Thu 16. Jan 2025, 13:12
The Estonian Domdevelo OÜ has filed a declaratory judgment action with the US District Court of Arizona because its domain cripto.com is the subject of a UDRP complaint for trademark infringement at WIPO by the Chinese Foris Limited based in Hong Kong, owner of the domain crypto.com.
Foris Limited's UDRP complaint was received by WIPO on November 26, 2024. Subsequently, as is usual in UDRP proceedings, the disputed domain, in this case cripto.com, was blocked. As a result of the blocking, the domain holder can no longer change the content and ownership of the domain and therefore cannot use it to its full extent. Among other things, this prompted Domdevelo OÜ to file a lawsuit with the competent court in Arizona via its lawyers (including domain lawyer John Berryhill) on December 20, 2024. The lawsuit also seeks a declaration that Domdevelo OÜ has not infringed the trademark rights of Foris Limited. The statement of claim states, among other things, that the complainant in the UDRP proceedings is not the trademark owner of the trademarks registered in November and December 2023 to which it refers. The trademarks belong to Foris Technology Pte Ltd. from Singapore, which is not a party to the UDRP proceedings. Moreover, the trademarks were only registered 22 years after the domain was first registered in September 2002 and two years after the Complainant purchased the domain in November 2021 for US$ 74,976. Furthermore, attempts by the defendant to register the word/figurative mark and the word mark “CRYPTO.COM” failed because the latter is descriptive in the defendant's case. There was also no trademark infringement for the defendant's trademark “CRYPTO.COM ARENA”, as neither the defendant nor the plaintiff used the term.
The plaintiff Domdevelo OÜ considers its claim to be justified on the basis of the Lanham Act, 15 U.S.C §§ Section 1114(2)(D)(v) & 1125(a), which, among other things, grants a registrant who is threatened with the loss of his domain under the UDRP a claim for injunctive relief and for the return of the domain if he can prove that he complies with the ACPA (Anticybersquatting Consumer Protection Act). In the UDRP proceedings, the complaining defendant claims to be the owner of trademarks registered with the USPTO, which is not true. However, if the defendant is found to be right and the domain is transferred to the complainant as a result of the UDRP decision, the plaintiff would suffer lasting damage and there would be no proper legal remedy to oppose the decision. Even now, the Complainant here also sought damages under the ACPA and a declaration that the Respondent has no trademark rights in the domain cripto.com, that the Complainant is the rightful owner of the domain, that the Respondent is unlawfully interfering with the Complainant's domain registration and that the Complainant should be ordered to pay the costs of the proceedings and attorneys' fees.
The UDRP proceedings launched on November 26, 2024 are still pending. It is currently unclear whether a decision will be made shortly or whether the proceedings will be suspended until the District Court of Arizona has ruled.
You can find the statement of claim at:
https://storage.courtlistener.com/recap ... 48.1.0.pdf