'Typosquatting' Found to Equal Bad Faith

[Sharpy]

In a recent case involving the redirection of users to a pornographic site by the registrant of "minorleaugebaseball.com", a WIPO panel has held that "typosquatting is inherently parasitic and of itself bad faith."Read More...

[GeorgeK]

Very bad decision, as it only used 'bad faith' to punish the respondent, but ignored the fact that the word was generic, where no one had trademark rights.

While one empathizes with minorleaguebaseball.com, bending the rules like that to help them out, when they really had no case, hurts the process.

[StockDoctor]

Great! I'd like to see all the typos gone, except those driving traffic to the trademark holder.

[draqon]

i see this as a very good decision, in keeping with WIPO precedent.

[Drewbert]

Well, stocDoctor and draqon, since your handles here are clearly typos in themselves, I'm sure you'll gladly hand them over to the rightful owners.

[GeorgeK]

I trust that the owner of Gamez.com will have to give it over to the owner of Games.com now?

[pljones]

All,

Zuccarini is challenging this decision in German court. Links to the German case is available in my UDRP-Court Challenge Database, page 3, #71: http://www.udrplaw.net/UDRPappeals3.htm

It remains to be seen whether this strategy will work for Zuccarini, given the recent GlobalSantaFe.com decision. Minor League Baseball could file an in rem case in the Eastern District of Virginia and block the German court's injunction.

[draqon]

there is a big difference between a typo of a single generic word, and a typo registered by a famous cybersquatter of a phrase that has been used for decades by a company or organization . Given the circumstances, they made the right decision IMHO.

[GeorgeK]

The problem is that "minor league baseball" is used by many organizations -- it can't be trademarked as it is generic.

While I agree that Zuccarini crosses the line a lot, and should be busted when he's typo-squatting on TMs, there's no trademark here. Thus, the case has to fail, even though his conduct is reprehensible.

Essentially, the panel is saying that if "bad faith" is bad enough, that one element, out of the 3 required elements, is sufficient to win a case. Not good, next time you or I need to be protected by those same rules. Who is to say that the panel doesn't "like" me or you next time, and decides to make up its own rules, instead of following the actual rules?

[GeorgeK]

Actually, it seems that the owner of the non-typo .com does have a TM ! (although, just in related categories) Makes for a very weak claim, still....if Zuccarini were to use the typo for a baseball affiliate, instead of porn, that would have put him in the clear, I would hope.

[pljones]

Now I don't like baseball as a sport, but I do know that Minor LB had many US Trademark registrations, so I don't think you can really call their marks weak. The domain name is a misspelling and the Panel found it confusingly similar. Bad faith wasn't a stretch given the "pattern of bad faith" established by the earlier cases.

Upon further review of the decision, what's interesting about the case is that Minor LB requested cancellation of the misspelled domain name, rather than transfer. Minor LB probably did this because they thought that if the name was cancelled, it would be sent to Domain Name Purgatory, never to be registered again. The Panel took it upon itself to transfer the name rather than cancel it.

Earlier this week I thanked John for passing along his latest German lawsuit challenging the Panel's decision. My German is pretty rusty, but I fail to see how this strategy is going to keep Minor LB from taking control of a domain name it doesn't really want. Minor LB can file its own suit in the Eastern District of Virginia and block the German case.

[GeorgeK]

However, under UDRP, doesn't the complainant stipulate to the jurisdiction of the registrant or the registrar for appeals at the beginning of the process?

[pljones]

No- the complainant is not bound to that jurisdiction, and neither is the respondent.

[GeorgeK]

From: http://www.icann.org/udrp/udrp-rules-24oct99.htm

1. "Mutual Jurisdiction means a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder's address as shown for the registration of the domain name in Registrar's Whois database at the time the complaint is submitted to the Provider."

3.b) "(xiii) State that Complainant will submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction;"

Why isn't the complainant bound to that mutual jurisdiction, given the above language?

[pljones]

Because several federal courts have said that the complainant isn't bound by that jurisdiction. I can provide you with specific cases later if you want.

[GeorgeK]

It would be interesting to know how hard the respondent fought, if they had chosen their own jurisdiction first. Fights over jurisdiction can be messy.

[jberryhill]

"Minor LB can file its own suit in the Eastern District of Virginia and block the German case."

Not necessarily. (and yes, I'm familiar with the Korean situation that you are basing this on) Comity considerations might play out differently w/r/t a German suit.

George, the UDRP parties expressly agree to at least one jurisdiction. That does not mean that there is *not* jurisdiction elsewhere.

A losing complainant, by agreeing they will be available in one place for a suit by the Respondent, does not give up their right to file suit wherever they can on their totally independent TM claim.

Similarly, a losing Respondent, by the same token, does not give up their right to bring a DJ action wherever they can obtain jurisdiction over the Complainant.

The point of the mutual jurisdiction clause of the UDRP is to make the parties agree that there is *at least one* place where a post-UDRP suit can be held. It does not act to exclude any other place where a suit might be held.

In fact, when a Complainant is sued post-UDRP, they will usually argue against jurisidiction, even in the mutual jurisdiction forum.

Why?

Because their admission to mutual jurisdiction in the UDRP is limited to it terms "Complainant will submit, with respect to any challenges to a decision in the administrative proceeding..."

There is one court that dismissed a case actually brought *in* the mutual jurisdiction, because the court determined the Respondent's suit was a trademark declaratory judgment action, and not expressly a "challenge to [the UDRP] decision". From there, the court held that the complainant did not agree to be sued for any other purpose than the one specified in the section of the UDRP you cite.

[YOYOYO]

I don't believe the "Globalsantafe.com" case would be applicable here as the reasoning the court gave for their decision was based on the fact they were the first court to claim jurisdiction over the domain.

In this case, Germany is the first court to claim jurisdiction.

The US court adopted a "first in time" rule to claim that it was the first to assert jurisdiction over the domain name.

That doesn't mean that the US court could not come up with some other reason to claim the domain. The US court can just make up any reason they want to take it.

They have not shown any reluctance to dream up new ways to take domain names away from people in the past.

Of course, then what is the use of the entire arbitration process if as soon as someone looses they run to a US court to try and get an "in rem" ruling to save themelves.

The whole "in rem" process I find amazing as the US has been trying to close off shore gambling sites for years.

Why doesn't the US just to what all these other people are doing and get an "in rem" decision for any website they don't like.

The reason they don't I believe is, to use the US courts to take away domain names from people and close down web sites by ordering the registry to delete the name is a complete violation of the trust placed in holder of the registry and the country the registry is in.

Why bother with anything else. Just get a US court to order the registry to delete the domain.

The "Globalsantafe.com" case is a travisty.

The "Globalsantafe.com" case is really no different as to what happened to all the .uk.co domains that no longer exist because a Colombian judge ordered the registry closed down because they did not agree to new contract terms to continue as the registry.

To me all registries should be untouchable

[pam]

If I'm not mistaken, wasn't there a famous case about this when a porno site registered dosney.com in the hopes people looking for disney.com would typo?

Wasn't this what started the entire typosquatting ball rolling?

[YOYOYO]

That domain was part of the discussion by a senate committee hearing about the acpa act. The domain dosney.com apparently still belongs to the original owner.

A lot of the force that went into the making of the bill though, are the suspicious claims of outrageous prices asked for, by registrants of actual correct spelling trademarks within domain names towards trademark owners.

This was the scare tactic that really got the momentum for the bill started.

"Warner Bros. was reportedly asked to pay $350,000 for the rights to the names “warner-records.com”, “warner-bros-records.com”, “warner-pictures.com”, “warner-bros-pictures”, and “warnerpictures.com”

Let's get real.

There is a link to a statement by orrin hatch about the senate committee hearing concerning the acpa act below.

Interestingly though there is within the statement of orrin hatch strong references to protecting the rights of registrants, which seems to have been lost in the application of the acpa act.

These statements below regarding the right of a registrants defense,

"the substitute amendment includes an explicit savings clause making clear that the bill does not affect traditional trademark defenses, such as fair use, or a person’s first amendment rights, and it ensures that any new remedies created by the bill will apply prospectively only."

"It is a balanced bill that protects the rights of Internet users and the interests of all Americans in free speech and protected uses of trademarked names for such things as parody, comment, criticism, comparative advertising, news reporting, etc."

In addition, surprisingly there is a very strong statement recognizing legitimate reasons for a registrant not using correct whois is information when registering a domain.

"Additionally, some have suggested that dissidents and others who are online incognito for legitimate reasons might give false information to protect themselves and have suggested the need to preserve a degree of anonymity on the Internet particularly for this reason. Allowing a trademark owner to proceed against the domain names themselves, provided they are, in fact, infringing or diluting under the Trademark Act, decreases the need for trademark owners to join the hunt to chase down and root out these dissidents or others seeking anonymity on the Net. The approach in the substitute is a good compromise, which provides meaningful protection to trademark owners while balancing the interests of privacy and anonymity on the Internet."

This was one of the reasons given for the addition of the "in rem" proceedings, that there may be defenseable reasons for inaccurate whois info therefore the "in rem" action could be taken without having to explore if there were or were not good reasons for inaccurate whois info existing.

This concern of legitimate reasons for inaccurate whois info appears to have been completely lost on the near fanatical movement now going in ICANN towards having registrars confirm accurate whois info for every domain in their system.

All of this does not change the fact though that this act was voted down by congress and became law only as special interest groups were able to get it attached to the budget bill of 1999.

This is not an act which is "for the people and by the people," but an act that is "for the special interests groups and by the special interests groups."

http://judiciary.senate.gov/oldsite/72999oh3.htm