Judge rules Pocketbook.com owner isn’t committing trademark infringement or cybersquatting.

Pocketbook International, a maker of e-readers, has lost a cybersquatting and trademark infringement battle.

A judge has handed a big victory to SiteTools, Inc., the company that owns the valuable Pocketbook.com domain name.

Pocketbook International SA filed a lawsuit to try to get ownership of Pocketbook.com after its attempts to buy the domain, and then get it through a UDRP, failed.

SiteTools filed for a Motion for Summary Judgement. U.S. District Judge Dolly M. Gee just granted the motion for the important parts of the lawsuit (pdf): trademark infringement and cybersquatting.

On the trademark infringement front, it’s important to note that Pocketbook sells e-readers; Pocketbook.com is used for a financial product. Both parties have trademarks for PocketBook.

Judge Gee noted there is unlikely to be any confusion between the companies’ use of the marks. She noted that the confusion Pocketbook cites is confusion over the company’s web address, not the trademark:

Pocketbook has provided evidence of confusion in that publications have accidentally linked to Pocketbook.com instead of Pocketbook’s website when writing about Pocketbook, but this is not evidence of confusion between the marks, only evidence of confusion about Pocketbook’s web address. Pocketbook has not presented any other evidence of actual confusion, likely because actual confusion would be implausible.

She continued:

The Court concludes that the majority of the factors weigh against finding a likelihood of confusion. Because Pocketbook’s and Defendants’ products are so dissimilar, there is nothing that would cause confusion here except Defendants’ use of the domain name Pocketbook.com as the web address for Defendants’ site, which is more properly addressed in an ACPA claim. The Court therefore GRANTS Defendants’ MSJ as to Pocketbook’s trademark infringement claim.

On the Anticybersquatting Consumer Protection Act (ACPA) claim, Gee looks at Ninth Circuit precedent, which says the date of initial domain registration is what matters. In this case, that was 1997, well before Pocketbook International SA had U.S. trademark rights.

Here, Pocketbook.com was undisputedly registered in 1997, long before Pocketbook’s use of either of its trademarks. Defendants acquired the domain name in 2010. Under GoPets, there is no question that Defendants’ re-registration did not constitute a violation of the ACPA.

Pocketbook argues that, where evidence of bad faith arises after registration, any subsequent re-registrations (such as Defendants’ re-registration in 2019) constitute a violation of the ACPA. Pocketbook’s argument runs counter to the Ninth Circuit’s holding in GoPets and to the plain language of the statute…

…The only logical understanding of the Ninth Circuit’s reasoning is that the time of initial registration is the only time an ACPA bad faith claim will arise. The text of the ACPA’s cyberpiracy provision accords with the Ninth Circuit’s interpretation. The ACPA makes distinctiveness at the time of registration of the domain name a condition for liability. If distinctiveness at the time of re-registration constitutes distinctiveness at the time of registration, as Pocketbook argues is the case in other circuits, then bad faith that arises after the initial registration may give rise to a new ACPA claim. But in this circuit, where distinctiveness at the time of registration means at the time of initial registration, distinctiveness at the time of initial registration is a condition for liability, and bad faith that arises after initial registration will not give rise to ACPA liability.

Here, Pocketbook.com was registered in 1997, long before Pocketbook began to use either of its marks. The Court therefore GRANTS Defendants’ MSJ as to Pocketbook’s ACPA claim.

(A dispute over Canvas.com is in the tenth circuit, and the district judge there believes that “re-registration” resets the date.)

The judge also had some harsh words for Pocketbook International’s lawyers and threatened monetary sanctions:

Pocketbook interposes evidentiary objections to Defendants’ evidence in support of each of Defendants’ proposed undisputed facts, including facts which Pocketbook agrees are undisputed. Indeed, Pocketbook asserts that Defendants’ evidence is “all inadmissible.” Pocketbook’s Evidentiary Objections at 3 [Doc. # 60-6]. Such blanket objections are abusive, frivolous, and inappropriate make-work. The Court admonishes Pocketbook’s counsel that future filings that interpose such flagrantly meritless blanket evidentiary objections will not only be summarily denied but will also result in the imposition of monetary sanctions.

And:

The Court also notes that Pocketbook objects to evidence introduced by Defendants while in the same filing offering the same or similar evidence in support of its opposition. For example, Pocketbook objects to an action from the USPTO refusing Pocketbook’s trademark application on the basis that the “statements” made by the USPTO are hearsay, see Pocketbook’s Evidentiary Objections, SUF 8, yet Pocketbook asks this Court to take judicial notice of the same type of action from the USPTO.

The net-net is that the crux of the case has been dismissed. The remaining arguments are a fight over trademark cancellation.

Milord & Associates PC is representing Pocketbook International. Michael Rodenbaugh is representing SiteTools.

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