IP Law Daily, TRADEMARK—SDNY: Antiquorum Auction House Founder Could Proceed with Trademark and Cybersquatting Claims Against His Former Company, (Oct 15, 2012)

By Mark Engstrom, J.D.

Osvaldo Patrizzi, founder and former president of the luxury-timepiece auctioneer Antiquorum, could proceed with trademark and cyberpiracy claims against the auction house, a subsidiary (Bourne in Time, Inc.), and the principals of both companies, the federal district court in New York City has ruled (Patrizzi v. Bourne in Time, Inc., October 11, 2012, 2012, Engelmayer, P.). The defendants’ motion for judgment on the pleadings was denied.

Patrizzi claimed ownership of common law trademarks in “Osvaldo Patrizzi,” “Patrizzi & Co. Auctioneers,” and “patrizziauction.com.” The defendants allegedly used the website domain names “oswaldopatrizzi.com,” patriziauction.com,” “patrizziauctioneers.com,” and “patrizziauctions.com” to redirect Internet users to “timezone.com” (owned by Bourne) and thereafter to “antiquorum.com” (owned by Antiquorum). According to Patrizzi, the defendants registered and knowingly maintained the infringing domain names with a bad faith intent to profit by creating customer confusion and causing customers to falsely believe that the defendants’ companies were associated with or endorsed by Patrizzi.

Patrizzi sued the defendants under the Lanham Act for trademark dilution, false designation of origin, and cybersquatting. To pursue these claims, Patrizzi had to prove that he owned the marks at issue. Although the defendants argued that Patrizzi was not, in fact, the registered owner of any of the domain names that incorporated those marks, the court was obliged, on a motion for judgment on the pleadings, to credit Patrizzi’s allegations that: (1) Patrizzi “personally owned” the relevant marks and (2) the defendants’ domain names “so resemble[] the trademarks so as to create a likelihood of confusion, mistake or deception.”

The defendants’ documentation was “impressive” and lent “substantial credence” to the defendants’ arguments, but Patrizzi’s allegations had to be taken as true. Therefore, all three claims survived the defendants’ motion for judgment on the pleadings.

The case number is 11 Civ. 2386 (PAE)

Michael A. Haskel (Law Office of Michael A. Haskel) for Osvaldo Patrizzi. Robert S. Wolf (Gerstsen, Savage, Kaplowitz, Wolf, & Marcus, LLP) for Bourne in Time, Inc.

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