Andy Booth Responds to UDRP with Federal Lawsuit

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A UDRP was filed against the generic SmartWallet.com domain name at the National Arbitration Forum. SmartWallet.com is domain name owned by Andy Booth and his company, Booth, Ltd. After being notified of the UDRP filing, Andy announced he was going to turn the tables and file a lawsuit in federal court.

I was just notified that the complaint was filed (pdf) yesterday by David Gingras as local counsel and Stevan Lieberman as lead counsel. The lawsuit was filed in the United States District Court, District of Arizona. That jurisdiction was chosen because SmartWallet.com is registered at GoDaddy, and a complainant must agree to the registrar’s jurisdiction when filing the UDRP.

According to the lawsuit filing, the domain name was acquired in a private acquisition earlier this year for $25,239.50. I would imagine Andy’s company bought the domain name because of the generic nature of the “smart wallet” term and its ability to be useful in a number of industries, particularly related to cryptocurrency.

In the lawsuit, Booth, Ltd. is suing for a finding of Reverse Domain Name Hijacking and is seeking to cancel the federal trademark registered to the complainant that is apparently the impetus for the UDRP filing. Because of the lawsuit, the UDRP filing will likely get thrown out.

This is a bit of a gamble for Andy and his company, as litigation can get expensive very quickly compared to a UDRP defense. On the other hand, with SmartWallet.com being a generic domain name, the company that filed the UDRP could end up having to pay a high penalty for filing the UDRP, as a Reverse Domain Name Hijacking ruling in federal court can come with a $100k penalty.

At the very minimum, this action could serve as a warning to other companies who are contemplating a UDRP filing since they are often done to save time and money vs. a federal Lanham Act cybersquatting lawsuit. I will keep my eyes on the litigation docket to see how this litigation progresses.

8 COMMENTS

  1. Unrelated USPTO applications go back to 1992 showing the common use / generic nature of the term SMARTWALLET or SMART WALLET – nothing unique about it.
    Secondary meaning already – i do not think so with countlessUnrelated non-dot coms reserved years ago – including the live site TheSmartWallet.com – which does not look to be from the same complainant.
    Go for it Andy – collect your $100K –
    Bri

  2. The problem is even if they rule a $100k penalty or any amount penalty in favor of Andy Booth…no one has ever collected…they just don’t pay up and you are never able to collect…and u still end up with lawyer fees that u have to pay…but it’s still good to teach reverse domain hijackers a lesson and it’s good overall for the domain industry.

    • I always heard was extremely hard to collect against a person that lost a lawsuit, but easier to collect against a company that lost a lawsuit.

  3. It makes me worry about my domains that were registered prior to an exact match trademark for it. Always wondered why a big company would not bother simply typing the matching domain for their planned trademark prior to registering and just cancel everything? Reading this article kind of nails my suspicions. These companies actually register Trademarks regardless of an existing domain name registered prior to TM for the express purpose of planning a UDRP? and hoping the domainer does not have the money to defend it?

    What hope does any domainer have? Even if you registered a domain prior to TM you are still at risk of a UDRP? Some of the big time domainers really need to band together and pay the expense to put some new law in the books that if a domain is registered prior to TM that a TM holder can’t file a UDRP. Period. Why has this not be done yet so that it’s officially black and white and in the books?

    Apologies if this sounds naive. I just feel all of this in the future can be avoid if some kind of law was “in the books” where a simple question be the court would make it an open and shut case.

    Court Clerk: “Was the domain registered prior to TM?”

    No?

    Then no you cannot file a UDRP. No exceptions.

    • Cannot work that way, not that easy, sorry.

      For example lets go with your suggestion and say a TM was registered after as grounds for automatic dismissal, fine.

      Does this mean the complainant doesn’t have a TM currently or the name is not confusingly similar or I am not using it in bad faith?

      See the issue.

  4. “Apologies if this sounds naive. I just feel all of this in the future can be avoid if some kind of law was “in the books””
    Trying going to an angry biased divorce court a couple of times that interprets “Laws in Books” the way they want to 🙂 Their are rules no matter what you hear or read……
    Just angry courts that hate their own guts – and hate risk taking successful entrepreneurs.

    In that spirit, In this case (Andy is a big Risk taker as well) some great (and sadly true) comments have been made in terms of actually collecting on the $100K frivolous claim plus fees. After about $25K-$30K have been spent on both sides (those poor lawyers – you know) and the judge has made an opinion on summary judgement a few months down – the complainant may need to post bond to cover those fines and costs – and they will start talking. So at this point Andy will be in it $50K including his original purchase of the domain.

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