On January 23, Alberta-based Internet employment advisor FabJob Inc. filed a Notice of Dismissal with Prejudice terminating its cybersquatting and trademark infringement claims against Wyoming-based domain name registrar Compana, LLC. FabJob’s complaint, filed in the Western District in October, alleged that Compana had registered fabjobs.com, which was likely to cause confusion with FabJob’s registered trademark FABJOB. The dismissal appears to be part of a larger settlement between the parties.
FabJob’s complaint alleged that Compana “is engaged in a domain name warehousing business whereby it registers domain names which are identical or similar to established trademarks but that are misspelled” or contain additional words, letters or the plural form of the same word. The complaint states “Compana or its registrant then establishes a web site with that domain name and sells the opportunity for ‘sponsors,’ including the trademark owner’s competitors, to advertise and post links to their sites.” According to the complaint, a reverse IP lookup for Compana’s IP address shows a total of 656,010 registered domain names, including starbudks.com, washingtionstate.com, seattelmariners.com, seattelseahawks.com, and seattletitmes.com.
FabJob’s complaint states FabJob filed a Uniform Domain Name Dispute Resolution Policy action with the World Intellectual Property Organization last year asking that fabjobs.com be transferred to FabJob, but its request was denied. In response, Compana filed a lawsuit in Texas state court requesting a declaratory judgment, injunctive relief and damages it allegedly suffered as a result of FabJob’s WIPO filing. FabJob removed the case to the Northern District of Texas, where it is pending today.
But not for long. On January 23, the parties asked the Northern District of Texas to dismiss the action, which coincides with the dismissal notice FabJob filed in the Western District. In their proposed Agreed Judgment, FabJob and Compana jointly represented that Compana had not violated the Lanham Act or the UDRP, or infringed FabJob’s common law trademarks or other intellectual property rights. Not surprisingly, the terms of the parties’ apparent settlement giving rise to these dismissal requests are not publicly available.