Libya and its Embassy lost a domain name lawsuit which commenced long before Gaddafi’s overthrow. A United States Federal District Court recently released it’s judgement regarding a cybersquatting case initiated by the first Plaintiff, the sovereign state of Libya, the second Plaintiff, the Embassy of Libya, in it’s capacity as diplomatic agent of the State of Libya.
The Plaintiffs alleged that the Defendant, an individual named Ahmad Miski, had infringed their trademark rights under two provisions of the United States Lanham Act in addition to the Anti-Cybersquatting Consumer Protection Act.
In order to prevail, the Plaintiffs needed to demonstrate that they had common law unregistered trade mark rights in several disputed domain names. Part of the problem they confronted was that they referred to their identities inconsistently over a period of time. Additionally, they did not present significant evidence of having used the trade marks consistently in commerce over a period of time.
The Plaintiff had been known as the Libyan Embassy, formerly the Embassy of the Libyan Arab Jamahiriya, sometimes known as a “People’s Bureau” to the US Department of State.
The domain name used by the Embassy during much of the duration of the case was
www.libyanbureau.com. Later on in the case however, the Embassy appears to employ the domain name www.libyausaembassy.com.
After the overthrow of Muammar Gaddafi’s Government, the plaintiffs names were changed to Libya and Embassy of Libya. At the time, the Libyan embassy was using the domain name LibyanBureau.com, but now uses LibyaUSAEmbassy.com.
The Defendant Ahmad Miski works as an expeditor, helps parties to certify documents, facilitating one step in the process of the legalisation of documents by partnering with third party business interests. He conceded that he cannot and never has undertaken the function of the ‘legalisation’ of such documents, a function which can only be performed by the Embassy. Hence, the two parties he submitted were not direct competitors.
He registered the domains embassyoflibya.org, libyaembassy.com, libyaembassy.org, and libyanembassy.com and forwarded them to his website for the purpose of attracting clients for his expeditor business. He purchased the websites in 2002 and 2003, registering them to increase internet search rankings for his own Arab-American Chamber of Commerce website www.arabchamber.com. All of the domain names at issue redirect users typing the disputed domain names to Defendant Miski’s Arab-American Chamber of Commerce website.
Libya argued that Miski was cybersquatting and that it had common law rights to the terms “Embassy of Libya” and “Libyan Embassy”.
However the Full Bench of the District Court find that the marks were merely descriptive and that Miski was not guilty of cybersquatting. The Court remarked that it was difficult for the Libyan Embassy to prove continuous uninterrupted commercial use of its marks in the United States.
The reason for this was that in 1986 President Ronald Reagan imposed a trade embargo upon Libya. This prohibited Libya from engaging in trade or commerce and other transactions and the US Government blocked Libyan government property situate in the United States. Executive Orders issued by former President Ronald Reagan prohibited commercial trade and certain other transactions with Libya and persons associated with the Libyan government, and “blocked” Libyan government property located in the United States or possessed by United States persons.. The sanctions were unilaterally imposed by the United States.
During the sanctions period, there was no need for document legalization or certification of commercial documents, as most commercial transactions between the United States and Libya were banned by the sanctions. Private documents such as birth certificates or educational transcripts were certified by the Libyan Mission to the United Nations in New York and by the defendant.
A trademark owner asserting a claim under the Anti-Cybersquatting Consumer Protection
Act must establish that it has a valid trade mark entitled to legal protection, its mark is distinctive or famous and the defendant’s domain names are identical or confusingly similar to, or in the case of famous marks, dilutive of the owner’s mark. The Plaintiff must also prove that the Defendant used, registered or trafficked in the domain name with a bad faith intent to profit.
The plaintiffs argued that they have “rights in the Embassy Marks based on their actual use in commerce in conjunction with specific services in the United States.” Specifically, the Embassy claimed that it “uses the specific Embassy Marks in conjunction with its document legalisation services.” The Plaintiffs argued that even if the marks are merely descriptive they had acquired distinctiveness because of their continuous use in conjunction with document legalization services in the United States for decades.”