Domain Dispute

A domain can be hijacked using bogus trademark claims.  Jon Locke of Director’s Choice Tour & Travel is attempting to hijack the domain name.  He spent 12 years trying to entice the sale of the domain.  Then when the domain was put for sale Jon Locke filed a domain dispute and claimed offering the domain for sale was “bad faith.”  They also claimed they used “DIRECTOR’S CHOICE” as a trademark continuously since 1997.  However, a check of the records at the US Patent and Trademark Office shows they have use a “Doing Business As” name of “Choice Music Events”

Serial Number 86335211
Filing Date July 11, 2014
Published for Opposition December 2, 2014
Owner (APPLICANT) Director’s Choice, LLP DBA Choice Music Events Jon Locke United States Locke Enterprises, LLC United States PARTNERSHIP TEXAS 10701 Upland Avenue Lubbock TEXAS 79424

Example from 2008  |  Example from 2014

Why do they want the domain?  Because they registered and they simply want the .com.  So what did they do?  They hired Matt Swyers of The Trademark Company.  A previous decision accused Swyers of Reverse Domain Name Hijacking.  In another case he tried to file patent dispute in a system for trademarks and the panel found the dispute to be “outside the scope” of the proceeding.

When someone files a complaint about a domain they get to choose the provider.  The National Arbitration Forum, an organization involved in a series of lawsuits and complaints about a bias towards the complainants who pay them:

On July 14, 2009, the Minnesota Attorney General Lori Swanson brought a lawsuit against the National Arbitration Forum for consumer fraud, deceptive trade and false statements in advertising.  Key to their complaint was allegations that the NAF had deliberately hidden its ties to the businesses it represented and actively encouraged their naming as mandatory arbitrators in contracts.  The National Arbitration Forum countered that its arbitrators were independent practitioners, which ensured that its arbitration was impartial.  However, citing legal costs, the National Arbitration Forum agreed the week after the filing to stop accepting consumer debt collection cases for arbitration.

Here is the complaint made on behalf of Jon Locke and Director’s Choice Tour & Travel:

Complaint | exhibits

Response | exhibits

Supplement to Complaint | Exhibits

Supplement to Response | Exhibits

They claim that they have used the name “Director’s Choice” as trademark continuously since 1997 and got an order to transfer the domain.   After asking to buy the domain over a period of 12 years they suddenly claimed “Bad Faith” when the domain was offered for sale.  They also claim that merely operating the domain confuses consumers through the search engines and takes their customers!  What do you think?

After owning a domain for 15 years a federal lawsuit must now be filed to keep the domain:

A domain name registrant whose domain name has been suspended, disabled, or transferred under a policy described under clause (ii)(II) may, upon notice to the mark owner, file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful under this chapter. The court may grant injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant.

An Opposition to their trademark application has also been filed.  They now deny everything, they even deny they filed the domain dispute in the first place!

Related News Stories:

Office of Medical & Scientific Justice Guilty Of Reverse Domain Name Hijacking – Matt Swyers of The Trademark store found to have tried to hijack a domain name using the dispute process.

Merry Christmas Trademark Holders: 15 Year Old Lost In UDRP

UDRP Filed on 14 Year Old Domain: Domain Holder Objects To 2014 Trademark Filing“This is nothing more than an attempted theft of property, nothing more or less than sticking a gun in someone’s face and asking them to hand over their watch.”