.GTLD Owner Sues .Com Owner – Who will win this case?

GTLD’s love them or hate them, are here to stay with over 1000+ TLDs in circulation now any new start up that wants a domain name and doesn’t want to pay or can’t acquire the domain name of there choice normally Keyword / Brand Dot Com, are starting to try and build there new business with a CCTlds (Country Code Top Level Domain Name) or GTLDs (Generic Top Level Domain Names).

In the story below which I came across today two organisations are now battling one another in a lawsuit over the name of there company, One uses Dot Com the other Dot Energy – Yes there is a .Engrgy GTLD and no I didn’t realise it existed did you?

Dot Energy only has only 13,000 Domain Names registered, it has been around since 2015 and is operated by Donuts Inc, at GoDaddy you can register a .Energy Domain Name for a whopping $129.99 GoDaddy has the largest volume of registrations with 4,861 Dot Energy domain names sitting with them at present then followed by NameCheap.com in second with 1,420 domain names and Name.com in 3rd place with only 420 domain names.

Now onto the story the two companies both are named Aqyre one is a Real Estate agent operating on Aqyre.com based in Denver and the other also sell Real Estate assets but this time focused on the Energy market named Aqyre.energy guess where they are based… Denver

However he comes the twist… It’s the owner of Aqyre.Energy who is suing Aqyre.com the commercial real estate brokers claiming they are infringing on there trademark and using the goodwill that Aqyre LLC has built up in the sale and management of Oil & Gas Leases, the other commercial real estates advisors strongly deny the claims and are awaiting to present in court.

The domain name Aqyre.com has been under privacy at GoDaddy.com for a number of years but prior to this we can see it was owned by a company named Benjamin Media Group based in Denver so I am not sure if this was associated with the brokerage previously but the domain didn’t resolve / had coming soon pages for a number of years prior to the launch, The full story is below and here is a link back too.

What do you think shall be the outcome will the .Energy owner win the case and should he be handed the .Com domain name too?

A band of commercial brokers in Denver who started their own firm last year have been hit with a lawsuit claiming copyright infringement from another Denver business.

Aqyre Real Estate Advisors — which helps clients buy and sell apartment buildings and other real estate assets, primarily in the Denver area — was sued in mid-July by Aqyre LLC, another local firm whose name plays off the word “acquire.”

The plaintiff, which has an office at 1732 Champa St. in Denver, said it advises clients in the purchase, sale and management of property interests such as oil and gas leases and water rights.

“Defendant deliberately copied the Aqyre mark in order to impermissibly benefit from plaintiff’s goodwill, reputation and success,” the plaintiff claims in its suit.

The brokerage filed its response to the lawsuit at the end of August.

“Aqyre Real Estate Advisors strongly denies the allegations in the complaint and vigorously disputes that it has infringed any valid third party trademark rights,” the brokerage said in a statement to BusinessDen. “While we are anxious to present our case, our company policy is not to comment on pending litigation.”

Two local firms both named Aqyre are in a court dispute over rights to the name.

According to the lawsuit, the plaintiff registered its name with the Colorado Secretary of State in May 2016, and purchased the Aqyre.Energy domain name around the same time.

The firm said it applied for trademark protection with the secretary of state in February 2020, and with the U.S. Patent and Trademark Office the following month.

Aqyre Real Estate Advisors, meanwhile, was formed by Joe Hornstein, Scott Fetter, Matt Lewallen and Kevin Calame, previously with Pinnacle Real Estate Advisors. In court records, they say they launched the firm in October 2019.

The brokerage uses the website Aqyre.com, which the plaintiff said it previously hoped to get but was unable to purchase.

The plaintiff notes that the brokerage’s logo features the word “Aqyre” prominently, with the words “Real Estate Advisors” in smaller text. It claims that 77 percent of the traffic to the brokerage’s website comes from people searching “Aqyre LLC,” the name of the plaintiff’s company.

The plaintiff, which indicated that it asked the brokerage to change its name prior to filing the lawsuit, said there’s already been confusion.

“Professional service providers engaged in business with defendant have … mistakenly sent invoices to plaintiff, who had no relationship with these service providers,” the lawsuit reads. “Presumably, these service providers located plaintiff when searching for the name ‘Aqyre’ and were unable to discern the difference between plaintiff and their customer, the defendant.”

In answering the lawsuit, the brokerage argued there’s “no likelihood of confusion,” and that the plaintiff hasn’t shown it’s been damaged. The brokerage also argued that the plaintiff’s trademark isn’t as expansive as it claims.

“Plaintiff has not acquired common law trademark rights in the term Aqyre because it
has failed to use the term in connection with all the services alleged in the complaint, including but not limited to, commercial real estate brokerage services,” the brokerage said. “To the extent plaintiff has acquired common law trademark rights, those rights are limited in both geographic scope and to the nature of services actually rendered in connection with the mark.”

The plaintiff is represented by attorney William Groh of Louisville’s Thomas P. Howard. The defendant is represented by Ian Saffer and Kathryn Bohmann of Littleton’s Adsero.