Trademark Infringement and Cybersquatting Analysis for Subway v. Subway.SY and Kotifani

On Wednesday I posted an article about how Subway.SY owner Hani Kotifani tried to represent himself pro se (without counsel) against the real Subway restaurant and failed miserably in a cybersquatting / trademark infringement lawsuit and promised that an analysis of the Court’s ruling would be soon to follow. That post can be found here (Trademark and Cybersquatting Lawsuit: Subway Awarded Permanent Injunction, Statutory Damages, and Attorney’s Fees, Against Subway.SY LLC)

Well, here’s the analysis for Doctor's Assocs. v. Subway.SY LLC, 2010 U.S. Dist. LEXIS 83223 (D. Minn. July 30, 2010).

.CO Registry Will Be Pro-Actively Screening for Cybersquatting Across All .CO Domain Names

In a letter dated August 9, 2010, Eduardo Santoyo who is the CEO for the new .co country code Top Level Domain (ccTLD) assured domain registrants of the security of the newly implemented .co ccTLD and warned cybersquatters that the .co registry will be pro-actively screening for instances of trademark and brand name infringement.

Furthermore, Santoyo expressly stated that .co domain names are all subject to ICANN's Uniform Dispute Resolution Policy (UDRP). Remember that UDRP arbitration proceedings can be brought (similarly to in rem) directly against the infringing domain names regardless of the global location of the infringing domain name owner, registrar, or host for the domain address. So cybersquatters who attempt to register trademark or brand infringing .co domain names are put on notice that such infringing domain names can fairly easily be repossessed by rightful brand owners.

Trademark and Cybersquatting Lawsuit: Subway Awarded Permanent Injunction, Statutory Damages, and Attorney’s Fees, Against Subway.SY LLC

The case is Doctor's Assocs. v. Subway.SY LLC, 2010 U.S. Dist. LEXIS 83223 (D. Minn. July 30, 2010). In this motion before the U.S. District Court for the District of Minnesota, Plaintiff Doctor’s Associates, Inc. (Subway) sought a permanent injunction, statutory damages and attorney’s fees against Defendant Hani Kotifani. 

Background on the Parties involved;

Plaintiff Doctor's Associates, Inc., (Subway) is the federally registered trademark holder for a number of trademarks associated with the FIVE DOLLAR FOOTLONG phenomenon Subway sandwich restaurant chain. Subway restaurants comprise the largest single-brand restaurant-chain in the world, with Subway trademarks found in about 32,000 restaurants. Subway registered the federal trademark for ‘SUBWAY’ on October 20, 1981, long after Subway first used the ‘SUBWAY’ mark on August 21, 1967. Furthermore, Subway registered ‘Subway Eat Fresh’ in 2002 and other stylized version of Subway in 2003 and 2007.