According to articles in the Washington Post and PC World today, Microsoft has filed a lawsuit against domain registrar Red Register for registering 125 names with Microsoft trademarks. Although the domain names are currently registered to another company in Tortola, Microsoft believes the current information is false (according the article).
This marks the second registrar in recent history to have a lawsuit filed against it for cybersquatting. A couple of months ago, Yahoo and Dell both filed lawsuits against domain registrar Belgium Domains for registering domain names infringing on their brands. While both of these instances accuse the registrar of owning the infringing domain names, it is scary to think that this could potentially happen to a more mainstream registrar who controls millions of domain names and happens to have some trademark names among them. An article on DomainNameNews.com prints an email showing that many domain names at Belgium Domains are currently locked by the registry.
Trademark holders have become more aggressive in defending their marks in the past several months, not simply going after the domain owners as they did in the past. Back in June, Vulcan Golf sued Google for helping domain owners monetize domain names that they believe infringed upon their trademark. Domain owners need to use caution and common sense when registering domain names.
This is just the beginning.
It was just a matter of time before it happened. All it was going to take was a big company like Dell to set the standard. Google will be next to sue, they do not even own googl.com and many other great typos with huge volumes of traffic blatently violating their TM.
The more interesting part of this new corporate strategy that should concern all of us is the illegal use of registrar records once they have been seized and locked by law firms. If a Law firm is in the business of protecting trademarks, they can scan the data base, find TM infridgements, notify the companies, then pursue legal actions. In the end keeping the registrar locked for an undetermined amount of time effecting thousands of domain owners. Reverse Domain Tasting for the legal guys to find business. As this new strategy goes mainstream, registrars will be locked for undetermined amount of time. Watch and see.
Registrars should have implaced a tool to prevent registering trademarked names, that is how the big guys look at it. Now they are being held liable because they made a profit off a trademarked name(Dilution). Also they have deep pockets, which law firms love. After they are done with the registrar, they will go after the registrant and milk even more money.
Very scary when you really read into it for a domainer who is doing the right thing. How would it affect domainers to have all their entire portfolio locked for possibly a year or more? Quite a bit I would imagine.
It will be interesting to see the outcome of this. This is not the first time. Long time poster and attorney (Dave Zan?) of DNF and I had this chat a while back.
Several years ago there was an attempt to sue the registrar of a TM name for allowing the domainer to register it. Yet the court found no fault on the part of the registrar.
How can that possibly be the case? If you look at nearly every TOS it clearly states that there should not be any infringement of copyrighted or TM names.
Yet, not only do the registrars permit the registration, but they also permit the transfer of and the selling of these names. Look at Pool, TDNAM, Afternic, or Sedo. These may not be registrars per se (TDNAM is GoDaddy, 1and1 is Sedo) but these sellers/drop catchers/auction sites facilitate the sale of these blatant TM names.
In the past, a registrar my claim that they simply can not check each name registered. Yes, they can! Inexpensive software and even fee for service sites will alert any institution of possible copyright or TM registered domains.
The pressure has been on the shoulders of the domainers to do the right thing. All the while, the registars have these long worded TOS and look the other way.
But in time, and that time may be now, it is going to put mounting pressure on the registrars and those that permit the registration, sale and transfer of such domains.