Google bats .740 against YouTube typosquatter
Thursday, December 29th, 2011
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 Complainantâ€™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 Respondentâ€™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 Complainantâ€™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.