Domain Name Wire

Domain Name Wire

  • Google bats .740 against YouTube typosquatter

    1. BY - Dec 29, 2011
    2. Policy & Law
    3. 4 Comments

    Google wins 37 of 50 typo domain names.

    Google has won rights to 37 typo domain names of its YouTube brand, but it won’t be happy with the results.

    That’s because the National Arbitration Forum panelist who decided the case also determined that the typosquatter could keep 13 infringing domain names, including youtubr.com and youtbue.com.

    Google filed the case against the owner of 50 domain names that all forwarded to “survey” sites that mimicked YouTube. These sites earn money every time someone enters their contact information and/or completes offers.

    So why did panelist Paul A. Dorf decide that the typosquatter could keep 13 of the 50 domain names? Because they were all registered prior to the filing of a YouTube trademark with the U.S. Patent and Trademark Office on January 30, 2006.

    According to Dorf:

    All of these domain names have one thing in common: they were registered prior to Complainant’s trademark filings with the USPTO of January 30, 2006. The Panel finds that Complainant has not provided it with sufficient evidence of common law rights predating Respondent’s domain name registrations. Therefore, the Panel finds that it would be impossible for Respondent to have registered the above domain names in bad faith under Policy 4(a)(iii), where its domain name registrations predate Complainant’s rights in the mark

    Either Google’s lawyers messed up here or Dorf did. The first use in commerce date on the trademark is
    April 24, 2005, which predates the 13 additional domain registrations. It’s unclear from Dorf’s decision if Google explained this in its complaint.

    Regardless, I’d argue Google got screwed here.

4 Comments
  • YouTube was a massive website before google bought it, this guy was squatting prior to google buying youtube and registering the TM. Bad decision IMO

  • John Berryhill says:

    December 29, 2011 at 9:10 pm

    “The first use in commerce date on the trademark is April 24, 2005, which predates the 13 additional domain registrations.”

    Leaving aside the specific facts here, the “first use” allegation in a trademark application is not the subject of examination of the application. In priority disputes in the USPTO, not even the USPTO takes first use allegations as evidence the mark was used on that date.

    In UDRP disputes, if the domain name pre-dates the trademark registration, then it is a good idea for complainant to explain the status of their common law rights at the relevant time – when the domain names were registered.

    Ben here suggests that YouTube was very well known at that time, and concludes it was a bad decision. The problem is whether or not Google provided evidence that it was very well known at that time. UDRP panelists are not historical investigators. If Google did not present evidence of how well known it was at the relevant time, what is it that you expect the panelist to do?

  • I agree that the Panelist has to decide cases based upon evidence placed before it, and it is difficult to know whether Google submitted evidence that it had obtained property in the mark by using it and acquiring a very well known reputation in it. Agree that it is logical that Google would explain the status of their common law rights at the relevant time.

    Whilst you wuold expect a Panelist not to be an historical investigator I think the decision stuns most people intuitively as the Panel wasn’t dealing with a relatively unknown brand. This was a very well known trademark upon which special status is conferred. From that perspective, the reaction to the decision is understandable

  • “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

    At least theoretically, this phrase is couched very broadly, giving a Panel the discretion to decide disputes based on any rules and principles of law it deems applicable. (leaving aside the issue of statements or evidence submitted). Whilst I wouldn’t expect the NAF to ignore common law trademark law and secondary meaning, if you consider the historical development of the UDRP procedure, it’s purpose was to develop a single procedure to resolving disputes expeditiously, resident in different legal jurisdictions. The drafters of the Policy didn’t stipulate any one controlling doctrine or overarching trademark law which would be applied universally to determine the outcome of a dispute. Rather 15(a) gives a Panel full discretion in deciding which law, if any, it will apply to a particular dispute before it.

    This may end up making some difference in resolving disputes.

    On the other hand, it hasn’t taken much for complainants to convince panelists of bad faith on the part of Respondents and there seemed to be a lot of evidence of bad faith in this instance.

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