Laureate Education, Inc. is suing Domain Name Proxy Service, Inc. for alleged trademark infringement. Case number 2:15-cv-00879, a suit was filed on March 20th in the United States District Court for the Eastern District of Louisiana. The Domain Name Proxy Service, Inc. address is in Louisiana, therefore Laureate Education decided that it was appropriate to file there. While the lawsuit alleges that OnlineUAEUniversities.com is infringing on trademarks owned by Laureate Education (namely the Walden University and University of Liverpool trademarks), Laureate Education has filed suit against Domain Name Proxy Service because they couldn’t contact the real owner of OnlineUAEUniversities.com.
According to the lawsuit, “This is an action for false association or sponsorship in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).”
“Laureate has learned of a website found at www.onlineuaeuniversities.com. This website advertises that it is a definitive guide to online education in the [Persian] Gulf. The site purports to be affiliated with a number of distance-learning educational institutions, including Walden and U of L.”
On the OnlineUAEUniversities.com website, I was able to find what appears to be a clear misrepresentation of an affiliation with Walden University. Take a look at the screen capture below, from their online brochure:
I don’t know whether or not there is an actual affiliation or not, but the lawsuit filed this week says that their is no affiliation.
Who Should You Sue
Well, if you are in this situation, and you need to protect your trademark(s), especially if a rogue website is using your trademark on their website, first I would go ahead and look up the whois data for the domain name. In this case, that’s what the lawyers for Laureate Education, Inc., did:
Domain Name: ONLINEUAEUNIVERSITIES.COM Registry Domain ID: 1792785988_DOMAIN_COM-VRSN Registrar WHOIS Server: whois.directnic.com Registrar URL: http://www.directnic.com Updated Date: 2015-03-06T16:54:04-06:00 Creation Date: 2013-04-10T16:11:56-05:00 Registrar Registration Expiration Date: 2016-04-10T16:11:56-05:00 Registrar: DNC Holdings, Inc. Sponsoring Registrar IANA ID: 291 Registrar Abuse Contact Email: Registrar Abuse Contact Phone: +1.8668569598 Domain Status: clientTransferProhibited (https://www.icann.org/epp#clientTransferProhibited) Domain Status: clientUpdateProhibited (https://www.icann.org/epp#clientUpdateProhibited) Domain Status: clientDeleteProhibited (https://www.icann.org/epp#clientDeleteProhibited) Registrant Name: Direct Privacy Registrant Organization: Domain Name Proxy Service, Inc Privacy ID# 14148238 Registrant Street: P.O. Box 6592 Registrant City: Metairie Registrant State/Province: LA Registrant Postal Code: 70009 Registrant Country: US Registrant Phone: +1.5043550082 Registrant Phone Ext: Registrant Fax: Registrant Fax Ext: Registrant Email: firstname.lastname@example.org Name Server: NS0.DIRECTNIC.COM Name Server: NS1.DIRECTNIC.COM
In this case, you can clearly see that the owner of the domain name has the domain name under “privacy whois”, and probably for good reason. They don’t want to be found. However, in this case, the lawsuit filed says that the attorneys for Laureate Education, Inc. emailed Domain Name Proxy Service:
“Specifically, on July 10, 2014, Laureate’s counsel sent an email to Defendant at email@example.com and firstname.lastname@example.org. The emails were undeliverable, and it was not possible to get through to anyone via the telephone number.”
Well, if you look at the whois record (as I just showed above), the email listed is email@example.com which I just emailed for a comment about his case. And so far it hasn’t bounced back to me. I don’t see where they emailed OnlineUAEUniversities.com, they just emailed the abuse and legal departments of Domain Name Proxy Service, Inc..
That said, most likely I would suspect that the attorneys knew this, and there would then be a court order issued that will cause Domain Name Proxy Service, Inc. to reveal the true owner of the OnlineUAEUniversities.com domain name. But, in the court documents, Laureate is suing Domain Name Proxy Service, Inc. because they assume that Domain Name Proxy Service is behind the infringing website, since they are listed on the whois record (and emails to them were undeliverable).
Laureate is looking for a trial, and to recover damages in the amount determined at trial.
“Defendant’s conduct has also damaged Laureate in an amount to be determined at trial. Such use has also caused Laureate to suffer irreparable harm, and Laureate will continue to be irreparably harmed unless and until Defendant’s unlawful conduct is enjoined. Laureate has no adequate remedy at law.”
I have reached out to OnlineUAEUniversities.com for comment, and have not yet heard back from them.
The following is additional information about the lawsuit that has been filed:
2:15-cv-00879 LAUREATE EDUCATION, INC. v. DOMAIN NAME PROXY SERVICE, INC. Date filed: 03/20/2015 Date of last filing: 03/20/2015 Case Summary Office: New Orleans Filed: 03/20/2015 Jury Demand: None Demand: Nature of Suit: 840 Cause: 15:1125 Trademark Infringement (Lanham Act) Jurisdiction: Federal Question County: Orleans Terminated: Origin: 1 Reopened: Defendant Custody Status: Plaintiff: LAUREATE EDUCATION, INC. represented by Stephen M. Gele Defendant: DOMAIN NAME PROXY SERVICE, INC.