News Brief

Wilson Elser IP team wins transfer of disputed domain name

April 20, 2010

Adam R. Bialek (Partner-White Plains), with the assistance of Amna Arshad (Associate-McLean), successfully obtained an order in U.S. District Court, Eastern District of Virginia, directing the transfer of a domain name that was being wrongfully withheld by a client's former Polish member and licensee.  In this rem action, the court upheld that a foreign licensee of the client's trademark had wrongfully withheld and misused a domain name comprised in part of the client's famous trademark after the termination of the member's license.

The court found that in rem jurisdiction was proper over the property consisting of the domain name and ordered that the operator of the dot com registry, a non-party, must transfer control over the disputed domain name to the client.  As this domain was the root for the member accounting firm's email addresses, the court order transferring the domain provided significant leverage for Thomas R. Manisero (Partner-White Plains) and Scott to pressure the former Polish member to settle an arbitration being litigated before the International Chamber of Commerce.

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