Opinion
CV-23-02330-PHX-ROS
02-12-2024
JFXD TRX ACQ LLC, Plaintiff, v. trx.com, et al., Defendants.
ORDER
Honorable Roslyn O. Silver Senior United States District Judge
On January 9, 2024, the Court issued an Order explaining that Plaintiff's cybersquatting claim involving <trx.com> appeared to be foreclosed by Ninth Circuit authority. (Doc. 82). That authority provides, at least under some circumstances, when “a domain name is registered before a particular trademark exists, the trademark owner cannot assert a viable cybersquatting claim against the domain name owner.” (Doc. 82 at 4). Here, Plaintiff has admitted <trx.com> was first registered years prior to when Plaintiff's TRX trademark came into existence. Based on that, the Court ordered Plaintiff to explain its basis for pursuing a cybersquatting claim. (Doc. 82). The Court also ordered Plaintiff to explain why its counsel has made contradictory statements regarding the current owner of all TRX-related property. (Doc. 82 at 5). Plaintiff responded by presenting arguments addressing the viability of its cybersquatting claim, but Plaintiff did not address its counsel's contradictory statements.
Plaintiff now admits its cybersquatting claim would not be viable if <trx.com> had remained registered the entire time after it was first registered in 1999. (Doc. 83 at 2-3). However, Plaintiff believes that at some point in time the registration of <trx.com> expired such that it was returned to the “common depository.” (Doc. 83 at 9). Presumably Plaintiff is referring to the fact that domain names may become available to the public if they are not renewed. According to Plaintiff, once the registration of <trx.com> expired, the subsequent registration of <trx.com> could not take advantage of the Ninth Circuit authority. Assuming Plaintiff is correct on that point, the current complaint does not allege facts showing the registration of <trx.com> expired, <trx.com> became available to the public, and <trx.com> was registered again. Thus, the current complaint will be dismissed with leave to amend.
See FAQs for Registrants: Domain Name Renewals and Expiration, https://www.icann.org/resources/pages/domain-name-renewal-expiration-faqs-2018-12-07-en (“If you do not timely renew your domain name registration, it may be transferred or released and made available for registration on a first-come-first-serve basis.”).
The Court cannot understand large portions of Plaintiff's response and it is not clear whether this is, in fact, Plaintiff's argument. Liberally construed, however, Plaintiff is arguing the registration of <trx.com> expired on some date after the TRX trademark purportedly owned by Plaintiff came into existence.
Should Plaintiff choose to amend, it must allege facts establishing when three crucial events occurred: 1) when <trx.com> was first registered; 2) when the registration of <trx.com> expired and the domain name became available to the public; and 3) when <trx.com> was registered again. The Court expresses no opinion on whether this sequence of events would state a claim under Ninth Circuit authority.
Finally, if Plaintiff chooses to amend, Plaintiff will be required to file a separate statement explaining the conflicting positions adopted by its counsel regarding ownership of the TRX-related property. As set forth in the previous Order, that statement “must explain whether Fitness Anywhere owned any TRX-related property at the time Mr. Villenueve stated Fitness Anywhere ‘is the owner of the famous trademark TRX.'” (Doc. 82 at 5).
Accordingly,
IT IS ORDERED the Amended Complaint (Doc. 4) is DISMISSED WITH LEAVE TO AMEND. No later than February 21, 2024, Plaintiff shall file an amended complaint. If an amended complaint is filed, no later than February 21, 2024, Plaintiff shall file a statement explaining the contradictory statements regarding the owner of TRX-related property.