The domain holder who lost a UDRP on the domain name RentMyPartyBus.com has filed a lawsuit in federal court in Arizona.
Plaintiff Aleksey Silenko is the Director of Business for Safeway Transit LLC, a Minnesota company who is the named registrant for the domain name rentmypartybus.com.
It’s a pretty interesting case, since the “trademark holder” was first incorporated on May 1, 2014 but in its trademark application to the USPTO it alleged first use in 2002.
Although the domain holder first filed a federal lawsuit where it lived the domain name registrar Godaddy allegedly refused to stop the transfer of the domain unless the suit was filed in its jurisdiction of Arizona, which is not in accordance with UDRP rules, but this lawsuit was filed in Arizona
Here are the highlights:
The Plaintiff Safeway Transit began using the mark “Rent My Party Bus” in October 2008 by displaying its website at rentmypartybus.com. It has continuously used the mark on Facebook since 2008 and on Twitter since 2009. It used the mark on print advertising, including business cards, as early as 2009.
Defendant Party Bus MN LLC was formed on May 1, 2014.
As part of the application to register “Rent My Party Bus,” Defendant Party Bus MN LLC submitted a specimen to demonstrate its use of the mark in commerce.
The specimen was a screenshot of Plaintiff’s domain holders Safeway Transit’s website.
Plaintiff Silenko’s company Safeway Transit LLC initiated a lawsuit for trademark infringement against Defendant in Minnesota Federal District Court, file number 15-3701 (JRT/HB) on September 21, 2015, with the expectation that the lawsuit would suspend the ICANN arbitration.
Defendant Party Bus MN, LLC, registered “Rent My Party Bus” as a service mark on the principal register of the US Patent and Trademark Office. In the application, it claimed to have exclusively used the mark at least as early as December 31, 2002, stating “The mark has become distinctive of the goods/services through the applicant’s substantially exclusive and continuous use in commerce.”
As part of the application to register “Rent My Party Bus,” Defendant Party Bus MN LLC submitted a specimen to demonstrate its use of the mark in commerce. The specimen was a screenshot of Safeway Transit’s website.
Defendant Party Bus MN LLC’s statements regarding his use of the mark “Rent My Party Bus” were false and made in bad faith with the intent to deceive the US Patent and Trademark Office.
On August 28, 2015 Defendant Party Bus MN LLC filed a complaint with Internet Corporation for Assigned Names and Numbers (ICANN), claiming ownership rights to Plaintiff’s domain name rentmypartybus.com.
On October 7, 2015, the Arbitrator reviewing the ICANN complaint regarding the domain rentmypartybus.com issued a default order to transfer the domain name from Silenko to Party Bus MN, LLC. Absent court intervention, including the filing of this Complaint, the domain will be transferred on October 21, 2015.
On October 15, Plaintiff Silenko amended the Minnesota complaint, becoming a named plaintiff and asserting violation of 15 U.S.C. § 1114(2)(D)(v) as a result of the Arbitrator’s October 7 decision.
Subsequently, GoDaddy, the domain registrar, has stated it will still implement the decision transferring Plaintiff’s domain to Defendant Party Bus MN LLC unless a lawsuit is filed in Arizona.
Defendant, through counsel, refused to stipulate to a stay of the Arbitrator’s decision pending the Minnesota action, necessitating this action.
Based on the allegations above, Plaintiff respectfully requests that the Court determines that Plaintiff Silenko to be the rightful owner of the domain name rentmypartybus.com.
