Jeffrey Wilens D/B/A Lakeshore Law Center filed a federal lawsuit today against Google, the parent company of Word Press Automatic, Inc, and the registrar TLDS L.L.C. which appears to be owned by Web.com for trademark infringement and violation of the ACPA on his common law marks of Jeffrey Wilens and Lakeshore Law Center along with a bunch of registrants referred to as “Does”
The eight page complaint is in my opinion less than impressive.
We will quote from the Complaint below but basically Mr. Wilens who is an attorney and claims he has common law rights in his name since at least 1992 didn’t bother to register his own name, JeffreyWilens.com since 1992.
Actually no one registered the domain name JeffreyWilens.com until December 9th 2013 when it was registered by a “Konstantin Petrov” of Russia.
The domain was registered through TLDS L.L.C. d/b/a SRSPlus which seems to be a owned by Web.com so he sued them
Mr. Wilens sued Word Press because the guy in Russia used Word Press to put the domain name JeffreyWilens.com into a site.
One of the owners of the domain names is using Google’s Blogger.com service and therefore Google was sued
However what is not mentioned anywhere in the lawsuit is why Mr. Wilens didn’t invest $10 to register the .com domain of his own domain for some 25 plus years when it was available to be registered,
I also have no idea of why Mr. Wilens didn’t file a UDRP on the domain(s) which is much cheaper and quicker rather than sue Companies like Google, Web.com and Word Press in federal court none of which registered the domains.
Also I have no idea of why Mr. Wilens doesn’t seem to know that federal law protects registrars from a lawsuit when a third party uses their service to simply register a domain.
I also have a problem with the statement in the Complaint that the domain holders name “is obviously a fake name and address and in no way related to Plaintiff”
Well I have no doubt that Mr. Petrov is not related to Mr. Wilens but have no idea of how he can say its obviously a fake name.
Finally not sure why Mr. Wiliens is not as upset with the registration of LakeShoreLawCenter.com which was just registered in January under privacy at Reg.com which is the Russian registrar Reg.Ru.
That company was not named in the lawsuit.
Mr. Wilens does own some domains, therefore he knows something about domains and how to register them.
Blame for failing to register you’re own domain name, especially if your a professional like an attorney who uses that name in business and to then fails to register the name of you’re own law firm for more than two decades seems to fall squarely on the attorney, not Word Press or the Registrar or Google.
That’s my two cents here are the highlights of the Complaint:
“”Plaintiff is an attorney licensed in the State of California
Plaintiff holds trademarks or service marks on “Jeffrey Wilens” and “Lakeshore Law Center.”
He has had these since at least 1992.
These common law trademarks are pending registration under serial numbers 86193592 and 86193589 respectively.
Plaintiff operates a national law office under these trademarks and maintains websites at lakeshorelaw.org and creditrepairdebt.org as well as at other Internet locations.
There is only one attorney named Jeffrey Wilens in the USA and only one law firm named Lakeshore Law Center in the USA.
Plaintiff is known for a specialized practice in consumer and employment law and it is not unusual for him to receive inquiries from potential clients throughout the United States.
Over the past 20 years, Plaintiff has spent tens of thousands of dollars advertising and promoting his personal and business name.
Defendant TLDS L.L.C. DBA SRSPLUS is the domain name registrar for jeffreywilens.com.
The registrant for that domain name is listed as “Konstantin Petrov, Montazhnikov 24, Sankt-Peterburg, Russia,” which is obviously a fake name and address and in no way related to Plaintiff.
The registrant also lists a phone number of 812-000-0000, which is a fake number.
Doe Defendant No. 1 is a currently unidentified person who has created a number of websites for the purposes of diverting search engine traffic by clients and potential clients of Plaintiff from Plaintiff’s websites to the websites controlled by Doe No. 1. He did this for purposes of commercial gain and with intent to tarnish or disparage Plaintiff’s marks by creating likelihood of confusion.
To that end, Doe No. 1 created an account with AUTOMATTIC, INC. so that he could create WordPress-hosted websites.
Doe No. 1 was allowed by this defendant to use the trademarked names in prominent fashion. Specifically, Doe No. 1 was allowed by AUTOMATTIC, INC. to create websites using the names: lakeshorelawcenter.wordpress.com; attorneyjeffreywilens.wordpress.com; jeffreywilenslawyer.wordpress.com; unitedvictimsofjeffreywilens.wordpress.com; and jeffreywilenslakeshorelaw.wordpress.com.
Similarly, Doe No. 1 created an account with GOOGLE INC. which allowed him to created a Blogger hosted website using the name jeffreywilens.blogspot.com.
Similarly, Doe No. 1 hired SRSPLUS to register the name “jeffreywilens.com” for a website owned by Doe No. 1. SRSPLUS was immediately aware of the fake registrant information provided by Doe No. 1.
Each of the Defendants knew or should have known Doe No. 1 was not Plaintiff and had no legitimate purpose for using Plaintiff’s personal or business name in the domain name of the websites.
Each of the Defendants is aware their actions were and are contributing to the trademark infringements in that Plaintiff provided written notice on or about March 3, 2014 to each of the Defendants and provided specific information describing the trademark infringements and each particular defendant’s role in perpetuating them. Each of the Defendants responded in writing and stated they would not take any actions to stop the trademark infringements which they were assisting absent an order from a court of competent jurisdiction.
Defendants violated 15 U.S.C. § 1125, subdivision (a) (1) by using in commerce the terms or names “Jeffrey Wilens” and/or “Lakeshore Law Center” in a manner that is likely to cause confusion or to deceive as to the affiliation, connection or association of the ownership of the aforementioned websites.
As a result of these trademark infringements, Plaintiff has suffered damages in that potential and actual clients have been misdirected to the offending websites by virtue of the fact they appear prominently in the list of websites generated by “Googling” Jeffrey Wilens or Lakeshore Law Center. If Doe No. 1 had not been allowed to use the names “Jeffrey Wilens” or “Lakeshore Law Center” as the domain names, the search engines COMPLAINT would not have ranked these offending websites so highly.
Pursuant to 15 U.S.C. § 1116 and 15 U.S.C. § 1117, Plaintiff is entitled to recover equitable relief in the form of an injunction and cancellation of the improper domain names, and damages sustained by Plaintiff.
SECOND CAUSE OF ACTION FOR VIOLATION OF THE ANTI– CYBERSQUATTING PROTECTION ACT (ACPA), 15 U.S.C. § 1125(d)
Plaintiff has trademark rights to the domain names;
The domain names consist of the legal name of Plaintiff and of his business;
There is no history of prior use of these domain names by Defendants before October 2013;
Defendants intended to divert consumers from Plaintiff’s legitimate websites to sites controlled by Defendants which were set up to harm the goodwill represented by the marks and to disparage the marks and create confusion;
Doe No. 1 provided false contact information when applying to register the domain names and Defendants knowingly published that false information; Doe No. 1 registered or set up multiple websites with domain names Defendants knew were identical or confusingly similar to the marks of Plaintiff and Defendants permitted him to do this.
Pursuant to 15 U.S.C. § 1116, 15 U.S.C. § 1117 and 15 U.S.C. § 1125 (d) (1) (C), Plaintiff is entitled to recover equitable relief in the form of an injunction, forfeiture or cancellation of the domain names being used by Doe No. 1 and transfer of same to Plaintiff, and damages sustained by Plaintiff.
31. In the alternative to actual damages, Plaintiff may elect to receive statutory damages of $1,000 to $100,000 per domain name from Defendants.
WHEREFORE, Plaintiff prays for judgment on all causes of action against Defendants as follows:
1. For a permanent injunction enjoining Defendants from misusing Plaintiff’s trademarks or service marks and cancellation of domain names and/or transfer of them to Plaintiff;
2. For actual damages on the first and second causes of action in an amount according to
proof;
3. For statutory damages of $100,000 for each domain name that was misused as alleged
above on the second cause of action;
4. For interest on the sum of money awarded as damages”””
The case was filed in the United States District Court for the Northern District of California.
