The domain name NewYorkNewYork.com appears to be a completely generic geographic domain name, since New York City is known as New York, New York. However, New York New York Hotel & Casino in Las Vegas had a major issue with the usage of the domain name, a hotel booking engine that allegedly had its photo on the homepage at one point, and they filed a lawsuit in November of 2009.
The Las Vegas Sun has reported that the lawsuit was won by this MGM Resorts-owned hotel/casino, and the penalty is pretty severe for the domain owner. A $101,000 judgment was issued for violating the Anti Cybersquatting Consumer Protection Act (ACPA), and the domain name is now owned by New York New York Hotel & Casino, LLC, although it currently resolves to a Network Solutions under construction page for me for some reason.
The ACPA calls for penalties of up to $100,000 per domain name that is in violation. This is harsh for two reasons. First, the owner probably didn’t make nearly that much money over the course of his ownership, although that is just a guess. Second, the domain name could have been used as a geographic domain name with a New York City focus, and it would have some aftermarket value. Further, it could have generated revenue by adding a hotel booking engine/widget on the site, although many people probably directly navigated hoping to find the Vegas property.
In my opinion, had the domain owner used the domain name to promote New York City (or to pay homage to the City), he would have been in the clear. He probably also could have used the domain name to book hotels in New York City as well. However, because of his alleged usage of trademarks owned by MGM and its property, he was found to have violated the ACPA, and was penalized.
He committed the major sin of using the trademarks in his domain.
If by some change one gets amazon.co.uk and does a non-profit site to save the Amazon (the forest) Amazon.com is simply out of luck until the write a big check.
This sounds outrageous. I have applied in the past for trademarks and have had to modify the application because the USPTO that the mark was too descriptive and would bar registration. How can New York New York be considered a trademark. – That is rediculous
Pretty severe but warranted!. Firstly, not sure if it’s a trademarked name or not, but having a hotel booking engine on the site with a picture of the NY/NY Hotel in Las Vegas shows manipulation & fraud, and in this case, I agree with the judgement!.
That’s like me owning americanairlines.com (real site is aa.com), having a pictures of an AA plane as a logo and using a fare booking engine on my site!
First Hayward….now this…..GeoDomains must be properly developed….end of story.
IMO this decision is irrational. I recall seeing NewYorkNewYork or something similar being available in another TLD and passed but did consider it and had no idea a hotel existed with that name. It’s a city just like Miami, Florida.
Rediculous.. if it were a parked page, I can see the Vegas New York New York come up as a top result. Same thing on booking engines that MGM participates in. If you own that domain and have a google search tool on it, NATURALLY that hotel.casino is going to be among the results.. but it doesn’t make it THE result.
I hope Sinatra’s estate goes after the MGM, the NYNY and the domain name. If they make it there they can make it anywhere.
If he had a hotel booking engine on the website and a picture of the Hotel New York New York plastered on the front page – even for a moment – its pretty the clear the guy was an idiot and deserves the fine surrendered.
Intent of use is the biggest factor in my opinion. Many domain owners are very well aware of the trademarks they capitalize on to get traffic yet yell bloody hell “how could such a generic name get taken away” when someone files suit… its just a comedy show – the owner damn well knew what he was doing here.
As soon as you switch the nameservers on a domain to anything besides the default ones provided by your registrar intent is easily proven.
I liken it to owning a name like Apple.com. If you have a site selling apples and apple sauce, you’d probably be fine from a legal POV. If you say that you registered it because you love apples but decide to sell computer parts or phones, you’re dead in the water.
I think the guy would have been okay using it for it’s generic purpose (New York City), but once he crossed into their trademark territory by offering Las Vegas hotel bookings, he lost any chance of retaining it.
This is my non-legal opinion.
Elliot – that about sums it up …
this is an outrage.
It is gerneric.
This is what will kill parking.
So if I have a domain named sjdfkdki.com and show an ad for their casino I can lose my domain.
If you show a picture of their casino you’re not exactly a scholarship winner now are you?
Nothing will kill parking – domain owners just need to understand law and not try to make a buck on somebody else’s trademark.
This domain is generic – however the use was not.
How is this ruling unfair? Logically ….
Totally unwarranted. New York, New York is a city and state for heavens sake! How can you be tapped for that! Is “branding” becoming more important than the dictionary!? Unless he was using the domain in bad faith, this thing was a real boner. I heard it was a hotel search engine or something…nonetheless, still a boner.
If you think this decision was unfair, you should contact your local elected officials and ask them to repeal US Copyright laws, and specifically the Lanham Act.
Also, you should read the comment section of the LV Sun article. David Castello, one of the leading geodomain advocates, posted some of his thoughts there.
From my perspective, the hotel wants to protect its brand. Let’s say you are an average Joe, and you want to make a reservation to stay at New York New York casino. Instead of typing it into Google, you directly navigate as you frequently do. When you get there, you see a picture of the hotel and a link to make a reservation, so you do so. You probably think the hotel owns the website. Now what happens if your reservation is lost, you are overcharged, or something else funky happens? You probably call the hotel to complain and there’s nothing they can do. They don’t want people to assume they have owned that domain name and website when they had nothing to do with it. They don’t want someone else using their trademark in a way that competes with them. It’s one thing if NewYorkNewYork.com has tourist info about NYC, which doesn’t compete with their trademark. It’s another thing if it does. This seems like a straight up misuse of the domain name, and I think most of the real experts, especially those with legal experience, would agree.
Argue all you want about it being unfair. However, your real dismay should be at the ACPA in the US Copyright laws because I believe this was an example of violating another company’s trademark in using an otherwise generic domain name.
You can buy the .net from BuyDomains for $ 5,400.
If they are REALLY trying to protect their TM, why didn’t they go after the .net and .org?
They both have ppc links for Las Vegas.
It appears the sued owner purchased the domain in June, 2006 from a well known domainer. I guess he dodged a bullet. The domainer only owned it for 16 months.
And, a strange piece of history – the sued owner owned the domain before the domainer. The owner might had been the original registrant in 1995.
I agree with that assessment. However, that would suggest it was the way the url was used that violated the copyright/trademark, not the domain name itself.
So, assuming that was proven, the recourse of assessing monetary damages, as was the case here, might have legitimacy.
On the otherhand, if I legally own a handgun, and use it illegally against you, the courts are not going to require that I give the gun to you.
If I harrassed a company by phone, the recourse wouldn’t be to give them my phone number, because it is not the “number” that is illegal.
Sounds to me like the photo was the dealbreaker… so it should have been the PHOTO that was forfeited.
In other hands, used differently, the URL is perfectly fine and not infringing on anything… apparently.
and what’s about NewYorkiCity.com? it’s for sale via Sedo!!
Nothing outrageous or severe about it. The owner’s greed pushed him to misuse a perfectly generic geo-domain for precisely the reasons that ACPA was created.
If he had used it properly as a New York city portal, I personally believe he would have made even more money than for the illicit use he decided upon.
This is a rare example of the ACPA being used properly (if the stated facts are correct that he put the hotel’s picture on the site).
I disagree with only one minor statement Eliot, I doubt the domain received much type-in traffic from people looking for the casino. Most direct navigation was likely looking for New York city information, making the owner’s misuse even more asinine.
To be clear, the domain itself IS generic, the USE was not. Anyone that does not understand that does not understand the UDRP rules or the ACPA and is in danger of committing similar offenses that can not only severely hurt them financially but also continuing to damage the already crippled reputation of our entire industry.
It isn’t the photo that is a trademark violation. Taking a photo of a building isn’t the issue or there would be a lot more trademark lawsuits. It’s the “bad faith registration” as demonstrated by the photo and surrounding circumstances. Case closed.
Gun laws and copyright laws have very different penalties.
@ Meyer, the person who sold it in 2006 “dodged a bullet.” – interesting concept! That a domainer can run a great name into the ground and incur liability by monetizing it unethically . . .
I understand that.. one is civil the other criminal.
But (and only for arguments sake) if I were to agree with this decision, then my first move would be to get over to “Lease This” and quickly remove every single one of my domains. Because if the domain name is in violation of copyright/trademark, and can be confiscated as such, there are a whole lot of people placing a lot of domain names at total risk by allowing others to use them.
I doubt “but I only leased it to them, I told them to do no wrong” is a valid defense… because I would open up a schill comp0any just for that purpose, thereby insulating myself from copyright and trademark law.
And there are several HIGH publicity Domain players who sold BIG names and took back paper secured by the domain.
A decision like this on a name like that could make that note useless.
Yep… I would agree that there could be issues with leasing, but a smart domain owner would put limitations and restrictions on usage of domain names to prevent a situation like this. Again, I will use my Apple.com example. If I leased it, I would make sure that there couldn’t be anything close to Apple Computer’s trademarks on the website and would ensure indemnification and that the person could pay any legal bills that resulted. Leasing is similar to parking in the sense that the domain owner is responsible for the domain name’s usage and can’t just assume everything will be okay. With the potential of a $100,000 penalty for cybersquatting, people need to realize an $8.00 investment can turn into a HUGE liability very quickly. Microsoft and Verizon are two companies that have made regular people examples of this, and now MGM has done this as well.
The laws are there for a reason, and domain registrants can’t plead ignorance. It’s one reason I like to post articles like these because a lot of people just don’t know what they need to know before buying domain names.
Sure, if you can show someone intentionally used your name to mislead and profit, that’s one thing. But this isn’t mass murder.
The holder of the trademark or copyright needs to show they were legitimately injured, and that it was intentional. The courts will only allow that nonsense to permeate for so long.
You register a name, it is immediately parked by the registrar.. majority of those registering haven’t a clue. A Court’s not going to get them for $100k for registering a name. (Or else i’m living in the wrong country).
Interestingly, he’re a guy who BUYS copyrights, JUST so he can find abusers to sue.
“The holder of the trademark or copyright needs to show they were legitimately injured, and that it was intentional. The courts will only allow that nonsense to permeate for so long.”
From what I read, it was said that the defendant and former owner of the domain name had an affiliate link and picture(s) of this particular hotel. It wasn’t like it was a PPC page with accidental usage. Even if it was a PPC page, it should have blocked that stuff from showing to prevent a lawsuit or UDRP – that’s the first thing I would have done.
“That a domainer can run a great name into the ground and incur liability by monetizing it unethically . . .”
Louise, I did not imply the domainer was anyway involved in what happened with the domain.
All I was “trying” to say that the domainer was lucky he didn’t have the lawyer fees and legal fines to pay.
Well maybe the casino company shouldn’t have been too cheap to purchase the domain. If they don’t want booking mistakes, then it would’ve made sense to go after the name years ago.
Companies are too lazy and cheap to register names. They hope domain owners make mistakes so they can get them for free. Laws seem to protect the rich. Essentially, the poor are left in the quicksand.
Pathetic case. I see many sites that bear company names and products. The owners work as affiliates to direct traffic over to another company that sells the same exact product. I don’t see the company going after them. It helps to promote the brand.
Companies have way more leverage in going after names that they were too cheap to buy in the first place. I don’t think the hotel was around in 95. It would have been a nice travel site.
Elliot. While I haven’t given this issue a ton of thought (I am dealing with prostate C).. that may be where we have a difference of perspective. You appear to see the judgement as confirmation of existing law, while I see it as evidence that the laws need to be changed to address the new reality.
What do we have 200,000,000+- new domains, domain owners? Living in a world where the internet has changed just about everything about branding and advertising.
Are 200 million domainers expected to understand and adjust to the law that itself has become cLouded, or, should we expect that the law needs to adjust to the new internet world we live in? I suggest the law needs to change.
Example Only: I register a domain and it’s parked @ Godaddy until I figure out how to build a website. Godaddy draws an advertising feed from Google. MGM pays Google so that they come up 1st for “Las Vegas” queries. The MGM /NewYorkNewYork result appropriately (by paid design) shows up on my NewyYorkNewYork.com website because MGM has paid Godaddy for that to happen.
As the domain name owner I DONT KNOW Godaddy is doing that. I make NOTHING FROM IT. Of the 3 parties that benefit from that arrangement (Godaddy, Google, MGM), you would have it that I AS THE DOMAIN OWNER is the one that should suffer the liabilty?
I DONT THINK SO!
So that’s where we disagree. You think 200 million domainers need to learn the existing law, and I think existing law needs to learn that the world has opened up, a new world, and adjust accordingly.
Unless you think the guy from the Bronx who registered the name yesterday should have to pay MGM $101,000 because of the actions of the other 3 parties?
“there are a lot of people who don’t understand the legalities about owning and using domain” – You see a few million criminals, I see a bad law!
Just talking out loud Elliot.
IMO. Honestly, a horrible decision from what is on the face of it, a generic name for NY NY, the city and state. The fact that a hotel chain decided to copy NY NY and name their hotel after it is germain to the issue.
if the ppc ads are machine generated one could argue that the owner of the domain doesn’t really control what ads appear.
fine the guy but dont take the name. thats horseshit.
i cold have a bar named Cheers, I may get a lawsuit but I wouldnt lose the bar.
If you have a bar named Cheers, they will take away the name but not your physical bar. Likewise, the court took his domain name but I am sure he could have kept the actual website had there been one.
I thought you agreed that it was the content on “website” that violated the copyright, not the url?
And the court didn’t just ‘take’ his domain name, the court gave ownership to another party. There are supreme court cases that discuss forfieture and eminant domain.. but i’m not aware of any that transfer ownership to a 3rd party. There may have been millions of OTHER parties who could have legitimate use for that name, but one was singled out and granted the name.. An owner that is 2,700 miles removed from New York New York.
Rulings like this only make it so that corporations have incentive to be 1st in.. they create incentive to file lawsuits. I mean, if the website had 2,000,000 rotating images, and 1 of them was the NYNY Hotel.. would that be sufficient to confiscate someone’s property? 2 of 2,000,000? 3, 4?
How did 1, of a virtually infinate number of entities that could leggaly use that domain address, gain control of it? They went to court first. Had the “New York” hotel in NYC won the name had they gone to court 1st? Yes. They won it by suggesting they may have SOME right to it, even MORE that the existing owner, but NOT that they had MORE right than countless others.
Next we’ll have ShitBreath suing you for liable for calling him ShitFace since it is only his breath that stinks and not his entire face. 🙂 All in good fun.
The content is what caused him to lose the domain name. He misused what otherwise would have been a valuable geodomain name. As a result, he suffered the penalty as proscribed under US law. It wouldn’t make sense for a cybersquatter to be able to keep a domain name. Sure, it sucks in this case where he lost what could have been a generic domain name, but for most cases like Verzion.com or Micrasoft.com or whatever, it makes complete sense for the plaintiff to get the cybersquatted name.
The bottom line is that the owner used the name in a way that a court ruled it infringed upon another company’s trademark, and he suffered the penalty for it.
Just about every word and phrase is trademarked. It’s the domain owner’s responsibility to use it in a way that doesn’t put the domain name at risk.
The owner has a right to file an appeal. Any New York company can use this name to promote their business. The casino wanted to acquire the name for free. They didn’t lose any business because of the name. That particular casino is always busy.
If the owner had the money to fight the case, it would be worth it to influence the casino to spend more money instead of a few pennies to file a suit. Even though he would probably lose, at least he didn’t give up or make it easy for the casino to acquire the name. Technically speaking, the casino probably forked out a measly filing fee to win this name. They should have to pay just like every other investor.
A generic name like that is probably worth close to 6 figures. Did the casino ever make an offer or even attempt to acquire the name since their est. Who knows? These companies need to be challenged. In my opinion, the casino doesn’t deserve the name no more than the owner. They should donate the name to New York City, and let the city do what they want with the domain name.
I’m sure the casino filing a suit against the owner for monetary damages resulting from the name entitled them to assuming legal ownership of a name that will probably be used as their main website. Sour deal.
As a new domainer I never knew the term “cybersquatting” until it was pointed out on an article at dnpimping.com. I thought domaining can be as easy as registering trademarks and selling them high, although it isn’t anymore to find trademarks I did however register some names that might smell like cybersquatting. After reading the article on dnpimping I dropped the prices of those domains to the lowest price possible on sedo; $60 and I’m not planning to renew ofcourse.
Welcome to the domain industry. You’ll need to do more than list the domains on Sedo. It seems nearly impossible to make a sale there if you don’t advertise those domains. I sold a few there, but I had to advertise them.
In regards to copyright stuff, go after more targeted names. There are plenty of good names out there. Think like a business. Buy names that don’t bear any company trademarks. If you put in the work, you’ll definitely do well.
I made many mistakes buying too many new york-related names and various word phrases, but it all worked out because I sold a few to cover the cost.
Avoid the copyright stuff. Good luck.
As I understand it, and as he claimed to the court, this guy acquired the domain name before the casino was even built. He denies being a cybersquarter. When they clicked on the photo of the casino they went to the Expedia booking engine for NYNY hotel, as authorized by MGM.
I dont think this is such a clear case of this guy being a big jerk cybersquating thief. Not At All.
Yes, the court ruled he had the wrong content on the website. It could have been ANY website, NewYorkNewYork9.com – and it was still wrong.
But the penalty for doing so is $100,001 (when the max is $100,000?) as well as losing the domain that you admit is otherwise a valuable geo domain. WAYYYYYY TOOOO MUCH.
Especially when he made some good points in his defense. If you dont wear your burka in some parts of the world – they stone you to death.
Cause the MGM a little problem and they get for for 6 figures plus valuable property.. that rightly belongs in New York New York where you can BE SURE that hundreds of hotels that are actually IN New York have trademark rights that were established long before this mirage in the desert.
*That said, I dealt craps and 21 across the street from this place for years, always enjoy the place personally.
“As I understand it, and as he claimed to the court”
It was a default judgment, so I don’t believe he claimed anything to the court.
There were legal briefs filed… but as he states in the lvsun article your link to “Katzin said he’s adamant about not settling, because a settlement could wrongly brand him as a cybersquatter – someone who registers domain names with the bad faith intent of profiting from well-known brands.
“I am not a cybersquatter,” Katzin said.
I’m not surprised that MGM could afford BETTER legal results than Mr. KKatzin.
If he wasn’t trying to profit from their brand, why did he allow the LV hotel and casino links? It should have been NYC hotels, Central Park tours…etc.
Anyway, I think he should have protected this better and its a lesson to domain owners that generic domain names may be generic in some ways but could infringe on trademarks when used in some ways.
The owner should file an appeal in the appelate court. He shouldn’t allow these bullies to take something they were too cheap to purchae. If I was barely scraping by, I would fight the case to keep companies from taking advantage of the consumer.
Everybody always has their take on how they think the owner’s intentions. I could see if the name was NewYorkNewYorkCasino.com (casinos main site) or NewYorkNewYorkLasVegas (another propert of theirs). The case is more about the use of the domain.
If they’re going to strip the owner, then they need to return the domain to the state it belongs in. Now the Casino owns a prime name that they probably refused to pay a cent for (personal
perception). I would file an appeal on the case. That casino has no right to own that domain.
The archives show links to the casino. It doesn’t say that he’s affiliated with the casino. He’s posing as an impostor. I’m sure the profit, if any, was nothing to brag about.
I think that the fine was steep, but losing the domain is ridiculous. It’s like paying a fine and losing your home. The lesson here is to acquire LasVegasHotels.com and take all of the hotel business. I’m sure the domain is worth 7 figures, so apparently that’s not an option.
Could the domain owner have contacted MGM to work as an affiliate with them? It would make sense to write about hotel to drive traffic to their casino for a decent commission.
The domain lesson today is to be alert when purchasing any .net domains that are already registered, since it seems that the .net may infringe on the .com. What if you owned a domain before a company is approved for a copyright or a patent? Would you have to choose another topic to make revenue?
I’m assuming that running a site using another company’s brand can manipulate people into thinking they’re affiliated with the casino. What if the owner wanted to drive traffic to the casino because he liked the place? Would he have been in violation? is it possible that he didn’t want to sell the domain, or that another customer complained about using the site.
That website looks rather dull. Nothing exciting. It’s obvious the website is not affiliated with the casino. There’s dating links on there. Casino websites are much nicer and interactive.
This domain should be given to the state of New York. Why give it to another place that stands to make a profit with it. Instead of typing out a long tailed address, now the website will be the actual name of the casino.
No matter what anyone thinks, this was a bad deal. Either lose the domain or pay the fine. Not both. It’s like paying a fine and serving the time. Did the owner make such a large amount of profit that cut into the revenue? If he was pulling down a million per year in revenue using the links, then it would be a problem.
Did customers lose their reservations or experience problems with their booking? It would be interesting to read the entire excerpt to the case decision.
Would an owner be in violation of the cyber law, if they used an exact name domain to drive traffic to the .com using a .net?
For example, an owner forwards traffic to NewYorkNewYork.com using NewYorkNewYork.net, but they’re not making any profit.
Would it be a problem? The owner may enjoy major traffic to resale the domain in the aftermarket. What if the owner forwarded traffic to NewYorkNewYorkCasino.com? In my opinion, I assume this case is about making revenue, as well as claiming the domain for much cheaper than actually negotiating to obtain the right to the domain name.
Surely enough, the case was less expensive than trying to acquire a profitable generic name that leads the case in discussion.
Elliot. With all due respect. I dont give a rats arse about this particular case. There are winner and losers all the time. Moral, legal, ethical and practical judgements. He has NewYorkNewYork.com and promoted ALOT of things. You have Lowell.com, a minor little city that is otherwise insignificant here in MY HOME STATE of Massachusetts. You promote EVERYTHING on that site, as you should. Do you think that a company named Lowell or with a trademark or copyright for the term “Lowell” should be able to take your life’s work PLUS $101,000 just because you might have a picture of their brand somehow among your website, and you profited from it?
Did you check for EVERY POSSIBLE AND CONCEIVABLE TRADEMARK AND COPYRIGHT infingement that others might have to “Lowell” before you went forward?
I DIDN’T THINK SO!
And if you did, you’d be better spending your valuable time being a tyrademark attorney then a simmple guy trying to honestly make a living promoting stuff.
@Jason thanx for the advise, much appreciated. I think I’ll be off topic here if I ask how do you advertise your domains, maybe there’s a way I don’t know, maybe there are others who have information others don’t.
Just opening a new topic for Elliot perhaps in a future post “How do u advertise your domains”. it would be great if we share our strategies.
There are a number of ways to advertise. Since you mentioned trademark issues, then there may be some restrictions. However, you managed to pass Sedo’s preliminary assessment.
You can pay a set fee to promote your domain at Sedo. In adition, you can use any of the free online advertising sites such as Sales Spider and or Craig’s List. Keep in mind that you may have to wait for a buyer to come along. You might not even get any nibbles.
The best way is to contact people that may own similar domains to the ones you have up for sale at Sedo. It really depends on the domain names and which names you think may have
Write a description about possible uses for the domain name. Build value into the domain. Take into account that Sedo charges 10%. You may want to slightly increase your asking price. You can put a make offer with or without a price. This way you can push the domain into the marketplace after it receives an offer.
I hope those tips work. Elliot and others are hundreds of times mote successful than me. We all have to go through different phases to become successful. Good luck.
Read this post if you want to see the truth about this case of reverse domain name hijacking —
Thanks for your perspective.