Plaintiff David Dent has won summary judgment in an ongoing case against Lotto Sport Italia SpA for trademark infringement. David Dent is represented by IP Law USA and John Berryhill. Lotto Sport is represented by Randazza Legal Group.
The complaint asked for the court to find that the plaintiff’s registration and use of domain names “lottostore.com” and “lottoworks.com” “is not unlawful pursuant to a claim of reverse domain name hijacking under the Anticybersquatting Consumer Protection Act (ACPA) provisions pf the Lanham Act.” Reverse domain name hijacking is the practice of a trademark owner suing or pressuring a domain name holder into relinquishing their rightfully-owned domain name.
Dent purchased these domains to be used for an online consumer lottery store. Defendant filed a complaint against the domain name “lottoworks.com”. Lotto Sport had allegedly used the word mark “LOTTO WORKS” for more than ten years in Europe and obtained trademark registration in the United States in 2018. The plaintiff purchased the disputed domain names in 2016; Lotto Sport filed a complaint with the World Intellectual Property Organization (WIPO), who concluded that the domain name, which contained the whole word mark and the “lottostore.com” domain names were confusingly similar to Lotto Sport’s “LOTTO” trademarks; it contains the word “lotto” and adds the common word “store”, which does not instinctively differentiate for users. WIPO concluded that because he registered recently, customers were most likely looking for defendant’s store when they clicked on plaintiff’s website.
Dent argued that he is entitled to summary judgment because “his re-registration of the domain names is not treated as an initial registration, he did not use the domain names, and even if he did register or use the domain names after he purchased them, it was not with a bad faith intent to profit.” He stated that his actions are within the safe harbor provisions in the ACPA since he had “reasonable grounds to believe the use of the domain name was fair use or otherwise lawful. On the other hand, Lotto sought summary judgment because Dent “cannot show that his registration and use of the domain names did not violate the ACPA and did not violate the greater Lanham Act because such registration and use created a likelihood of confusion with Defendant’s trademarks.”
The court granted the plaintiff’s motion for summary judgment for reverse domain name hijacking, and in turn denied the defendant’s motion. The court stated that plaintiff “did not unlawfully register or use at all, let alone unlawfully use, the disputed domain names.” Additionally, since Dent did not use the disputed domain names he did not violate the Lanham Act. As a result, the domain names will remain registered to Dent and will be “unlocked/reactivated” for his use.