Despite Not Using NYCVB Brand For Over 20 Years ‘NYC & Company’ Goes After nycvb.com in WIPO Case D2020-3111
In 2020, the NYC & Company Organization had been in existence for over 85 years. The organization had been known as NYCVB in its early years. It renamed it itself to NYC & Company in September 1999. Since that date, another organization had taken up the moniker and developed a thriving website around it.
Fred Dixon and Charles Flateman at NYC & Company were not happy to discover that another organization had taken their former NYCVB brand and had developed a successful tourist website at nycvb.com. Despite not having any legitimate rights to the long-forgotten brand, ‘NYC & Company’ sued the current owner of nycvb.com in late 2020.
Many of the legal arguments made by Fred Dixon and Charles Flateman and their lawyers Gerald Singleton and Natalie Koepff (nee Passarello) were highly questionable and included unsubstantiated claims of theft, cybersquatting, trademark squatting and reverse domain name hijacking.
NYC & Company Wins UDRP WIPO Court Case
After a protracted court case where NYC & Company produced hundreds of pages of testimony, made over seven court filings and defended many questionable actions, a judge finally ruled in their favor. Consequently, forcing the current owner of nycvb.com to give up the domain name to the complainant.
Importantly, the judge reached this decision in spite of NYC & Company not having used the service mark ‘NYCVB’ in public for over 20 years. They acquired this domain name through this lawsuit. NYC & Company had not used the term in public for over 20 years. NYC & Company renewed the trademark with the USPTO, allegedly in bad faith, as they had no provable public use of the mark. Between 2008 and 2020, ‘NYC & Company’ registered a number of service marks including ‘NYCVB’ and ‘NYCCVB’. To clarify, this was done even though none of these service marks had been used in their business since January 1999. It is alleged that ‘NYC & Company’ is, essentially, ‘service mark squatting’ these trademarks and their bid to garner control of nycvb.com is akin to reverse domain name hijacking.
NYCVB.com Forced To Change Its Name to LetsgotoNYC.com
Originally, ‘NYC & Company’ was known as the New York Convention and Visitors Bureau, or ‘NYCVB’ for short. However, in 1999, they changed their name to ‘NYC & Company’ and ceased using the term NYCVB. Over the years they continued to renew a trademark in bad faith for ‘NYCVB’ despite not having used the moniker for over 20 years. In 2021, ‘NYC & Company’ won a WIPO UDRP lawsuit against the nycvb.com incumbent that granted them the nycvb.com domain name based on the strength of that existing trademark.
After that, the judge’s ruling forced the current owner of the domain name to give NYC & Company that URL. In result, the incumbent changed their website name to Letsgotonyc.com even though they had owned the URL since 1999.
Anticipated Use of the NYCVB.com Domain Name Post Lawsuit
Following its court victory, NYC & Company subsequently has full control of the nycvb.com domain name. NYC & Company now forwards this domain name to their website nycgo.com, click here to see. It appears that NYC & Company has no legitimate plans to actually use the brand in the future. They are expected to not use the moniker and will keep sitting on it. Essentially, NYC & Company is now trademark squatting and domain name squatting.
Notably, NYC & Company’s President, Fred Dixon, and the Chairman, Charles Flateman instigated this lawsuit. The attorneys of record were Natalie Koepff and Gerald Singleton. Formerly Known as nycvb.com, letsgotonyc.com launched in March 2021.
Breakdown of the NYC & Company Lawsuit Filings
There are ten sections of this lawsuit and the complainant NYC & Company would insist on making it voluminous. NYC & Company filed responses to responses and then even further responses, which made the case massive. NYC & Company Corporate Lawyer Natalie Koepff and the NYC Government Litigator Gerald Singleton prepared the NYC & Company court filings. These legal staff were taking their strategy and direction from Fred Dixon and Charles Flateman, who are the senior management at NYC & Company.
- NYC & Company Original Complaint
This is NYC & Company’s initial complaint from Fred Dixon and Charles Flateman. It sets out their case from their legal team Gerald Singleton and Natalie Koepff
- Defendant Response to Initial Complaint
This is New York Show Tickets Response to NYC & Company’s initial complaint. Denying that they will transfer the domain name to the complainant
- NYC & Company Response to Response
As a sign of things to come, the complainant NYC & Company wants to say more. They decide to add a follow up set of statements to their initial complaint. Their response is based on the respondents response to their initial complaint.
- Defendants Response to NYC & Company Response
The defendant must now respond to the new response from the complainant. There new statements allege new facts in the case. This response alleges abandonment of the mark nycvb.com by NYC & Company and legal entrapment in the case.
- Court Panel Order 1
The large amount of testimony already provided in this case doe not satisfy the judge. He believes that the large stack of evidence before him is incomplete. He decides to open a can of worms and now requests even more testimony from both parties.
- NYC & Company Response to Panel Order 1
NYC & Company attempts to prove that they have actively been using the term ‘nycvb’ for many years, despite the flimsy evidence. They also use this response to make a whole new set of arguments
- Defendants Response to Panel Order 1
New York Show Tickets responds specifically to the questions asked by the judge and limits the response to only those questions
- NYC & Company Response to Defendants Response to Panel Order 1
NYC & Company always has something else to complain about. They always want the last word. In this filing they introduce a whole new line of arguments.
- Defendant Response to NYC & Company Response to Defendants Response to Panel Order 1
Clearly the defendant must respond to the new accusations
- Judges Final Decision
Finally, the judge renders a decision. The defendant loses the case. The nycvb.com domain name is passed to the complainant NYC & Company.
NYC & Company Court Case Conclusion
In WIPO Case D2020-3111 …..