Cigarette Company Wins DJ Domain Name at UDRP

By Zak Muscovitch.

The domain name, DJBLACKNMILD.COM was ordered transferred to cigarette company, John Middleton Co. by an NAF Panel in a decision dated, January 7, 2015.

The Respondent, was "j alvarez" from Alabama, USA. What caught my attention here, is the oddity of someone purportedly cybersquatting on a cigarette brand by supposedly adding "DJ" to it.

The Complaint was undefended and the Panelist noted that the Complainant had registered trademark rights for BLACK & MILD, including USPTO registration number 1,177,552, registered November 10, 1981.

The Complainant thereby met the identical/confusingly similar part of the three-part UDRP test, since the domain name merely added "DJ" to the Complainant's mark.

Secondly, the Complainant also succeeded under the 'Legitimate Interest' part of the test, since there was no evidence that the Respondent was 'known as DJBLACKNMILD' and the domain name was merely used for general advertising links.

Thirdly, the Complainant succeeded under 'bad faith registration and use' of the domain name, due to its 'non-use'.

But again, why would somebody add "DJ" to a cigarette brand? Well, I Google searched "DJBLACKNMILD", and I found that there is a Louisiana based DJ called, "DJ BLACK N MILD". He even has his own Facebook page apparently.

So, it could be that this "j alvarez" was cybersquatting, but not on the John Middleton Co. cigarette brand, but rather, on the DJ.

The Most Common Mis-Understanding of What Cybersquatting Is

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Written by Zak Muscovitch

The most common misunderstanding that I see on a regular basis in terms of people using the term, “cybersquatting”, is that people do not realize that this word has a very specific meaning.

Many people thing that ‘anyone who has registered a domain name that corresponds to that person’s business name’ is a “cybersquatter”. But that is wrong. Cybersquatting is a special term that has a very specific meaning; Cybersquatting only occurs when someone has registered a domain name because they knew of your well known business name or trademark, and speciefically registered the domain name to prevent you from registering it, extort you, or otherwise interfere with your business.

Accordingly, if the domain name was registered BEFORE you adopted your trademark or before you acquired common law rights in your business name through extensive advertising, etc., then it is simply impossible that this is a cybersquat, as it would have been impossible for the domain name registrant to have specifically targeted your business name or trademark, since it didn’t even exist then.

When it is not cybersquatting, it is usually a case of you wanting the domain name but having no legal right to it. Then, your best course of action is to buy the domain name, or choose another one altogether.

No, You Can’t Register a Competitor’s Name as a Domain Name

One of the most common types of domain name disputes that I see, is a brand owner complaining that one of its competitors registered a mis-spelling or confusingly similar domain name to its brand. The brand owner is usually justifiably upset because one of local or direct competitors took advantage of the brand owner’s oversight in not registering all possible permutations of its brand as a domain name.

For example, Teddy Bear Grocery’s, the operator of the fictional TeddyBearGroceries.com, would complain that the fictional Robert’s Groceries, across town, registered TeddyBearsGroceries.com (with an extra ‘s’), and is forwarding the domain name to its own RobertsGroceries.com, thereby “stealing” Internet traffic, confusing consumers, making “illicit” revenue from misdirected online sales, and infringing trademark rights.

Often, the competitor who perpetrated this, e.g. Robert, will claim that the infringing domain name was “available for registration” and that he is the rightful owner of it because he bought it for $10 from Godaddy, for example. If Teddy’s has a common law or registered trademark however, which is probably easy to prove in the circumstances, then this is clearly a case of cybersquatting, and Robert had no right to have registered the infringing domain name in bad faith, and has no legitimate interest in it.

If a cease and desist letter is sent to Robert by Teddy’s lawyers, Robert should probably comply and transfer the domain name, and hope that Robert leaves it at that, as otherwise, Robert could be liable under the Anti-Cybersquatting Consumer Protection Act, which carries penalties of up to $100,000.00 per cybersquatted domain name.

Zak Muscovitch

No, You Can’t Register a Famous Trademark as a Domain Name Just Because “It Was Available”

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About once a month or more, I get a phone call that goes like this:

Caller: I am a domain name investor. I just got into “the business”. I registered about 300 great and valuable domain names, and need some help in selling them and some legal advice.

Domain Name Lawyer: Thanks for calling me. Tell me about the names.

Caller: Well, I found this company called Godaddy that allows you to register domain names. I couldn’t believe it, but there were a ton of wicked names available, like YourCocaCola.com, DriveAPorsche.me, and ReebokShoesFit.co.

Domain Name Lawyer: I see. Do you have a question.

Caller: Not really, but I was thinking that one day I might need some legal advice, because I just got a letter from Coca-Cola demanding that I transfer my domain name to them. Would you be able to help me sell YourCoca-Cola to them since you specialize in domain names?

Domain Name Lawyer: Sorry, I cannot help.

Caller: Why not? I thought that you specialize in domain names and even help people sell domain names?

Domain Name Lawyer: Not that kind of domain name, I am afraid.

Caller: Why the hell not?

Domain Name Lawyer: Because registering a domain name like that is unlawful, and offering to sell it to the trademark owner is even worse.

Caller: I don’t mean to be rude, but the domain name was available and I paid $10 for it, so it is mine. How can that be illegal?

Domain Name Lawyer: Why did you register the domain name?

Caller: To sell it to Coca-Cola. I came up with this awesome idea of a website all about how people love Coca-Cola, and YourCocaCola.com would be just the perfect domain name for them to launch this site. I can’t believe their marketing company didn’t come up with this themselves….Anyhow, Coca-Cola earned about 2 Billion dollars last year based upon my research, and I think that 1% of that would be a fair price and I would share what we get with you if you will help me sell it to them.

Domain Name Lawyer: I do not mean to be the bearer of bad news, but registering a famous trademark like that to sell to the trademark owner is unlawful, and you best just hand over the domain name before you get into any more trouble. Sorry I can’t help.

Caller: You mean to tell me that Godaddy lets people register illegal names? Are you sure that you are really an expert in domain names? Because I spoke to a couple people before calling you, and they all told me stories of companies paying millions of dollars to get their domain names back after they inadvertently lapsed, or because someone got to them first. So I find it really hard to believe that a big company like Godaddy would allow someone to register a domain name that was illegal.

Domain Name Lawyer: Look, I have been practising domain name law for like 12 years, and there is something called the Anti-Cybersquatting Consumer Protection Act that makes this kind of thing illegal.

Caller: Did you say “legal” or “illegal”?

Domain Name Lawyer: Illegal.

Caller: Are you sure?

Domain Name Lawyer: 100%.

Caller: Well, I better talk to someone else I think, because I am out like $3500 from registering all these wicked names, and the fact that Coca-Cola wrote me a letter immediately after I registered the domain, shows just how interested they are in the name!

Domain Name Lawyer: OK, but here is some free advice: Stop registering trademarked domain names like that, as you are just wasting your money and potentially exposing yourself to massive fines and legal fees. The Internet grew organically, more or less, and there was no system put in place to prevent infringing domain name registrations; it is up to trademark owners to police their trademarks, not domain name registrars like Godaddy. Just because a domain name is “available”, doesn’t mean that you are legally allowed to register it. Go check out the thousands of ICANN UDRP cases where names were transferred away from cybersquatters.

Caller: But they can’t just allow people to register any available domain name and then say that it is illegal! Like, you aren’t allowed to just rob a bank!

Domain Name Lawyer: Nothing prevents you from physically walking into a bank and attempting a robbery…It is the law that forbids it and the bank security and/or the police that will catch you, and the judge that will sentence you….With domain names, it is kind of the same thing; you are not physically prevented from registering a trademark infringing domain name, but it is indeed illegal and there will likely be ramification if you get caught.

Caller: But they ALLOWED me!

Domain Name Lawyer: Look, I can add some brown sugar to soda water and call it Coca-cola and sell it off my front porch….But it is trademark infringing to do it, and if I get caught, I will be susceptible to legal proceedings, damages, and costs.

Caller: I dunno, I thought I was calling a Domain Name Lawyer, and you said right on your website that you defend against people accused of cybersquatting. How can you defend people accused of cybersquatting when you are telling me registering names like this is illegal?

Domain Name Lawyer: First of all, some cases are defensible, for example where a domain name is generic or descriptive, such as cars.com for a car website. Some cases, like the one that you will be facing from Coca-Cola, are not defensible at all since it is blatant cybersquatting.

Caller: My brother in law heard of a guy who sold the domain name, Ferrari.com to Ferarri, for a half a billion dollars.

Domain Name: Never heard of that and doubt it ever happened. But even if that were true, that is a one in a million chance, and with those odds, why be in the domain name business at all; just buy a lottery ticket instead.

Caller: Gees. Thanks. I am going to look into this further I guess.

Domain Name Lawyer: Good idea. I am glad that I may have helped you stop wasting your time and money before you got into any more trouble.

Poker Site Calls Poker Pro’s Bluff Over Alleged Cybersquatting

For those of you who follow professional poker tournaments on television, you may recall the name of Butch Boyd, a somewhat colorful poker pro. Well, he was recently the target of a domain name cease and desist letter over the domain name, twoplustwopoker.com. The claimant is Twoplustwo.com (i.e. without the "poker" suffix), which calls itself the world's largest poker strategy and resource web site.

As reported om gambling911.com:

"After additional back and forth emails between our lawyers and Boyd, Boyd continued to refuse our demands for a full accounting of the domain and website, and refused to enter into any sort of reasonable settlement. We sent a final demand letter to Boyd letting him know that we were out of options, and that if he didn't want to cooperate by providing the domain name data or entering into settlement negotiations, we'd have no choice but to sue him. Boyd responded to our attorneys with a two-word email: "F*** off." We filed our suit the next day.

I guess Dutch Boyd's bluff was called...Will be interesting to see how this one works out.

NBA Star Now Owns 800 “Cybersquatted” Domain Names

Could Chris Bosh Be a Future ICANN UDRP Respondent at WIPO or NAF?

So I read the news item where Toronto Raptors NBA star Chris Bosh won a judgment for $120,000 against a domainer, Luis Zavala (Hoopology.com) for registering ChrisBosh.com. The judgment apparently came down in April, but now Bosh's lawyers reportedly convinced the judge to order that the domainer's 800 other mainly sports and celebrity domain names domains be handed over to Chris Bosh as well, since the defendant wasn't likely to pay the $120,000 judgement...

Bosh's lawyer reportedly stated, that "the Raptors’ star has no intention of holding onto any of them except his own. “He’s not trying to make any money here. He just wants to give these players their names back.".

So let me get this straight....Chris Bosh sues a guy for cybersquatting and then takes 800 cybersquatted domain names as booty? And Bosh's lawyers are apparently going to decide for themselves, who deserves the domain names: “We are notifying the world that anyone whose name is on this list that has a legitimate right to the domain name, Chris will transfer it to them for free,” said Brian Heidelberger, one of three lawyers who represented Bosh." Wow. So the Judge gave up the court's jurisdiction to a sports star and his lawyers to determine who has the rights to particular domain names...Amazing. Here is the actual text of the lawyers' terms for handing over the domain names - a kind of screwy para-UDRP process entirely within the discretion of a basketball star and his lawyers:

Chris Bosh and Max Deal offer the return of the domain name free of charge as a courtesy to the celebrity named herein, provided that such person promptly requests the return of such domain name in writing from Max Deal. Domain names will not be returned without a direct written request from an authorized person to [email protected]. Prior to transferring any domain name on this list, Chris Bosh and Max Deal reserve the right to require documentation in their reasonable discretion to support the requester's rights in the domain name. Domain names on this list may or may not be renewed at Chris Bosh and Max Deal's sole discretion. Chris Bosh and Max Deal reserve the right to at any time in their sole discretion to delete or cancel domain names on this list. Chris Bosh and Max Deal will not charge any fees for the transfer of domain names on this list. All third party costs relating to transfer of any domain name on this list to an authorized rights holder, including but not limited to transfer fees charged by the requester's registrar, are the sole responsibility of the party requesting transfer. Chris Bosh and Max Deal make no representations express or implied regarding any domain name on this list. By requesting or accepting the transfer of a domain name, you hereby release Chris Bosh and Max Deal from any and all liabilities in connection therewith.

But wait...WHO IS MAX DEAL? Good question! Its a social networking site associated with/owned by Chris Bosh. According to Bosh's press release, "Max Deal is a social media company that allows brands to increase their reach". How does that fit in? This is what Chris Bosh has to say according to his press release:

"I will offer the return of the domain names free of charge, but I'd also love the opportunity to show their owners how Max Deal can help."

Ahhh, I get it. When someone calls up to get their domain name back off of Chris Bosh, the new owner of the cybersquatted domain names, he will take the opportunity to sell them on how they can use the domain names in connection with his social media business....According to the terms copied above, Chris Bosh can delete or cancel any domain name in his sole discretion. Better be careful or the domain name could get dropped and picked up by another cybersquatter. What happens if Chris Bosh decides to not give back a name because the claimant doesn't meet his criteria? Maybe Bosh takes the position that one of the highschool basketball players or Venezuelan racecar drivers on his list doesnt have common law trademark rights? Could Bosh be the Respondent in a ICANN UDRP? The Complainant could argue that Bosh registered the domain names in bad faith and is using them in bad faith because he won't give them back and registered them with the intention of using them in bad faith as part of his monetization scheme in Max Deal....

Can you imagine if a domainer registered 800 celebrity domain names and his defense was that he would give them back to anyone who convinced him that they were the rightful owner and listened to his pitch that they could do great business together by letting the domainer monetize their name? What would happen to the domainer in a case like that?....

Its great when someone is there to help out his fellow man. Thankfully the Judge realized this when she allowed Chris Bosh and his entourage to "distribute" the ill-gotten domain names.

And I note that at least one of the domain names in the list, cockblocks.com, is not a celebrity that I am familair with. I wonder what Chris plans on doing with that name....Will the rightful owner please stand up?

For more information on domain name law please visit https://dnattorney.com/.