Displaying posts tagged under "Cybersquatting"
Last month I wrote about how jeans company True Religion lost a domain name arbitration case with the owner of TrueReligion.com.
The owner of TrueReligion.com registered the domain name in 1998, many years before the jeans company came into existence. He originally used the domain name to write about Islam. But once the jeans company became very popular, he started using the domain name to profit from the True Religion brand.
The jeans company lost its UDRP domain name arbitration case. In order to win, it would have had to prove that the domain name was originally registered in bad faith back in 1998. That’s impossible since the jeans company wasn’t even around.
Having lost the arbitration, True Religion has now turned to the courts. The company filed a federal lawsuit (pdf) yesterday in U.S. District Court against the domain’s owner, Ali Ibrahim Abu-Harb of Riyadh.
True Religion has a legitimate beef with how the domain name has been used in recent years. That said, I take issue with a couple claims made in the suit.
61. Defendant has not made any prior use of the Domain Name in connection with the bona fide offering of any goods or services.
Yet the jeans company already stated earlier in its suit that the defendant had used the domain name for a site about Islam.
The suit also doesn’t mention the result of the UDRP case.
In the suit, True Religion also claims that “Defendant, through his agent, offered to sell the Domain Name for $1 million dollars to Plaintiffs”. I’ll be curious to see if this was in response to an overture by the Jeans company, rather than a proactive offer by the defendant. (The exhibit containing this offer has not been uploaded to the court’s docket yet.)
The content at TrueReligion.com recently changed to again discuss religion. It also has a message that the domain name is for sale for $300,000.
The suit does not explicitly ask that the domain name be transferred.
Typosquatters were quick to register domain names similar to new health exchanges.
Yesterday marked the official start of the health insurance marketplaces under Obamacare. Residents of most states can shop for plans at HealthCare.gov, but 17 states and Washington D.C. have their own websites for their health exchanges.
The domain names selected by each state have no similarities. Some use .com, others .org, and still others .gov. Some use state abbreviations, others don’t.
What’s one thing they do all have in common? Cybersquatters and typosquatters are all over them.
Consider California, which calls its site Covered California. California gets the bonehead award, because someone beat it to registering CoveredCalifornia.com. I guess the state announced the name before registering the domain. It ended up registering CoveredCA.com, and now CoveredCalifornia.com is owned by Health Exchange Consulting Group, LLC.
It gets worse. Plug CoveredCA.com into DomainTools’ typo finder and you’ll find a long list of sites trying to capture people with fat fingers. There are actually quite a few insurance companies buying up typos, but most of the domains are protected by whois privacy. Example typos include wwwCoveredCa.com, Covreredca.com, and Covveredca.com. Some of these point to domain parking pages with pay-per-click ads while others point to health care lead generation sites.
With its population, California is certainly the top prize for typosquatters. Yet other states also face a challenge.
One mistake comes courtesy of Idaho, which hosts its exchange at YourHealthIdaho.org. This looks like another case of announcing the name before registering the domain. A third party owns YourHealthIdaho.com and uses it to pitch flexible spending accounts.
New York deserves credit for registering the exact match .com NYStateofHealth.com, even though it uses NYstateofHealth.ny.gov for its health insurance marketplace. It gets bonus points for forwarding the .com to the actual website.
Below is a list of state health exchanges and their URLs. You can plug them in at DomainTools to see how people are taking advantage of them.
New Mexico bewellNM.com
New York Nystateofhealth.ny.gov
Rhode Island HealthSourceRI.com
Utah AvenueH.com (for small businesses)
Company formed in 2011 claims domain names registered in 2009 infringe its trademark.
Brightwurks, Inc., which owns support service Help Scout, has filed an in rem lawsuit (pdf) against the domain names HelpScout.com and Help-Scout.com.
Here’s what happened:
In 2009, Andy Eder of Germany registered the domain names.
In 2010, the plaintiff registered the domain name HelpScout.net and started building a business on it. He obviously chose the .net because the .com was taken.
In 2011, the plaintiff started using the term “Help Scout” in commerce and filed a trademark application that was registered in 2012.
Starting in 2011 the plaintiff started reaching out to Eder about buying the domain name. After not having luck reaching him, the plaintiff sent another communication and offered $5,000 for the domain:
Eder responded asking for a six figure sum.
So Brightwurks, Inc. did what any ill-minded company would do when it realized someone rightfully owned a domain name it wanted: it filed a UDRP.
The UDRP was dead on arrival because Eder registered the domain name before Brightwurks started using the Help Scout brand. Unless Eder is psychic, he didn’t register the domain name in bad faith.
Having lost the UDRP, Brightwurks decided to file an in rem lawsuit in Virginia against the domain names, claiming cybersquatting.
The suit does mention that it lost a UDRP for the name, but claims that the panel didn’t address the fact that Eder renewed the domain name in bad faith. This is the argument that if you own a domain name and someone else creates a brand around it, then the owner should for some reason relinquish the domain name rather than renew it.
Hopefully the judge will see through it, and hopefully Eder will defend his domain names.
Patent covers discovering and prioritizing cybersquatting issues.
The U.S. Patent and Trademark Office has granted patent number 8,499,032 (pdf) to Yahoo for a “System and method for compiling a set of domain names to recover”.
The invention, which I wrote about when the application was published in 2010, allows a trademark owner to generate a list of potentially infringing domain names. This list is run against network data to prioritize which domain names get the most traffic. If the trademark already owns the domain but it doesn’t resolve, it can be flagged to add content to the domain.
If another party owns it, the invention helps determine if there any “aggravating factors” against the registrant, such as if the registrant is a known cybersquatter.
Jonathan Matkowsky, previously Yahoo’s Legal Director, Global Brand Protection, is the listed inventor. He has since left Yahoo and is in private practice.
Law firm with the generic name “Outside Legal Counsel” sues Dan Rubin over OutsideLegalCounsel.com domain name.
[Update: the case was resolved.] A law firm called Outside Legal Counsel Plc has sued JustDropped.com and its owner Dan Rubin, claiming he is cybersquatting on OutsideLegalCounsel.com.
At first I thought the attorneys for the case made a mistake, as it appeared someone acting as outside general counsel (a common name for an outside law firm working on behalf of a company) mistakenly put the plaintiffs name as “Outside Legal Counsel”.
But then I realized that this is the actual name of the plaintiff.
Here’s what allegedly happened (pdf), and it’s a somewhat cautionary tale.
Outside Legal Counsel Plc went into business in 2010. At the time, OutsideLegalCounsel.com was registered by The General Counsel Group so the plaintiff in this case used two alternate domain names.
OutsideLegalCounsel.com expired in April and Rubin picked it up on the drop.
That’s when things went wrong. Michelle Rubin emailed Outside Legal Counsel Plc this note:
We own the domain name OutsideLegalCounsel.com and think it would be a great fit for your business! We are only asking $488 for the domain name which is a one time fee. This is a very low price for a targeted, often searched domain name! If you get 1 NEW CUSTOMER this name will have paid for itself immediately.
You can convert the traffic from this domain to your main website, or build the domain into a website of its own. Do not lose your chance to own this domain to one of your competitors. Domains such as this are becoming extremely expensive and will no longer be available in a few short years!
I am sending this email to a few parties I feel could put the domain to good use. Please let me know if you are interested or if you have any questions about the next step to purchase it.
I think we can all agree that $488 is a bargain for this domain and that Rubin likely purchased it for the generic nature of the name.
So here are the two lessons:
First, you’re always taking a risk if you email a company who’s name matches the domain you’re trying to sell. Even if they really have no rights to the domain, they might think they do. (It doesn’t appear that Outside Legal Counsel Plc has filed any trademarks on the name. Its complaint says “Plaintiff is the owner of the mark “Outside Legal Counsel” or alternative is Plaintiff’
s personal name that is treated and protected under law.”)
Second, if you try to sell a domain to a law firm and the name matches their company name, you’re at pretty high risk of them suing you, even if you only ask $488. It’s cheap for them and it’s in their human nature.
[Note: the original version of this article mistakenly referred to "Outside Legal Counsel Plc" as "Outside General Counsel" in multiple places. This has been corrected.]