Intellectual Property Law

First-to-File Rule Convinces Western District to Transfer Cybersquatting Case

By Michael Atkins

On Nov. 17, the Western District transferred the cybersquatting case of eNom, Inc. v. Philbrick to the District of New Hampshire.

Judge Robert Lasnik took that step based on the first-to-file rule and in the interests of justice in light of a case between the parties in the District of New Hampsire that has been pending for 14 months. The case Philbrick’s Sports owner Daniel Philbrick filed against Bellevue-based domain name registrar eNom, originally focused on philbricksports.com and philbricksports.net — domain names that Mr. Philbrick claims are identical or confusingly similar to his trade name and trademark.

After filing suit, Mr. Philbrick stated his intent to seek leave to add claims involving a third domain name, philbrickssports.net. eNom then filed its action in the Western District for declaratory judgment that its registering, using, and trafficking in the third domain name does not constitute cybersquatting or violate trademark laws.

In deciding Mr. Philbrick’s motion to dismiss or, in the alternative, to transfer the action, the court found: “Despite the additional claim in this case [for declaratory judgment], the factual and legal issues in the two cases are overwhelmingly similar. Both cases involve liability under the [Anticybersquatting Consumer Protection Act], the Lanham Act, the New Hampshire Consumer Protection Act and New Hampshire common law. Both cases involve the legality of eNom’s registration, use and trafficking of the third domain name. An adjudication of the parties’ rights in one case would necessarily affect their rights in the other case. Moreover, substantially the same evidence will be presented in both actions. Both cases arise out of the same nucleus of operative facts, so simultaneous adjudication of both cases would waste judicial resources, multiply the proceedings, undermine judicial efficiency, and risk conflicting determinations of the parties’ legal rights.”

The court also found if it didn’t transfer the case based on the first-to-file rule, it would do so pursuant to 28 U.S.C. § 1404(a), which permits a court to transfer a civil action “for the convenience of the parties and witnesses [and] in the interest of justice … to any other district or division where it might have been brought.

“In this case, Philbrick suffered the alleged injury in New Hampshire. New Hampshire is Philbrick’s chosen forum, and he filed suit long before eNom filed this action. Philbrick’s witnesses are in New Hampshire, but eNom’s are in this district. Both parties assert claims under New Hampshire state law. Finally, transferring this action will likely result in consolidation of the two cases, so the issues will be tried efficiently, expeditiously, and in a cost-effective manner. Therefore, the relevant factors weigh in favor of transferring this case to the United States District Court for the District of New Hampshire.”

The case cite is eNom, Inc. v. Philbrick, 2008 WL 4933976, No. 08-1288 (W.D. Wash. Nov. 17, 2008) (Lasnik, J.).

Full post as published by Seattle Trademark Lawyer on November 25, 2008 (boomark / email).