In my opinion, there’s a common misconception that if domain investors own trademark domain names, the worst that can happen is they lose them in a UDRP. Some people think their only potential loss would be the loss of revenue from the domain names. An article in Crain’s Detroit shows that cybersquatting can have far greater consequences, and hopefully it will serve as a bit of a wake up call to those who don’t know that they may be playing with fire.
According to the article, Weather Underground filed a lawsuit in U.S. District Court against Navigation Catalyst Systems Inc., Firstlook, Inc and COnnexus, Corp. Weather Underground was represented by two law firms, Traverse Legal (Enrico Schaefer and Brian Hall) and Hooper Hathaway (Anthony Patti).
The case started out with a winning UDRP filing for 41 domain names, but subsequent research showed that the company believed the defendant owned additional domain names. According to the article, Weather Underground filed a lawsuit and obtained a $3.5 million judgment against the defendants after identifying over “250 typos of their long registered and incontestable trademarks in defendant’s portfolio of parked domains,” according to Schaefer.
Yes, a company was awarded $3,500,000 for cybersquatting. Think about that the next time you consider buying typo domain names. Just because they might make some money, doesn’t mean it’s easy money. In fact, you could make a small fortune, but one lawsuit will cause you to have to turn over all of that and more. Perhaps your house and your cars if you aren’t lucky.
I am not going to judge someone else’s business model. We all take risks in this business, and each of us has to consider how much and what types of risks we are willing to take. However, if you think that the worst that can happen with trademark domain name is losing them in a UDRP, you may be mistaken and should read up more on this case.
Typo domains of popular brands have long been a “grey” area but with judgements like this it’s just a matter of time before there’s a knock on the typo domainers’ doors.
The first group to go under the spotlight will be the ones making money as affiliates – typo domain affiliates directly skimming traffic and stealing commissions from the brands, and this scheme is hard to cloak.
That is reason I don’t have one typo in my portfolio:) thanks for article good info
“…… Think about that the next time you consider buying typo domain names…..”
Not all typo domains are bad. Only trademark typos are bad.
There’s nothing wrong with NewYorkCiti.com
That is a very good point, although I think your example is bad given that Citibank brands as Citi and is all over New York.
True, until Citibank comes calling. 🙁
Makon’s example is to suggest that a type of a generic name or even GEO is acceptable. This strategy is how some top domain investors generated huge revenue – typos of the best generic names.
“Citi” may create unwanted bank ads on parked domains. A domain owner can choose their keywords wisely, even developing their website to generate hotel and travel leads.
Super generic names used wrong can cause a domain owner to lose the name and get fined in doing so (see Elliot’s past article on NewYorkNewYork dot com). We see this borderline domains that produce conflicting ads on domain parking platforms.
It is best to avoid parking on domain platforms that create conflict. In my opinion, the accused made it obvious they were trying to squat on the TM. 250 typos of the domain name is suspect of cybersquatting.
I believe this kind of fine (in this case $3.5M) only for obvious cybersquatters.
Or is it also applicable to say, the NiceCar.com domain owner (say if he lost the UDRP)
I think the big majority of domain investors do not own typo names of big firms or obvious TM.
The problem i always feel is when owning a domain that is TM but do not know it. It is very difficult to know all TM around and on the other hand every dictionary word or doubleword is a TM somewhere, even a pizza shop in a village.
Their argument was that the typos got registered from DNS error data and thus they had no ‘bad faith intent.” Essentially, they argued that the software did it. Needless to say, no one was buying that argument at all. DNS error data will move you towards high traffic websites which are mostly trademark protected.
Some of them I see as obvious. I don’t know the whole case to comment on it, but my problem (in general) is TM is not all encompassing across all possible uses. The whole purpose of TM is to protect the consumer from confusion of like products and the TM covers those listed uses. So who’s to say the domain owner or an eventual owner was going to use it in a completely unrelated market or possibly not even a commercial market at all where no possiblity of confusion would exist whatsoever. “Wund.whatever” could be a game or a makeup beauty product. To assume infringement when no actual product competition exists IMP crosses the line into thought police & corporate big brotherism. It ain’t right man! lol
Have ya’ll heard the song “John Deere Green”?
“In John Deere Green.
On a hot summer night ,
He wrote Billy Bob loves Charlene,
In letters 3ft high.
And the whole town said the boy should have used red,
But it looked good to Charlene,
In John Deere Green.”
That’s okay? But owning a domain like I do DeerJohnGreen.com or NewGreenTractor.com could nail me?
Dee Great question. The “who is to say” is the judge or the jury. These are always fact questions. But to say ‘it ain’t right’ is burying your head in the sand. When you have over 250 typo versions of someone else’s trademarks, and tens of thousands of typo versions of other people’s famous trademarks and you put up parking pages designed to show advertisements of the trademark owner’s direct competitors, and add keywords to the page including ‘weather’, it doesn’t take ‘thought police’ to figure out that you had specific bad faith intent to profit from someone else trademark.
1. Parking pages are dangerous since they tend to gravitate towards the trademark use.
2. Your entire domain portfolio might end up being an important piece of evidence (do you have other domains which you can’t reasonably explain owning beyond trademark infringement).
Any law that has a subject element like intent is a double edge sword. On the good side, it is easy to come up with an innocent explanation. On the bad side, you open up your entire business to the plaintiff who will look for any evidence to undermine your claim of innocent intent.
Be careful out there. It is potentially $100k per domain.
Yes I get the whole obvious intrusion aspect. However, someone register a domain today and a lot of registers just automatically put up a parking page where they are getting the $ and the domain owner is not getting a cent. So who is doing the damage there?
I understand there are some people who get a domain for just that purpose of paid parking. But I think there are many more who do not. Correct me if I’m wrong but i’m under the impression that paid parking is not a requirement of squatting.
is there any list of non-trademarked words?
I think, you may own a domain containing words which are not trademarked. I read a lot on this and all material doesn’t direct reader to a definite answer.
The usual process in domain registering is
think of a name
check whether it’s trademarked or not
if not – register the name otherwise ignore.
Simple, but, it too has loopholes.