Additional Brief Filed in Empower.com Suit

The Empower.com lawsuit is important for reasons that go beyond a single domain name. In this litigation, you have a company that used Empower in its branding long before the Plaintiff’s Empower brand existed. Despite the history of the Empower.com domain name, the Plaintiff filed a cybersquatting lawsuit to wrest control of the valuable one word .com domain name from the longtime registrant, Empower Geographics.

I believe a victory by the Plaintiff in this litigation could pose significant harm to the domain name aftermarket. In my opinion, it would become more risky to own valuable one word or short acronym domain names if a company would be able to use the legal system to get control of a domain name that has been rightfully owned by another entity for years before that brand was even created.

Put illustratively, if the Plaintiff wins and caselaw is established, someone with deep pockets could create a one word brand name next year and later litigate against a registrant who has owned the brand match .com domain name for 25+ years, even if that domain name had once been used by the registrant for its business.

From my reading of the filings to date, it appears that the Plaintiff believes a business could lose the right to keep their domain name if the business winds down. In the most recent Opposition to Motion to Dismiss filing on Friday, the Defendant compares a domain name to other business assets that can be rightfully sold or retained when a business closes.

Here’s an excerpt from the filing:

The ordinary terminal stage of any legitimate business is the selling off of its valuable assets, and not simply the mere abandonment of them. The Defendants, in view of Mr. Machinis’ advancing age and lack of immortality, are as entitled as any other business to decide when to sell the filing cabinets, copy machine, paper clips and, yes, the domain name into which years of hard work and goodwill were invested, and which was registered at a time when .com dictionary words were readily available. Had Defendants been operating a taxi business, it would be laughable to assert they somehow abandon legitimate title to their vehicles by parking them, putting “for sale” signs on them, and enlisting a broker to sell them, instead of continuing to transport passengers. That is all Defendants have effectively done with the domain name at issue here. The ACPA was not intended to grant any party, much less one with a junior nonexclusive claim to arbitrary use of a dictionary word, a “springing interest” in a legitimately registered and held domain name. The ACPA was also not intended to upend basic principles of. trademark law embodied in decisions under the Federal Trademark Dilution Act, which was the less specific tool in the anti-cybersquatting kit prior to the ACPA. “Nothing in trademark law requires that title to domain names that incorporate trademarks or portions of trademarks be provided to trademark holders.”

You can follow the case docket on CourtListener.com as it progresses.