Want to find the Libyan embassy's website? It's not at www.libyaembassy.com. Or www.libyanembassy.com. Those sites redirect visitors elsewhere. But a Washington federal judge ruled (PDF) Thursday that the man who owns those domain names isn't doing anything illegal.
U.S. District Reggie Walton found that the Libyan government and the Embassy of Libya, which sued the owner of the domain names, Ahmad Miski, failed to prove that "Embassy of Libya" or "Libyan Embassy" were trademarks worthy of protection under the law. The ruling means Miski gets to keep the domain names, leaving the Libyan embassy with www.libyausaembassy.com.
A lead attorney for Miski, Kamal Nawash of the Nawash Law Office in Washington, said today that he thought Walton's ruling set important precedent for cybersquatting cases in the future. "The facts of the case make a difference," he said. "Just because someone uses a domain name that happens to be similar to your name or appears to give the impression they are you, it doesn't mean it's illegal."
His co-lead counsel, Eric Menhart of Washington's Lexero, said he thought Walton "came to the right conclusion on the right point." Lead counsel for the Libyan government and embassy, J.P. Szymkowicz of Washington's Szymkowicz & Szymko¬wicz, could not be reached to comment.
Miski bought four domain names that used some combination of the words "Libya" and "embassy" in 2002 and 2003. Miski is executive director of the Washington-based Arab American Chamber of Commerce, which operates as a type of notary for U.S. companies sending commercial or legal documents to Arab countries.
Miski claimed that he bought the domain names to stop others from using them to post anti-Arab messages, but eventually used them to direct traffic to his business' website. The Libyan government and the embassy sued Miski in November 2006. The case was put on hold as violence in Libya escalated last year, but picked up again after former Libyan president Moammar Gadhafi was killed.
The embassy never formally trademarked its name, so the case boiled down to whether the embassy's name was "suggestive" or "descriptive." A suggestive mark requires consumers to use some imagination to figure out what the name or mark is about, while a descriptive one only describes the "essence" of a business, according to the opinion.
Suggestive marks are automatically entitled to protection, while descriptive marks are not. The embassy argued that its name was a suggestive mark, since it represents a type of service it provides that needs protection: legalizing documents. Miski disagreed, arguing that the mark is only descriptive.
Walton, siding with Miski, found that the name is descriptive. He said consumers didn't have to use their imagination to understand what the Embassy of Libya is, and that the name could refer to a whole host of services the embassy provides, not just legalizing documents. He noted that the name also refers to the physical embassy space, another strike against the embassy's argument that its name is a specific brand in need of protection.
As a descriptive mark, Walton then had to decide if the name had a "secondary meaning" in the marketplace that made it eligible for protection. Walton found that the embassy failed to present any evidence about the public's understanding of its name or whether there was any actual confusion. Finally, Walton found that the embassy failed to show that its mark was in continuous use because Libya couldn't offer services while it faced U.S. sanctions from 1986 to 2004, Walton wrote.
The ruling wasn't a total win for Miski. Walton sided with the Libyan embassy on Miski's counterclaims for tortious interference with a contract, finding that Miski failed to present any evidence that the embassy had tried to interfere with his business. Menhart said he couldn't speculate as to Miski's future plans with the domain names, except that "he continues to use them lawfully as he has for years."