It would appear that buying web domains which include trademarks or key terms could land you in hot water but where does something like this all end?

This isn't new news,  all over the world companies have been taking so-called 'cyber-squatters' to court for a few years.  Not just to protect their products, but to also secure the extra web traffic which may inadvertently stray on to unofficial websites.

So what are we to make of stories like this one? The CS Lewis estate will now take control of a privately purchased URL featuring 'Narnia' in its title. The buyer said he simply wanted it for his son's email address.   Sometimes it may seem that 'innocent' individuals are getting stung by big businesses who will fiercely protect their brand but isn't that what copyright law is for?  So to what degree should copyright infringements like this be persued?  Isn't it about time that the companies only brought complaints against those who were abusing their material or is everybody on the take all the time?

Richard Saville-Smith says that he bought the domain name narnia.mobi for his 11 year old son as a birthday present, and now the C.S. Lewis estate, represented by Baker & McKenzie, filed a domain name arbitration to wrest control of the domain name away from him. (source)

The mainstream media is trying to paint this as a big mean company trying to steal an 11 year old kid's cookies. More likely, it is a story of a big mean company trying to steal a small opportunist's lemonade stand. Not that both aren't a bit unseemly on the part of the big guy, but the emotional angle didn't pull me in.

That isn't to say that Mr. Saville-Smith isn't in the right here. Nor is it to say he is. Initially, it appeared to be clear that he was just another cybersquatter. However, upon further research, I am going to reverse my position at least 120 degrees, consume some humble pie, and call this one a little closer than it originally appeared.

Under the domain name arbitration rules (the UDRP), the Lewis estate is going to need to show that it owns trademark rights to the name "Narnia," and that Saville-Smith both registered and used it in bad faith.

With respect to trademark rights to "Narnia," I presume that the Complainant will be able to show that rather easily. Book and movie titles are not necessarily ennobled with trademark rights, but when they are part of a series, they usually are. Nevertheless, Seville-Smith doesn't seem to think that the Lewis company has been the best stewards of C.S.' legacy. "[T]he Singapore registered CS Lewis company," he wrote, "has fundamentally betrayed the intellectual and moral legacy of CS Lewis in its pursuit of profit."

Whether this is true or not, the domain name in dispute is parked at a pay-per-click site (if you don't know what that is, click here for an explanation). Someone is making click-through fees on that page's sponsored links, but Seville-Smith denies that he is the one collecting the advertising revenue.

Saville-Smith wrote to me, stating that his domain hosting company would be issuing the following statement in support of his response to the domain name complaint:

I am happy to state on behalf of Fasthosts that the redirection of the domain name narnia.mobi to a holding page maintained by Sedo was not the result of a request on the part of Richard Saville-Smith. I am also happy to confirm that Richard Saville-Smith has not sought to benefit and has not benefited financially in any way whatsoever from this domain name through this redirection. I am also happy to state that we, Fasthosts, have carried out no work to promote the domain name concerned nor to register it with search engines or enhance it in any way.

I take Mr. Saville-Smith at his word that this is a true and correct representation of his registrar's statement. Unfortunately for him, if he wants to disprove this apparent bad faith use, I don't think that it will come down to whether he intentionally created the pay-per-click site, nor even if he made a penny from it. The owner of a domain name is responsible for what appears on the web page associated with that domain, even if the page is automatically generated by an ad-bot. Saville-Smith could change what is there at any time. So far, he hasn't chosen to do so. (A screen shot of the page, as it appeared when this was written, appears here).

This is bad faith use under the UDRP, and he is going to have a hard time convincing a panel otherwise. (But, he's hired an uber-bad-ass domain lawyer to handle the case, so maybe he will!)

This case will turn on whether he registered the domain in bad faith. Since nobody can probe Mr. Seville-Smith's mind, that matter is most likely going to be decided on the basis of circumstantial evidence.

Mr. Saville-Smith's story is that he didn't register it in bad faith, because he bought it for his little boy for a birthday present so that he could get emails on his mobile phone with the "narnia" domain. If true, this would show that the domain was not registered in bad faith.

While this story is plausible, I'm not entirely convinced.

By my research, Saville-Smith owns a pretty large portfolio of domain names. This makes it seem like he could simply be a domain speculator who saw the inherent value in this domain. Saville-Smith says that his domain portfolio is merely a personal collection, or that the domains are owned in trust for other businesses and charities. I suspect that the truth lies somewhere in the middle - that perhaps he has an innocent explanation for having so many domains. Even if he doesn't and having many domains is not a per se sign that someone acted in bad faith. However, it is a sign that someone is web-savvy enough that they ought to know when a registration could run afoul of the UDRP.

Perhaps Saville-Smith didn't realize that he was registering a domain name that corresponded to someone else's trademark, or perhaps he believed that he had every right to register the domain, since the Lewis estate missed the sunrise period. But, ignorance of the UDRP is not a defense, and every mark holder shouldn't be under an obligation to register every permutation of their trademarks, lest a squatter grab them.

If the only reason that Saville-Smith bought the domain was so that his son could have a narnia.mobi email address, (if true, it is adorable), then why not offer to let the Lewis estate have the domain in exchange for a little money for his trouble and a lifetime guarantee that his son will always have an unlimited supply of @narnia.mobi email addresses, as well as a right to the domain if they ever transfer it or drop it? That seems to satisfy all the interests, and all of this nastiness could be at an end.

Of course, in all fairness to Mr. Saville-Smith, he describes the initial contact with Baker & McKenzie as less than cordial.

[A] New York lawyer phoned my wife and told her they would take legal action against us unless we handed over the domain name we bought perfectly legally after their sunrise period had elapsed.

I don't know exactly what he means by "New York Lawyer," but my email exchanges with Mr. Saville-Smith lead me to believe that the lawyer wasn't exactly looking for a diplomatic solution. Mr. Saville-Smith, like any real man, seems to have gotten his hackles up when someone communicated a threat, however innocuous, to his wife. If the Baker & McKenzie approached him with the air of entitlement that large-firm lawyers sometimes tend to bring to the table, it isn't surprising that Mr. Saville-Smith reacted with umbrage rather than seeking a collaborative solution.

In the end, Saville-Smith might prevail. The bad-faith use element is a slam dunk.

The bad faith registration element is going to be a little tougher. The Lewis estate can satisfy this element with circumstantial evidence, and it seems like there is a fair amount of that here. If Saville-Smith has some concrete, non-fabricated proof of his good-faith intent (and I am not sure how he will prove that), he may be able to prevail on that prong -- and thus in the overall action.

While I might not hold for him, based on the facts I have before me at this time, I'm still rooting for him.

Ashley's sudden retirement is a hot topic.  Somebody dropping out of the race a few weeks before the end is bound to attract curiosity.  Everybody loves a train wreck.  I was doing a search to see if there were any new articles when I stumbled upon the above domain.  And no, I didn't find anything new.  There is only the article from Inside Gymnastics where Mary Lee Tracy claims she had no idea this was coming.  Does MLT not know her athlete very well?  I just find it hard to believe that this young lady after having already made a world team and battled back from a back injury would not have let any hints at all drop that she might not wish to continue.  

As far as quitting goes.  Ashley Priess vs. Blaine Wilson.  I found Ashley's retirement to be shocking.  I totally respect her decision though.  I just can't muster the same feelings for Blaine Wilson.  I still think it would've been better for him to retire before the meet or afterwards.  Retiring in the middle of the meet, especially when you are not doing well is just poor form.  Then to say you retired because you didn't want to risk injury instead of being truthful.  He retired because he wasn't doing well.  It's obvious.  If he was so worried about risking getting hurt, he wouldn't have come back in the first place.  

I know some people might say, "Hey you can't read the guy's mind!"  No I can't.  But I have a lifetime of experience with lies and liars.  Push comes to shove, I can tell a pretty phat fib myself.  'I quit because I didn't accurately predict the level of competition and found myself doing poorly' is exactly the kind of thing you would try to spin into, 'Yeah.  It's just not worth getting injured.'

A few weeks ago, word leaked out on the International Trademark Association list serv that Domain Tools was bought by a domain monetization company. A DMC is a company that turns un-used domains into pay-per-click sites. I'm not a big fan of them, as is obvious from this prior post. In theory, they are fine - they turn unused web domains into money-making enterprises. Unfortunately, in practice they encourage people to hoard domains, encourage domain tasting, and make the internet less navigable and more annoying.

When word hit the street that a DMC bought Domain Tools, there were some gasps of concern and a pretty spirited argument about what this meant for the future. In particular, cybersquatter defense attorneys trotted out the pitchforks and torches to burn one particular attorney, Marc Trachtenberg, (hereinafter, "Mr.T") at the stake for his suggestion that this development did not bode well.

I'm glad that Mr.T survived, because it did not take long for him to be proven correct.

Now that Domain Tools is owned by a DMC, Domain Tools has a nifty new feature – Domain History Blocking. This little number is tailor made for those who just can’t seem to prevail when the facts come to light. From the Domain Tools website:

Domain History Blocking
Domain Tools offers Domain History Blocking for the purpose of domain sales or other short term purposes. The rate is $10.00 per domain name per day. (source)

Who wants to bet that “other short term purposes” will include “making sure that complainants in UDRP proceedings can’t prove when a domain was acquired.” Sort of the way that respondents figured out that the internet archive was a good tool to show bad faith use, so they started using robots.txt to get rid of the evidence.

Fortunately, it seems that some panelists interpret destroying evidence as “bad faith.” A little while back, a panel said that use of the robots.txt file was evidence of bad faith without a darn good explanation. (blogged here) Lets hope that UDRP panelists look at this kind of evidence-suppression the same way.

I got a tip about this phenomenon from Lars K. Jensen (a Danish journalist from EkstraBladet). He wrote on Jaiku that he just had discovered that the name of the newspaper EkstraBladet already was taken at Twitter. He also tried some other Danish newspaper and the result was that almost all Twitter-names of the large papers had been taken.

Newspaper like Politiken, Berlingske Tidende, Nyhedsavisen, Børsen and 24 Timer have all had their names taken at Twitter.

Just look here

www.twitter.com/ekstrabladet
www.twitter.com/politiken
www.twitter.com/berlingske
www.twitter.com/nyhedsavisen
www.twitter.com/borsen
www.twitter.com/24timer

All names was taken on March 30, 2007. And all by the same person - even though there are using different names. All have the same contact email written in the first and only tweet.

The Danish newpapers are not the only one. Netflix is also suffering from cybersquatting. This is an even more obvious case. The one who set up the Twitter account - www.twitter.com/netflix - has put on a web address saying "for sale contact...". I saw this at Simple Pixel.

Lars K. Jensen contacted the person behind who stole the Twitter-name of his newspaper - and got this reply

I would be happy to release the username over to you - However I believe that we should conduct a transaction - showing good faith on both parts.

A documentet donation to a charity organization - such as eg. Red Cross for no less than 50$ will be a prudent environment for us to make such a transaction.

I have a lot of respect for organizations like Red Cross - but why are they mixed into this?? Why not just give the Twitter-name back - it don't belong to them. On top of this Cybersquatting is also against Twitter's TOS (terms of service)

6. We reserve the right to reclaim usernames on behalf of businesses or individuals that hold legal claim or trademark on those usernames.

With this story in mind - I can only encourage companies and others to claim their own Twitter name ASAP (I have just done so this evening for my own company Rescu Kommunikation:) and my private Twitter account has been active for some time - so no problem there :))

In our last post, we addressed the rise in cybersquatting--the act of using a domain name that mimics that of a brand.  So what are your options against a cybersquatter?  There are two prongs of attack.  The first is to proceed with litigation against the squatter under the Anticybersquatting Consumer Protection Act.  The other option is to undergo arbitration of the domain name dispute with an agency such as the World Intellectual Property Organization in Geneva, Switzerland, the world leader in resolving domain name disputes.  And no, you don't need to fly there to handle the dispute.  The documents are transmitted via fax or mail, as required by the rules.  WIPO and other arbitral organizations like it have fixed fees for the undertaking of the arbitration, exclusive of other costs such as legal assistance in preparing the paperwork.  Costs of arbitration should generally be cheaper than litigation, but a suit under the ACPA allows for the opportunity to request and receive an award of damages from the squatter.  Conversely, arbitration only allows for the transfer or cancellation of the domain name in dispute.  Of course, regardless of the dispute resolution mechanism you choose, you'll need to prove your case--that is to say, that the disputed domain name is infringing on your trademark rights.

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Hard to believe that after the long and nasty Web 1.0 land rush and squatter-squashing that so many major companies are asleep at the wheel on this one.

PS: Take a guess who has http://twitter.com/radioshack :-) And before the good folks at Radio Shack waste any money on lawyers, I will happily turn it over to them for free - I just wanted to make the point and they were my third guess. Good for you Starbucks and P&G.

Domain speculators and cybersquatters alike (the two terms are not synonymous) re-direct their domains to "sponsored links" pages. They are simply playing the averages. If you can register a domain name for $8 a year, then all you need to do is
generate $8.01 per year in pay-per-click fees to make it a profitable endeavor. Many make much more than that, but you get the point.

The links on these pages are usually generated automatically. I'm not bright enough to understand the algorithm, but some computer program, somewhere, takes a look at the domain name and matches it up with keywords, then provides sponsored links on the pay-per-click page. For example, motoguzzi.us brings you to a page that has links that refer to Moto Guzzi motorcycles. However, that doesn't mean that Moto Guzzi paid for the links. Someone else may have simply bid for those keywords. I am certain that the registrant of motoguzzi.us hasn't so much as seen the site in a long time, if ever. He most likely didn't choose the links that are there.

This lack of direct control is often a central theme in a cybersquatter's response to a UDRP complaint. At least one UDRP panel bought this argument. See Admiral Insurance Services v. Dicker, WIPO Case No. D2005-0241 (“the Panel accepts that the terms under which Google makes its Adsense advertisements available do not permit the Respondent to control them . . .”). However, that panel included David Sorkin, which makes its findings suspect. (He rules for complainants less than 1/3 of the time, and has earned more than $100,000 in UDRP panelist fees by making gullible decisions like this. Do the math).

The prevailing trend is that the "willful blindness" argument is not valid, as illustrated in the recent decision: State of Florida, Florida Department of Management Services v. Bent Pettersen, WIPO Case No. D2008-0039.

Even if the content of that portal website was generated automatically - such that the Respondent was not directly aware of its precise content - the Respondent must, at least, have been aware that the website would be determined by search terms relating to the value of the mark that he wished to exploit. This would appear to be the natural result of ‘parking’ the disputed domain name at the website. Further, the Respondent is ultimately responsible for the content of the website within his control. As such, the Respondent could not avoid responsibility for the automatic generation of links at the subject website.

In coming to this conclusion, the Panels referred to another recent case, Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.

The Respondent is responsible for the content of any webpage hosted at the disputed domain name. It cannot evade this responsibility by means of its contractual relationship with the Registrar. The relationship between a domain name registrant and the Registrar does not affect the rights of a complainant under the Policy (cf Ogden Publications, Inc. v. MOTHEARTHNEWS.COM c/o Whois IDentity Shield/OGDEN PUBLICATIONS INC., Administrator, Domain WIPO Case No. D2007-1373).

See also Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082 (“[h]owever the content of a website may be determined under such arrangements, an assertion of descriptive rights or legitimate interest by a Respondent does not sit comfortably with a denial of knowledge or responsibility for the presence of said content.”); Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (citing AEG v. Alvarez).

A domain vulture immediately snapped it up and offered it up for sale. The asking price appeared to be in excess of $50,000. Naturally, WWC filed a UDRP proceeding. As a panelist, they pulled Professor Darryl C. Wilson of Stetson University. Normally, when I see an academic panelist, I presume that the Complainant will lose. Academic panelists, for the most part, would believe that the tooth fairy is real if a respondent said so.

In World Wide Commerce Corporation v. WebContents, Inc., Claim Number: FA0712001124467, Professor Wilson kicked that stereotype in the teeth.

The respondent made the following argument:

Respondent contends that Complainant has no common law rights in the mark WORLD WIDE COMMERCE and that since Complainant “…has failed to establish secondary meaning of the catchphrase ‘Worldwide Commerce,’ the Respondent has as much right as the Complainant to continue ownership of the domain name going forward.” Respondent also states that its intention was to use the domain name for use in future business endeavors, that it is currently using the domain name for legitimate purposes, and that it is not currently nor did it in the past register and use the disputed domain name in bad faith. Respondent further notes, “There is an element of ‘Finders Keepers, Losers Weepers’ in this decision. We believe that is as it should be.”

With respect to the complainant's common law rights, the respondent was arguably correct. I doubt that the complainant could convince a trademark examiner that the highly descriptive term, "World Wide Commerce" had developed secondary meaning sufficient to register the mark. Nevertheless, Wilson applied the UDRP properly. Perhaps these rights were weak, but Wilson properly held that the rights were sufficient to make out a prima facie case.

Complainant has made continuous use of the mark in commerce for more than eleven years, conducting business under the mark in connection with its web and telecommunication services. Complainant registered the “World Wide Commerce Corporation” name with the Colorado Secretary of State, registered and previously used the domain name before the registration lapsed, and purportedly generated revenues in excess of $5.3 million, while serving a long list of global clients. Complainant’s President contends in an affidavit that Complainant has spent significant time and money in generating substantial goodwill and consumer recognition in the WORLD WIDE COMMERCE mark.

Much better than that, Wilson explicitly recognized that snapping up an inadvertently dropped domain name creates both a lack of legitimate rights on the part of the respondent and that it is evidence of bad faith registration and use.

While it is clearly recognized that anyone has the right to purchase and make immediate or planned use of an available, non-confusing domain name that is legitimately offered for sale, Respondent registered the Domain Name after Complainant had inadvertently allowed the Domain Name to lapse, subsequent to eleven years of continuous use in commerce. Registration of a domain name under these circumstances is evidence of a lack of legitimate rights or interests in a domain name. See Zappos.com, Inc. v. Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb 28, 2005) (finding that “[t]he fact that Complainant had previously held the domain name registration and has mistakenly allowed it to expire is further evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶4(a)(ii).”); see also Am. Anti-Vivisection Soc’y v. “infra dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (holding that complainant’s prior registration of the domain name was a factor in considering rights and legitimate interests in the domain name).

What I really love is how the Panel slapped the unethical registrant with his own "finders keepers" language.

Complainant’s previous registration and use of the disputed domain name before the registration inadvertently lapsed coupled with Respondent’s immediate registration and refusal to transfer further supports that Respondent’s registration and use of the domain name was in bad faith pursuant to Policy ¶ 4(a)(iii). See Florists’ Transworld Delivery, Inc. v. Domain Strategy, Inc., FA 113974 (Nat. Arb. Forum June 27, 2002) (“Complainant previously held the contested domain name before an inadvertent error allowed the registration to lapse. Respondent apparently took advantage of the presented opportunity and immediately registered the lapsed domain name. Respondent’s opportunistic actions exhibit bad faith under Policy ¶ 4(a)(iii).”); see also RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (finding that the respondent’s registration of the domain name “immediately after Complainant failed to timely renew the domain name registration” was evidence of bad faith).

While “finders, keepers-losers, weepers” is a quaint and classic saying it is also an oversimplification of the underlying law. Actually the finder takes as to all the world except the true owner, or the prior peaceable possessor. WWC Corp. provided sufficient evidence to show that it fit one of the preferred categories and Respondent, who rather unconvincingly claims to be an innocent finder here, is the party that must “tear” itself away from the disputed domain name.

Thank you Professor Wilson for both giving us a good decision and for burnishing the tarnished image of the gullible (or simply greedy) academic UDRP panelist.

For a contrary, and clearly idiotically-reasoned decision, see Canned Foods, Inc. v Ult. Search Inc., Claim Number: FA0012000096320.

La maggior parte delle procedure di questo genere servono a tutelare un nome o marchio, indebitamente utilizzato da chi non ne ha diritto nella url di un nome a dominio. In molti casi si tratta di una concorrenza parassitaria: si sfruttano gli errori di battitura nella digitazione della url che evoca un marchio noto (es. 'mocrosoft' invece che 'microsoft') per aumentare gli accessi al sito. Diversa ipotesi è invece quella del phishing dove la tecnica utilizzata non è (più) quella della clonazione del nome a dominio ma della clonazione dell'intero template del sito ufficiale (notissimi sono i casi relativi al sito delle Poste italiane e di banche) a cui si accede, generalmente, cliccando attraverso link inviati via email e in cui la finalità principale è quella di rubare attraverso l'inganno i dati dei conti correnti degli utenti ignari.

Oltre i marchi o i template dei siti anche i nicknames possono essere oggetto di appropriazioni illegittime. Pensiamo al nome o allo pseudonimo o al logo o immagine con il quale siamo conosciuti in rete attraverso il blog, tumblr, social network o altro. Molte volte simboli o pseudonimi raggiungono una forte notorietà e potere identificativo nei confronti di una persona. Ma se in certi casi, come per la davopalla di Daveblog o al logo azzurro di Personalitàconfusa, i simboli sono così tipici da rendere intenzionale e fraudolenta ogni appropriazione, in altri casi in cui nick o simboli sono più ordinari, l'appopriazione può invece avvenire in buona fede. La transnazionalità di internet e la continua nascita (e diffusione) di nuove applicazioni social rendono difficile la protezione del proprio nick. Per avere la massima tutela ed evitare che qualcuno usi il nostro pseudonimo sarebbe opportuno registrarsi su ogni servizio solo a fini di profilassi, anche se non si intende utilizzarlo. Facile a dirsi.

Ma ci sono casi in cui l'identità online ha un valore monetario oltre che di reputazione, come il caso dei giocatori di Everquest che tentarono di vendere su Ebay il proprio username.

In Italia abbiamo recentemente avuto una sentenza della Cassazione in relazione alla registrazione di un indirizzo email con il nome di una persona diversa dall'utilizzatore e la condanna è stata per sostituzione di persona. Ho già parlato all'epoca dei problemi posti dalla tutelabilità del nick, soprattutto in merito ai requisiti di aquisita notorietà dello stesso e univoca capacità identificativa della singola persona e alla eventuale difficoltà di riuscire a dimostrarne la sussistenza in un tribunale in assenza di criteri di analisi condivisi.

Che fare, dunque, se si è deciso di chiamarsi Pinco Pallino anziche Yagawagasuttr e qualcuno ha già registrato il nostro nome sull'ultimo Social network di grido? La soluzione migliore rimane sempre rendere noto il nostro nick di ripiego sul blog o sullo spazio che ci identifica di più.

E sperare di essere più veloci degli altri, la prossima volta ;)

The U.N. agency based in Geneva, received 2,156 complaints alleging abusive registration trademarks on the Internet representing an 18 percent increase over 2006 and a 48 percent increase over 2005.

"These increases confirm that 'cybersquatting' remains a significant issue for rights holders," said Mr. Francis Gurry, WIPO Deputy Director General, who oversees WIPO's dispute resolution work, noting that a number of developments in the DNS are also cause for concern from the perspective of intellectual property holders, as well as Internet users generally. (link)

The Periplaneta Americana of the Internet

What you find
at motoguzzi.us

Up until I was about 26, my primary form of transportation was always a motorcycle. However, I never owned a bike that cost more than $600. In high school and college, I drooled over the Moto Guzzis that I would see from time to time that were hopelessly out of my financial reach. As soon as my bonus came in this year, I resolved to spend it on a Moto Guzzi.

I figured that Moto Guzzi would be at http://www.motoguzzi.com. No such luck. Let's try http://www.motoguzzi.us. As you can see by clicking the image above, you don't exactly wind up at Moto Guzzi's website. (www.motoguzzi.com used to resolve to a pay-per-click site too, but it has since gone down)

Canadians looking
for Moto Guzzi
Canada will be
similarly disappointed

These pay-per-click pages and their operators are the parasites of the internet. I love when they put some goddamned phrase at the top like "find something interesting" or "helping you find what you need."

Far from "helping you find what you need," these sites do nothing except divert traffic from its intended destination. Trying to wipe them out is like playing whack-a-mole. Go find your favorite website. Lets presume that it is "The Drudge Report." Now type in http://wwwdrudgereport.com/ (note that I forgot the period). Click it and see where you wind up - certainly no where near the Drudge Report. You can do this all day long -- and you'll find these crappy and annoying pages everywhere. I suspect that they outnumber "legitimate" websites at this point.

These pay-per-click sites are truly the Periplaneta americana of the internet.

And not only that, when these pay-per-click sites operate by using another person's trademark, like Moto Guzzi, they are breaking the law. Under the ACPA (15 U.S.C. § 1125(d)), this kind of parasitic behavior can subject the pay-per-click domain owner to up to $100,000 in damages as well as forfeiture of the domain name, and possibly an attorneys' fees award.

Dude, Where's Your Blog?

Now that you know how I feel about pay-per-click sites, and you know that establishing one on the back of someone else's trademark rights is illegal, lets take a look at a little GoDaddy issue, which served as the inspiration for this post.

GoDaddy runs its own pay-per-click program that isn't really all that parasitic. If you buy a domain from GoDaddy (or any other registrar for that matter), you can "park" the page, and the registrar will turn it into a pay-per-click site for you. This is not, generally speaking, the kind of practice that I rail against, nor is it a violation of the ACPA. It is kind of like putting a billboard on a building that is under construction.

Imagine my annoyance a few days ago when I was trying to visit one of my favorite IP blawgs and entered the address into my browser.

I left off the “www” as I often do, since it is usually superfluous. See, if you type in legalsatyricon.com, or http://www.legalsatyricon.com, or www.legalsatyricon.com, you wind up at the same place -- the Legal Satyricon -- your intended destination (I hope).

So here is what I typed in: http://vegastrademarkattorney.com.

Is this cybersquatting?

Imagine my surprise when the page that came up said "this domain is parked," and I was provided with a generic GoDaddy pay-per-click domain parking page! Had a cybersquatter stolen Mr. Gile's domain and turned it into yet another plague-of-the-web pay-per-click site? Did Gile just give up the whole blawg concept in favor of collecting a few bucks a month in click-thru fees?

Just for giggles, I looked at the address in my browser and I entered the "www" -- http://www.vegastrademarkattorney.com. When the familiar logo and layout popped up, I breathed a sigh of relief and thought little of it.

A few days later, I tried to visit one of my other favorite blogs, Nobody’s Business:

I entered in the following: http://bakelblog.com. Yikes! It appeared that one of my favorite libertarian blogs was gone! (note, by the time you read this, the issue may be corrected)

Lese majeste
scofflaw
and proud of it!

I thought, “oh no, did Queen Beatrix send her secret police to drag Rogier van Bakel from his island hideout to answer for the crime of insulting Dutch royalty?” As I loaded my Glock and started wondering who to call to assist me in my rescue mission, I considered trying one less drastic solution... I typed in the "www." http://www.bakelblog.com

Relief… Rogier is still safe from being cast into an Amsterdam dungeon, and I don't have to take on any Dutch prison guards.

Now that we have established that neither censors nor domain thieves have conspired to deprive me of some of my favorite reading material, I still must ask the question -- WTF? It looks like GoDaddy is playing the cybersquatting game by slightly different rules.

Is GoDaddy Violating the ACPA?

When GoDaddy provides these pay-per-click pages instead of its customers websites, is the world's largest registrar violating the Anti Cybersquatting Act? Maybe. Lets look at some pertinent portions of15 U.S.C. § 1125(d).

(d) Cyberpiracy prevention

Well, first of all we will need to decide whether Gile's "Vegas Trademark Attorney" or van Bakel's "Nobody's Business" are trademarks. They are not registered marks, but registration is not required -- trademark rights arise from use, not registration. I would say that "Nobody's Business" certainly is a common law mark, and perhaps so is even "bakelblog".

"Vegas Trademark Attorney" is super descriptive, and almost generic. However, that would only be the case if the services were "legal services." For a blog, I'd say that the name qualifies for some degree of trademark protection. Add to that his secondary meaning, and I'm willing to say that both blogs' names and domains are distinctive.

I realize that I am skipping a few details here, but this is a blog, not an appellate brief.

Next, lets see if Godaddy's behavior fits within the ACPA's prohibitions. There is no case law to guide us on this, since this particular kind of behavior hasn't been dealt with in any reported case (at least none that I could find).

It sure looks to me like it fits.

Godaddy is "using" domain names that are supremely confusingly similar. In fact, Godaddy is actually using van Bakel and Gile's domain names, absent the "www." The "use" is for profit -- the pages that Godaddy provided to me, instead of the pages I searched for, were chock full of sponsored links. GoDaddy makes advertising revenue off of them.

But is it Bad Faith?

15 U.S.C. §1125(d)(1)(B)(i)(I) thru (IX) provides nine nonexclusive factors to help us determine whether the use is in bad faith. None of them seem to fit neatly within this factual scenario. GoDaddy certainly is using these domains with an intent to profit -- but in order to call this an ACPA violation, we need to say that it is a bad faith intent to profit.

At first blush, it sure seems like it is. Naturally, I alerted these two bloggers to the issue. Rogier van Bakel put on his journalist hat and went digging for the truth. His results suggest that GoDaddy gets a legal (but perhaps not moral) pass on this one.

GoDaddy gives its customers the option of having their site load without the visitor typing in the "www." They do this by adjusting their "CNAME" settings. As I understand it, the CNAME is a kind of alias that, behind the scenes, automatically modifies a URL to go to a specified site. These websites' CNAME's were set adequately but not perfectly. Any GoDaddy user who fails to select the proper option will find some of their traffic re-directed to a sponsored link page, where coincidentally GoDaddy makes a few bucks on click-through fees.

However, ultimately, it does come down to the webmaster operating his account properly.

It seems that GoDaddy makes this needlessly complicated (or at least non-transparent), and that it should be a cinch for the company to autoforward, say, vegastrademarkattorney.com to the exact same place it takes you when you type http://www.vegastrademarkattorney.com. I fail to understand why any customer would prefer that a visitor who omits the "www" should be re-directed to a pay-per-click site -- especially when such site gives the impression that the website the user sought has gone out of business (or worse).

But back to the legal question: Does GoDaddy's conduct rise to the level of "bad faith?" At first, I was certain that it does. After Rogier's research is taken into account, it appears that at least some (if not most) of the responsibility must fall on the shoulders of the user -- who can control the issue at any time.

Does that make GoDaddy right? No. The default should be that internet users wind up where they intended to go. It is still parasitic and sleazy to draw traffic intended for someone else to your own money-making scheme. It is even sleazier when you do it to your own paying customers.

Rogier van Bakel contributed mightily to this post.

And yes, I did eventually get my Guzzi!

Unscrupulous yet highly intelligent cybersquatters pick up premiuim domains related to any event or celebrities/businesses as soon as they get a whiff of something new and exciting comping up. 

Sample this:

The National Arbitration Forum, an international provider of alternative dispute resolution services, administered a total of 1,805 domain name disputes in 2007, up from 1,658 disputes in 2006. The National Arbitration Forum has been approved as a domain name dispute resolution program provider by the Internet Corporation of Assigned Names and Numbers (ICANN) since 1999.

The National Arbitration Forum reports at the end of 2007:

• UDRP domain names with common extensions like .com, .net, and .org accounted for 1,775 filings.
• usDRP domain names with the .us extension accounted for 30 filings.
• Of the 1,805 filings, Panelists heard 1,391 cases; parties worked together to settle many of the rest.
• There were 9,916 total domain name complaints filed since 1999.
• Of those filings, Panelists heard 8,006 cases; the parties settled many of the rest.

- PR-USA

I wish the practice of cybesquatting just disappears overnight. What a better place this world would be!

Hmmm... wishful thinking!