Thewoodlands.biz

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Spring man wins suit against The Woodlands over trademark

By: Sue Thackeray , Courier staff

HOUSTON - A federal jury on Tuesday found that a former pizza delivery man did not infringe on the trademark of The Woodlands Land Development Corp. L.P. when he opened a business directory Web site using the domain name www.thewoodlands.biz.

Following a two-day trial in the Southern District of Texas Federal Court in Houston, the jury returned the verdict Tuesday evening, said David O'Neil, an attorney with The Woodlands law firm of O'Neil & McConnell, which represented James Nelson in the case.

The verdict closes a nearly four-year battle between the company and Nelson that began when .biz registry administrator NeuLevel awarded Nelson the domain name, www.thewoodlands.biz, after a lottery drawing in 2001.

Nelson has used the domain for an online business directory for The Woodlands area, directing Internet surfers to local businesses and service providers.

Since the legal battle began, Nelson has not charged advertisers to list their businesses on the site; however, the site has remained active.

"The Web site has stayed up, but Mister Nelson has been prevented out of caution from making money from this," O'Neil said.

The jury was charged with answering several questions in the case to determine the verdict. The jury answered every one of the questions in favor of Nelson.

Jurors determined that Nelson's Web site did not create a likelihood that the ordinary consumer would mistake or confuse it for an official Woodlands Land Development Corp. site or a site endorsed by the corporation, according to court records.

Jurors also determined that the corporation's name was not "famous," and Nelson's use of the name The Woodlands Business Directory did not "dilute" the corporation's service mark, "The Woodlands."

In the verdict, the jury also stated that Nelson was not "cyber-squatting" by using the domain name.

O'Neil called the verdict a major victory for the little man.

"It's not very often that a guy like that stands up to a corporation, carries the fight to the end and prevails against a corporation like that," he said.

Each year, about 5,000 trademark infringement cases are filed in U.S. courts, but less than 100 usually go to trial. Because of the cost involved, most cases are settled out of court.

O'Neil said there were settlement discussions in the case, but no agreement could be reached because corporation officials wanted O'Neil to give up the domain name, which was a move he was not willing to make.

"We couldn't reach and agreement, so we took it to trial," O'Neil said.

It is unlikely Nelson or his attorneys will see any financial compensation from The Woodlands Land Development Corp. for the case because federal law only allows for attorney's fees to be paid by the other party in "extraordinary" circumstances, O'Neil said.

Officials with The Woodlands Land Development Corp. did not return telephone messages seeking comment Wednesday.

Nelson probably will begin marketing his Web site and start looking for paying advertisers to supplement his current job as a doorman and bar back at Molly's Pub, his attorney said.

"They bought him a round (Tuesday) night at work," O'Neil said. "He's really pleased with the outcome. Now, hopefully, he can move on with his business."