Legal News

Good Advice from Kevin Calder of Mills & Reeve, LLP

There was a good article today in the UK edition of Business Weekly, and although it wasn’t targeted to domain investors, it’s advice that should certainly be considered by domain investors when purchasing domain names. The article was written by a lawyer named Kevin Calder, a partner at the Mills & Reeve, LLP law firm.

Essentially the advice that Mr. Calder gives is that business owners who want to use a particular domain name would be well served to research the trademark database in their country and perhaps others to ensure that the domain name will not infringe on the trademarks of others. While some people purposely purchase infringing domain names to generate PPC revenue, others may unwittingly purchase a domain name that infringes on a trademark.

Not only could a domain owner face a UDRP dispute for a domain name, but there’s the potential for severe financial penalties. If the name is bought in the aftermarket and legal action is taken, the domain name can’t be sold during the proceedings, which will tie up the investor’s funds, add costs to his acquisition with a defense, and could put the investor at risk to lose up to $100,000 in the US on a ACPA case.

As the saying goes, an ounce of prevention is worth a pound of cure. Doing some research before buying a domain name can save you the hassle and expense of legal action, especially if the domain name is of the “brandable” nature and not descriptive/generic. Some resources you can use to research a trademark are the USPTO in the US and Intellectual Property Office in the UK.

People of Walmart (Video): Using a Trademark in a Domain Name

There are always questions when it comes to legitimately using other company’s trademarks and brand names in domain names. Companies don’t like it when unrelated entities own domain names with their marks, and they often resort to UDRP filings or litigation. It’s generally pretty expensive to defend and can cause far greater legal problems.

One website that seems to be doing just fine is PeopleOfWalmart.com. The site has drawn millions of visitors since it launched in 2009, and it receives a ton of submissions. There have been questions of privacy issues, but it seems that Wal-mart has left the site alone for the most part. In fact, they filed a UDRP for a typo of the domain name, PeapleOfWalmart.com, which the company won.

In any case, it appears that Wal-mart has left the site alone, and in filing a UDRP for the typo, it probably tacitly implies that they don’t think they can do much about the real website. In any case, this seems to be an example of a website where a trademark is being used without trouble. Incidentally, the folks at Break.com released a People of Walmart video, which you may enjoy if that’s your kind of humor.


People Of Walmart Song – Watch more Funny Videos

Go Daddy Phishing Email Going Around

I received an email that was preportedly from Go Daddy, and I want to warn you not to click on any of the links if you happen to receive one of these emails (or similar). The thing that tipped me off was that it was addressed to “Dear User” instead of the contact name on my account.

I keep my Whois information updated, so I generally ignore these email anyway. Never click on links from your registrar in emails, and always be on the lookout for these types of phishing attempts. It’s a surefire way to compromise your registrar account.

****************************** ***********
Important ICANN Notice Regarding Your Domain Name(s)
****************************** ***********

Dear User,

it is that time of year again. ICANN (the Internet Corporation for Assigned Names and Numbers) annually requires that all accredited registrars (like GoDaddy.com) ask their domain administrators/registrants to review domain name contact data, and make any changes necessary to ensure accuracy. According to our records you are the ADMINISTRATIVE CONTACT for one or more domains registered at GoDaddy.com, Inc. as of Jan 1st, 2011.

To review/update your Account data, simply:
+ Login to xxxxxxxxxxxxxxxxxxx
+ You will be taken to a landing page and asked to enter your account information
Please take a look that your account and domain information is up to date.

If, however, your domain contact information is inaccurate, you must correct it. (Under ICANN rules and the terms of your registration agreement, providing false contact information can be grounds for domain name cancellation.) To review the ICANN policy, visit: xxxxxxxxxxxxxxxxxxx

Should you have any questions, please email us at support@godaddy.com or call our customer support line at (480) 505-8877.

Thanks for your attention and thank you for being a GoDaddy.com, Inc. customer.

Sincerely,
GoDaddy.com, Inc. Domain Support

Entrepreneur Sends C&D to Owner of EntrepreneurOlogy.com, Owner Files Suit

There’s an interesting article in Bloomberg today about the owner of Entrepreneur magazine (Entrepreneur Media), which operates Entrepreneur.com. It seems that the company aggressively defends its marks for the term, “entrepreneur.”

In September of 2010, Austin entrepreneur, Daniel R. Castro, received a cease and desist letter from Entrepreneur Media with regards to his domain name, EntrepreneurOlogy.com. The domain name has been registered since 2004, and it appears to have been bought sometime between the end of 2009 and beginning of 2010. Interestingly, domain investor Page Howe appears to have owned the domain name in December of 2009.

Instead of simply handing the domain name over, Castro took preemptive legal action against Entrepreneur Media and filed a lawsuit. According to the Bloomberg article,

“In April a federal judge dismissed 12 of Castro’s 14 claims but said he could continue to pursue his allegation that EMI’s core trademark is invalid. As described in his court papers, Castro’s argument is that “the public has not come to associate the word ‘entrepreneur’ exclusively with EMI’s products or services.” The word, he adds, “is a generic noun that is in the public domain.”

It looks like Entrepreneur Media may have messed with the wrong domain name owner, who also happens to have a law degree. This is going to be an interesting case to follow, and it will hopefully be seen by legal council for other companies that operate on generic/descriptive terms that want to own everything associated with those words.

Interestingly, someone emailed me with a link to Entrepreneurs.com, which has more information about attempts to trademark the term, “entrepreneur.”

Will Zynga Move Forward Without GagaVille.com?

Gagaville.comOnline game company Zynga and pop singer Lady Gaga recently announced a unique partnership called Gagaville. According to CNN, GagaVille is “a uniquely designed neighboring farm to FarmVille, that sports unicorns and crystals,” with FarmVille being one of Zynga’s best known games.

Unfortunately for Zynga and Lady Gaga, it appears that someone else preempted them by registering GagaVille.com in December of 2009. The domain name was actually first registered in 2007, but it appears to have expired and then re-registered by the current owner. At present, the GagaVille.com domain name forwards to http://ledthings.com/gaga.

At present, Zynga is using Zynga.com/ladygaga for the launch page, but judging by its other domain registrations like Rewardville.com and CityVille.com, the company will likely want to own GagaVille.com.

Based on the facts that GagaVille.com is a forward rather than a separately developed website, and the owner appears to be a big Lady Gaga fan, as evidenced by his excitement over meeting Lady Gaga, perhaps a deal can be struck between both parties. I would not be surprised to see Zynga acquire GagaVille.com prior to launch.

Cleveland Browns Win UDRP for Browns.com

In March, I reported that the Cleveland Browns had filed a UDRP for Browns.com, and the UDRP decision was released today. The single panelist, Dr. Clive N.A. Trotman,  found in favor of the Cleveland Browns, and the domain name will be transferred to the football team ownership, barring any litigation.

The  respondent, a resident of Italy, did not provide a response to the UDRP. This seems to have played a role in the decision as the panelist stated, “The Respondent has not offered any such refutation, or replied at all, and the Panel is not aware from the evidence of any means by which the Respondent could succeed under the provisions of paragraph 4(c) of the Policy, or otherwise, to establish rights or legitimate interests in the disputed domain name.

In my opinion, if the respondent doesn’t give a good reason for why he has a right to the domain name, I don’t think it should be expected for the panelist to find a reason on his own, especially in light of other information provided in the UDRP proceeding.

One piece of evidence that seriously doomed the respondent’s chances was the usage of the Wayback Machine, found at Archive.org. According to the decision, “In 2005, specific references and links appeared, to among other things, “Cleveland Browns”, “Cleveland Browns Tickets” and “National Football League”. By 2006, there were additional references to associated merchandise and to other football clubs, with similar content through 2009. The Complainant has produced evidence of content strongly impinging on its trademark and activities until January 4, 2011, interspersed with some periods of inactivity.

It should be noted that there is a way for domain owners to get archived information removed from Archive.org, but that’s a topic for another post. This is important in the event a domain owner purchases a name from someone who may have previously infringed on the rights of another company.

One interesting facet of the decision was that there was a name change in the Whois between the end of 2010 and beginning of 2011. While some panelists may have used this information to say that it was a new registration and not consider the real registration date, which is bad for domain owners, this panelist provided some rationale for a possible Whois registrant contact change:

One possible interpretation of the facts of the present case is that the disputed domain name may have remained within the same entity, under the same guiding mind, before and after the registrant, administrative, technical and billing contacts were changed from “Gioacchino Zerbo” to “Andrea Denise Dinoia” on or before January 12, 2011; and therefore a new registration did not occur with that event.”

In my interpretation of the decision, the fact that there were football related links, specifically related to the complainant’s Cleveland Browns, coupled with the fact that the respondent didn’t respond to the UDRP, the panelist didn’t have much of a choice.

We’ll see if litigation is filed prior to the change of registrant, but it appears the Cleveland Browns will be able to move from ClevelandBrowns.com to Browns.com.

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