Read court’s full decision here.
My client is a “certifier” of documents via his firm known as the Arab-American Chamber of Commerce. Stated another way, he works with third party businesses to have documents “legalized” by the various embassies in the Arab world. While embassies can “legalize” documents, my client does not, and cannot, offer that service and the Plaintiff and the Defendant are not direct competitors. Plaintiff alleged that my client’s use of the domain names to promote his business was an infringement of its common law trademark in the term “Libya Embassy” and attempted to gain control of the domain names in question.
After a full bench trial, which is relatively rare in these types of disputes, District Court Judge Reggie Walton ruled, correctly in my mind, that the Plaintiff had failed to demonstrate that it had trademark rights in “Libya Embassy” for purposes of legalizing documents and my client prevailed in his efforts to retain control of the domain names.
In my mind, this case was interesting for a variety of reasons.
First, I was frankly surprised at the minimal demonstration of trademark rights by the Plaintiff in this matter. When alleging common law rights, the burden is on the Plaintiff to prove that its mark is “famous” enough to be legally protectable. In this case, the Plaintiff did not produce a very strong record of use in commerce. Among other issues, the Plaintiff referred to itself using a variety of inconsistent titles, including “Libya Bureau” and “Embassy of the Libyan Arab Jamahiriya.” Plaintiff also did not present substantial marketing or survey evidence that would indicate strength of its marks. Finally, testimony at trial indicated that the Plaintiff did not even keep consistent records of the number of documents that were legalized each month.
While I appreciate that reasonable minds may disagree, I’m not sure the Plaintiff was realistic about its ability to prove its common law trademarks given the evidence presented at trial. On the other hand, I suspect the Plaintiff did not expect to be forced to fully demonstrate its rights, either. I often see “bigger” plaintiffs file suit against “smaller” defendants in the hope that the matter will be settled well before trial when a defendant balks at the potential costs of defense compared to the value of the domain name. I applaud Mr. Miski for properly and comprehensively defending himself in this matter and I would encourage other domain name holders with credible defenses to do the same.
Second, this case was interesting for the political undertones. The United States and Libya maintained relations from the 1950s until 1986, when an Executive Order by President Reagan imposed unilateral sanctions on Libya. The 1988 terrorist bombing of Pan Am Flight 103 near Lockerbie, Scotland, was a watershed moment in the strained relations between the two nations.
These strained relations were relevant in the case because the Plaintiff had to demonstrate consistent commercial use of its alleged trademark to demonstrate rights to the domain names. The fact that Defendant registered the domain names during a period in which formal U.S./Libya relations were not in effect was relevant in disputing the Plaintiff’s alleged trademark rights. Defendant argued that he could not be violating a trademark if an alleged trademark holder was not even operating in the relevant commercial space. Alternatively, we argued that if a trademark did exist prior to the sanctions, the purported mark would have been abandoned for purposes of trademark rights analysis.
While Judge Walton did not base his decision on this fact, I’m of the view that a unilateral imposition of sanctions should be considered “abandonment” when evaluating trademark rights. Unilateral impositions of sanctions are not generally meted out by a political actor without some identifiable reason. If sanctions are imposed it is not a logical leap to assume that a purported mark holder did something to deserve those sanctions. Judge Walton’s opinion does not reach this issue, given the Plaintiff’s failure to prove rights in its mark, but I think it would have been interesting precedent if it had.
At the end of the day, this was a good decision that came to the right result. I’m pleased that Mr. Miski prevailed in his lawful defense, but this case is also an excellent reminder that domain name matters rely on trademark rights. Plaintiffs need to be realistic about their rights before instituting similar matters and Defendants should not be afraid to defend their rights when lawfully employing descriptive domain names.
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