Company’s response in WorkBetter.com lawsuit suggests that new businesses should be able to get old domain names.

Last week I wrote about a cybersquatting lawsuit filed against the owner of WorkBetter.com. A new company has sprung up using the descriptive name Work Better, and it wants the 16-year-old .com domain name.

Office Space Solutions asked the court for a temporary restraining order to prevent the domain’s owner, Jason Kneen, from transferring the domain name. Kneen filed a response, and now Office Space Solutions has responded to that (pdf).

It’s clear from reading Office Space Solutions’ response, that it actually believes that owning descriptive, dictionary and generic domain names with the idea of some day selling them to another company or person violates the law. It believes that the 1999 U.S. Anticybersquatting Consumer Protection Act (ACPA) was created to stop this practice.

Office Space Solutions’ lawyers write:

Defendant has not made a single use of the workbetter.com domain in the 16 years that he has held onto it, was aware that companies are considering legitimate businesses with respect to the name, and is resisting allowing the Plaintiff to obtain the domain for a business called Work Better that is now operating under a registered trademark of the same name.

According to the plaintiffs, any business that decides to start using a term and gets a trademark on it should be able to obtain the matching .com domain. The owner of a domain name matching a (now) trademark should not be able to renew the domain name, instead offering it to the owner of the new mark:

Allowing courts to apply the renewal date when considering whether there is a distinctive trademark in existence, stop the very harm that is imposed by what Kneen is arguing he should be allowed to impose. Following the reasoning of the cases cited by the Plaintiff in its opening brief, allows courts to prevent the warehousing of domains as is happening here to the detriment of businesses or businesspersons that want to start legitimate commerce around those names. By using the renewal date, it would not matter if somebody registered a domain 16 years ago or 60 years ago, because if they are not using the domain for any commerce whatsoever, and another business is, it is that business that should be allowed to use the domain with respect to the name of the business. Obviously, this result promotes commerce and reduces confusion.

You might need to re-read the two preceding paragraphs, as they’re pretty stupefying.

The lawyers continue, arguing that the public is harmed if the plaintiff, which so far looks be launching on the alternative WorkBetter.us domain name, is not allowed to have WorkBetter.com:

The opposite result, the one urged by Defendant’s counsel, is to allow warehousers or stockpilers of domains like Kneen to demand a payoff from the trademark owner or allow the public to simply be confused. There is no question that a trademark owner like the Plaintiff that established a business and continues to promote a business around the trademark Work Better, would be the appropriate source that the public should be directed to when typing in workbetter.com. But under the Defendant’s scenario, if the Plaintiff chooses not to pay the exorbitant price that the Defendant is demanding for the domain that he has warehoused, the public would be directed to whatever place Defendant sends the public when it searches for the Plaintiff’s legitimate business. Source confusion would be inevitable. This cannot possibly be the result that the legislature intended when it enacted the ACPA.

The purpose of the ACPA was to prevent people from registering existing famous trademarks with the purpose of selling them to the trademark holders. It was not to allow a new business to grab an existing .com domain name from someone else just because they aren’t using it.

Continuing:

The Defendant a highly successful international businessperson has flooded the blogosphere with messages that the Defendant and others like it should be required as a matter of policy, to pay whatever price the owner of a domain demanded. Defendant fails to discuss in his blogs that many times those that find themselves in the position of Plaintiff cannot afford a lawyer and cannot afford the payoff price and are therefore forced to create the scenario just reviewed where their business would operate under one name and the domain would exist in another source. Amazingly, counsel in her opposition brief, directs the Court to the blogs and disrespectfully suggests that the immense wisdom of this honorable Court should somehow be influenced by the blogs.

Hmm. I don’t think the opposition brief, which cites Domain Name Wire, suggests that courts should pay attention to what bloggers and commenters think about the law. But suggesting that new companies should be able to force a domain name owner to hand over a legitimately-owned domain name for whatever price the business operator wants is worthy of comment.

The plaintiff’s law firm, Bostany Law Firm, does have some experience in intellectual property law. Specifically, copyright and trademark law in the fashion, music and entertainment industries. Oh, and “Also Bostany Law Firm PLLC has a department handling “texting while driving” violations in NYC, with offices just blocks from the Department of Motor Vehicles.”

As for the new Work Better business, it looks like it’s just now gearing up to launch. On WorkBetter.us.