
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.
When Aron Mystedt contacted me to tell me about his new domain name business project, I was immediately curious. Aron acquired the domain name, Symbolics.com, which is the oldest ever registered domain name. It was reportedly registered over 28 years ago!
Aron is offering a little place in “Internet History”, by allowing advertisers to use a “circle” on his website. I liked the concept, as it was novel, and having anything to do with the oldest domain name ever registered, was very interesting to me, being a domain name lawyer, active in Internet business since 1996. So, you can find me little DNattorney.com logo on Symbolics.com. How cool is that?! 🙂
How do you find out who owns a domain name? Aside from the obvious answer, which is use a Whois tool, such as Whois.net, through years of experience, hours of research, and some creative guesswork, we are often able to identify the likely owner of a domain name, even when the domain name is hidden through privacy protection.
For particularly tough domain name investigations, I will even engage a domain name investigator on my client’s behalf. The investigator will employ various tools and methods that are not readily available or obvious to the layman, and will often come up with excellent results. On occasion however, it is simply impossible to find the identity of a particular domain name owner, except by obtaining a court order.
Once we identify the domain name owner, we are then able to make contact with the hidden domain name owner on your behalf. Sometimes it is to make an offer to purchase the domain name, and sometimes it is in order to send a cease and desist letter to the domain name owner. At other times, it is crucial to identify the domain name owner so that we can prepare a comprehensive and specific set of allegations about the cybersquatter’s history of bad faith domain name registrations and cybersquatting. We use this information for a very powerful UDRP complaint. Accordingly, a solid domain name investigation is the key to a successful domain name acquisition or trademark enforcement procedure.
The Vancouver 2010 Olympic Games Organizing Committe (VANOC) has posted a "trademark infringement calculator" of sorts on its web site....Very strange, but it purports to demonstrate, with a "points system", what will be considered trademark infringement and liable for enforcement, and what doesn't. Of course VANOC gets to determine how many points to give someone, so this "calculator" isnt exactly a Texas Instruments model.....Scroll down a bit on their site to see the nice illustrations....I included one above from their web site (pursuant to the fair dealing provisions of the Copyright Act of Canada).
The interesting question is how come we haven't heard of any ICANN UDRP domain name arbitration proceedings commenced against purported Olympic cybersquatters (did I just infringe a trademark?, Whoops...).....I would have thought that if there was any chance of getting these purported cybersquats and infringing domain names off the registrants in time for the Vancouver Games (how many points was that?...lol), that a massive effort would have already been underway. After all, whats the point of shutting down a mom and pop t-shirt vendor in Vancouver because of supposed trademark infringement, but not taking any action against the potentially much more massive Internet market...