The case of True Religion v. truereligion.com
Muslim website owner says he has faith court will protect him
Ibrahim Ali Ibrahim Abu-Harb, a devout Muslim, says he decided to express his devotion to Islam by launching www.truereligion.com. True Religion Apparel Inc., a purveyor of $300 jeans, says Abu-Harb’s only devotion is to money, and it wants the website shut down.
The dispute, now in US District Court in Boston, could test the limits of a federal law designed to stop speculators from snapping up Internet domain names — similar to corporate trademarks — just to sell them back to the companies.
True Religion Apparel is suing under the Anti-Cyberquatting Act of 1999, even though Abu-Harb registered the domain name and launched the site years before True Religion Apparel secured its trademark.
The case potentially has far reaching effects in the battle over who is the master of Internet domains, legal specialists said. If True Religion succeeds, it could make it easier for corporations to force other businesses and individuals to surrender domain names similar to their trademarks — regardless of when and why the websites were launched and registered.
“This could open the door to a flood of actions,” said Peter J. Caruso II, an attorney with Prince Lobel Tye LLP in Boston. (Caruso has performed legal work for the Globe.) “Just because you have a trademark does not mean you should be able to monopolize all of the domain names that hold the trademark name.”
True Religion Apparel, headquartered in Vernon, Calif., designs, manufactures, and sells pricey jeans, clothing, and accessories to upscale stores such as Bloomingdale’s and hip outlets like Urban Outfitters.
It also operates 120 of its own stores across the United States and sold more than $400 million in trademarked goods in 2012, according to court documents.
True Religion has aggressively defended its trademark. It won an $864 million judgment in federal court in New York last year against 106 Chinese defendants operating fake True Religion websites, and it recently sued 100 unnamed defendants in federal court in Chicago for selling phony True Religion products.
Abu-Harb, of Riyadh, launched and registered his site in 1998, four years before the founding of True Religion Apparel, according to legal documents.
The agreement with Mydomain.com, the Internet registrar, named US District Court in Boston as the court where disputes would be resolved.
Abu-Harb maintained the site for years, preaching in English that Islam is the one, true religion and Mohammed its prophet — and attracting very few viewers. Then, in 2009, the site began getting up to 1,000 hits a day.
Abu-Harb soon realized visitors were looking for the clothing company, according to his statements in legal documents, and he decided to take advantage of the situation.
He started using Google’s Adsense and later became an Amazon.com affiliate, programs that paid him fees to display ads that allowed visitors to click to sites where they could buy True Religion and other products.
Abu-Harb’s site has a large disclaimer that it is not affiliated with the apparel company.
In 2011, Abu-Harb offered to sell the domain name for $1 million to True Religion, the company said in court documents. When True Religion declined, the company said, Abu-Harb ran the site as a money- making operation.
In June, True Religion hauled Abu-Harb before an arbitration panel of the World Intellectual Property Organization, a United Nations agency responsible for resolving cross-border technology disputes. The panel, however, ruled in September that Abu-Harb launched his site in good faith and has a legitimate interest in the domain.
Abu-Harb said that he would sell the domain for $380,000, according to arbitration documents.
True Religion sued Abu-Harb in Boston at the end of last month, charging in its complaint that the Saudi national had violated the US anti-cybersquatting law.
The company asked the court to award it the domain name, prohibit Abu-Harb from creating similar domain names, and order him to surrender any profits from the domain and pay a $100,000 penalty.
In an e-mail, Abu-Harb noted that World Intellectual Property Organization had already ruled in his favor.
“I am not worried as I am confident in the justice of the American courts,” he said.
A True Religion spokeswoman declined to comment.
Jeffrey Hermes, director of the Digital Media Law Project at Harvard University’s Berkman Center for Internet & Society, said this dispute does not appear to fit the usual definition of cybersquatting and will test how broadly the federal law can be applied.
“A classic claim is, I’m aware you have a trademark and I grab it for leverage to get a payout out of you,” Hermes said.
“There’s going to be an open question as to whether the cybersquatting act permits somebody who happens to have a valuable URL and who has been using it for other purposes to repurpose it to take advantage of someone else’s brand name.”