Cybersquatting

Domain Name Expires; City Believes Cyber Squatter Stole It

I was intrigued by an article I read in the Morehead News, a newspaper based in Morehead, Kentucky. What was I doing reading a Kentucky-based newspaper?   Well, I received a Google News alert about a domain name theft and case of cybersquatting and I checked it out. The article references CityOfMorehead.com, the official city website for a number of years.

According to the article, city officials seem to think “their website was stolen via ‘cyber squatting.'” I did a bit of research on the domain name, and according to a Whois search on the last archive date where the domain name was owned by the city, the domain name was set to expire on November 26, 2009. It appears to me as if the domain name was not renewed and someone else acquired it.

The business of drop catching expiring domain names is completely legitimate – and it’s the reason companies like Snapnames and Namejet are in business.It’s also the reason why several high profile domain name investors became very wealthy. It’s not necessarily from selling the expired names back to the previous owner, but by using those names for their businesses. Godaddy also allows people to place backorders on domain names, on the off-chance the name isn’t renewed.

The article quotes Jason England of Premier Quest ISP, the website’s host (according to the news article). England believes it’s a case of cybersquatting. He mentioned that when a domain name expires, there are people who will try to register it immediately, especially   “folks typically from the same type of geography that the majority of the world’s spam and viruses come from.”

Incidentally, the Administrative Contact at the time the city owned the domain name was premierquest@pqisp.com. Had someone paid the annual renewal fee of somewhere around $10, the city would still presumably own the domain name. Based on my experience, Godaddy sends notices 90, 60, 30, and 15 days prior to a domain name’s expiration – and possibly even more frequently.

As far as I am aware, it’s perfectly legal to register domain names – especially geographic and non-trademarked domain names – after they expire. Just check out what a UDRP panelist said about geodomain names recently when he referenced, ““the general rule that geographic names are not subject to trademark protection.”

I will provide an example to equate this to physical real estate,. If someone in Morehead, Kentucky decides he doesn’t wish to pay property taxes this year, I am sure the city will go after his property, maybe file a lien, and perhaps even seize it. They may even put it up for auction for others to bid on it once it’s seized. Likewise, when someone doesn’t renew their domain name, the registrar can put the name up for auction.

If the City of Morehead wishes to have this domain name back so they don’t have to order hundreds of dollars worth of stationery, they should hope the owner would want to sell it to them. Otherwise, they will be forced to use new email addresses, change all inbound links, and probably spend in excess of the $10,000 figure they quoted in the article. They now also need to worry about confidential emails addressed to @cityofmorehead.com email addresses.

I honestly feel badly for the City. This is a very good example of why domain owners need to be the Administrative Contact email on their domain names so they can be sure the bill is paid each year.

Apple Domain Owner Creates YouTube Response to UDRP Loss

Apple UDRPAs you probably read on TechCrunch or the same article in the Washington Post, Apple recently won a UDRP filing for 16 domain names owned by Daniel Bijan.   The domain names that they were awarded include: blueipod.com, iphonecheap.com, iphonetoys.com, ipodaccessories.info, ipodkits.com, ipodsbaratos.com, macbookpro.biz, macbookpro.com, macbookpro.net, macbookpro.org, macfriend.com, and redipods.com. Clearly these domain names incorporated trademarks owned by Apple.

In a video posted today on YouTube (embedded below), Bijan doesn’t dispute the fact that Apple has rights to these domain names. In the video’s description, Bijan writes, “Apple hurts me, my wife and 3 kids. Not once did they contact me or send a cease and decist letter. I would have gladly gave them the names. Instead, they just start the arbitration process. This is what is wrong with corporations today. Just pick up the phone and call me.” Bijan continues, “What is wrong with this world. Did we forget to treat people like human beings? I will not buy any Apple products.”

Although I can empathize with Bijan a bit because I would be horrified to see my name in a similar article, I have to say that it comes with the territory when you buy domain names like this. Sure it sucks to be called out publicly, especially because anyone who searches for this guy’s name will probably forever see these two articles, however, one needs to be mindful of one’s domain registrations.

When I worked in the corporate world, there was always a saying that went something like “never send out an email that you would be embarrassed to see on the front page of the New York Times.” Likewise, I would advise people to be cautious about what domain names to which they may forever be linked.

Do you feel badly for the guy, or did he get what he deserved?

Rihanna.com Offered for Sale on DNForum; UDRP Filed Months Later

RihannaThe domain name Rihanna.com was offered for sale on DNForum back in June of 2009.   According to the updated thread, the domain name was later sold for an undisclosed amount of money. As you are probably aware, Rihanna happens to be the name of a popular musician, whose full name is Robyn Rihanna Fenty.

While looking through recent UDRP filings at the National Arbitration Forum, I noticed that there was a UDRP filed for Rihanna.com. At the moment, there is a Network Solutions coming soon page on Rihanna.com, and there’s nothing on the landing page that mentions the musician, who currently holds the #11 spot on the Billboard 100.

The moral of this post is that if you have a domain name that could potentially be seen as infringing on another company’s trademark (which can happen even with the most generic of names), you need to be cautious where you list it for sale and what you say when you list it. Assuming it was the singer’s legal team that filed the UDRP, I am sure this line didn’t help the owner, “Rihanna.com Correct Spelling!”

Soon enough will will know if the complainant saw the sale on DNForum, elsewhere, or if they targeted it without having seen whether or not it was for sale, but it’s something to keep in mind when you are selling a domain name.

There have been other cases where the complainant cited a for sale listing on a domain forum as part of its complaint. Some of these cases include RymanAuditorium.com, EliteModels.com, WWF.com, and AirDeccan.com

Photo credit:http://www.flickr.com/photos/burningkarma/ / CC BY 2.0

Razorbacks.com: Legitimate Use of a Trademark Term

I pay very close attention to UDRP filings on generic domain names. I receive a daily email with UDRP decisions and frequently visit the NAF and WIPO websites to see what UDRPs have been filed. Oftentimes, the complainant feels the domain owner is infringing upon its trademark rights by displaying advertising of related products or services, as was the case with Dolphins.com.

However, there are plenty of UDRP filings that are overreaching, and I am happy to see the panelist(s) deny the complainants attempts. Today, I received the WIPO UDRP decision for Razorbacks.com, filed by Board of Trustees of the University of Arkansas of Little Rock, Arkansas, whose sports teams are known as the Razorbacks.

The owner of the domain name first registered the name in 1995, and the University contacted him about it several years later, in 2003. In the response, the University claims it sent the owner a cease and desist letter and also claimed that the domain owner owns the .com domain names of several college sports team brands, including Aggies.com (Texas A&M), Badgers.com (University of Wisconsin), Wolverines.com (University of Michigan), and Terrapins.com (University of Maryland).The domain names are and were used for vanity email addresses.

The three member panel found that the domain name was identical or confusingly similar to the complainant’s trademark, which is pretty clear. When the panel looked at the issue of Rights or Legitimate Interests in the domain name, they referred to other UDRP cases where vanity email addresses were considered a legitimate offering of goods/services. In addition, the panel cited the “multiple alternative uses of the term “razorbacks,” and they concluded that the could not side with the complainant on this matter. As a result, the complaint was denied.

Owners of similar generic domain names should note that the panelists did not say that the use of vanity email addresses on a domain name is reason enough to deny a complaint. In addition, the panelists made it clear that this could be a case for a court to ultimately decide, stating “Whether Complainant would have more success in a court of law, where evidence may be fully developed and examined through the use of discovery, interrogatories and other forensic processes and where standards other than those of the Policy may be applied, is not for this Panel to say.”

Whether University of Arkansas decides to pursue this through the court system is something we may learn about in the future, but for now, it’s good to see a panel deciding a case on its merits and not making assumptions about a domain owner’s intent.

(Razorbacks image courtesy of Wikipedia)

Owner of NewYorkNewYork.com Sued

The   owner of the domain name NewYorkNewYork.com has been sued by New York-New York Hotel & Casino, LLC for trademark infringement, cybersquatting, unfair competition, trademark dilution, and other related complaints. The lawsuit, which can be downloaded from the Las Vegas Sun website (pdf download), was filed in the state of Nevada on November 6, 2009.

In the lawsuit, the plaintiffs have alleged that,

“Recently, Plaintiff learned that the Infringing Domain Name has been linked to a website that prominently features the NEW YORK NEW YORK LAS VEGAS HOTEL & CASINO trademark (the “Infringing Website”). Specifically, the NEW YORKNEW YORK LAS VEGAS HOTEL & CASINO mark appears in the banner of the Infringing Website, next to a graphic of Plaintiff’s New York- New York Hotel. The Infringing Website does not include a disclaimer explaining that it has no affiliation with Plaintiff. When Internet users click on the banner, they are redirected to a website enabling them to book hotel reservations at Plaintiff’s New York-New York Hotel.”

In looking at the current website which contains various New York City related banners, it appears to me that they are using Ian.com as a booking engine for the site. Ian.com is the Expedia travel affiliate program, and they work with hotels throughout the world to book reservations. When a visitor uses the booking engine, they are able to search for cars, flights, and hotels throughout the world, including Las Vegas, where the New York-New York Hotel & Casino is located, all the while staying on the NewYorkNewYork.com website.

It’s unfortunate for the defendant, as I am not sure of how much control he would have over the results served by the booking engine. Further, it would seem advantageous for the hotel to be listed, but I imagine they would rather control the domain name if possible. From the looks of it, I don’t see how the owner of the domain name is at fault, although I am not an attorney nor do I have a legal background.

One complication for the current owner is that the lawsuit indicates the Hotel contacted a previous owner expressing concern over something similar that was done in the past. According to a screenshot on Archive.org from February of 2006, there were links to the New York-New York Hotel & Casino on the home page of the website. However, it doesn’t appear that the current owner is doing anything in bad faith. In fact, New York City is the default search when a visitor lands on the site.

I think this will be an interesting case to watch, since there are quite a few geodomain owners who use booking engines like Ian.com and WC Travel for their hotel results, and there are probably plenty of domain names that could potentially be infringing on certain marks.

Don’t Mess with Verizon, Motorola, and Lucasfilm

Just about every time a big company announces the launch of a new product, people buy related domain names for a multitude of reasons. Some buy them with the hopes of selling them to another company, others want to capitalize on potential popular typos, and yet others want to offer services, forums, special offers or other information related to the product.

On November 8th, Verizon Wireless began selling the Motorola Droid, a new smartphone that has had a whole lot of positive press and reviews. I’ve seen dozens of commercials for the Droid (if not more than dozens), and they seem to be directly taking on the iPhone and other smart phones. Needless to say, the Droid will be in high demand, and people will think they can make money by buying and selling Droid domain names.

However, with this particular trademark, you really need to be very careful of the usage of related domain names. On the bottom of Droid-related pages on Verizon Wireless’ website, there is a legal notice, “DROID is a trademark of Lucasfilm Ltd. and its related companies.”

By registering domain names with the term “droid” in it, you will probably be stepping on the feet of Verizon, Motorola, and Lucasfilm. Keep this in mind in the event that you think you might be able to make money with this mark. Obviously there are way to use “droid” in a domain name without potential liability, but I am sure there are plenty of people who don’t realize the risk of owning these with the intent of profiting off of the Droid mark, by selling, parking, or otherwise monetizing phone-related Droid names.

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