Billionaire entrepreneur bought domain name to troll University of Michigan fans.
Billionaire entrepreneur Mark Cuban has lost the domain name GoBlue.com to The Regents of The University of Michigan in a cybersquatting dispute.
Cuban registered the domain name ahead of this year’s game between University of Michigan and Indiana University, the school that Cuban attended. Ahead of the October 8 game, Cuban posted a video stating:
You guys know I am a huge IU fan; an IU grad. Go IU. Beat Michigan. But I’m also a business guy. And I got the chance to buy this website GoBlue.Com. And I just had to do things for Michigan fans that I didn’t think I’d ever do, but to all you Michigan fans – and even you IU fans – check out GoBlue.Com. I think you’re going to love what you see.
He forwarded the domain name to Indiana University’s online store.
The University of Michigan filed a complaint with National Arbitration Forum, claiming that Cuban is cybersquatting. The Forum’s panel agreed.
Cuban’ representative argued that his registration of the domain was protected free speech. But the three-person panel wrote:
Respondent claims that the Disputed Domain Name was acquired as a joke to tease Complainant and its team’s supporters. The Panel accepts that the Disputed Domain Name may have been purchased as a joke at Complainant’s expense. However, the record shows that Respondent did not intend to solely make an inoffensive joke on a game night. Indeed, for two months since, the Disputed Domain Name has been resolving to the website https://indiana.nil.store/ which offers for sale a competing university’s goods. Although Respondent himself, the registrant, may not be a competitor of Complainant, Indiana University is a competitor, as it offers similar education services to Complainant and has a football team that competes against Complainant’s. Moreover, Complainant alleges that Mr. Cuban has economic interests in the NIL store, which Respondent does not refute.
The panel stated that if it was a joke, Cuban should have offered to transfer the domain after the game. (It seems that the panel thought the acquisition was related specifically to this game, rather than general trolling of the rivalry between the schools.)
In finding bad faith, it wrote:
Respondent claims that the redirection to the NIL store was solely a joke, related to a friendly rivalry between the Parties. Yet, Respondent states that Mr. Cuban is a wealthy business entrepreneur. As such, he was certainly aware that Internet users are constituted by a myriad of different people, not all familiar with US college sports. Hence, at least part of Internet users looking for Complainant’s products and landing on the Disputed Domain Name could be confused as to the origin of the goods on the Disputed Domain Name. Indeed, foreign Internet users looking to purchase college sports products, without supporting a specific team, could believe there is a connection between Complainant and the website in question.
While I understand the general point, it’s unclear why someone not looking for a specific team’s merchandise would go to a domain name clearly tied to a specific team.
I’m also bit confused by another conclusion the panel came to:
Respondent registered the Disputed Domain Name precisely because it was connected to Complainant’s trademarks and in order to configure a redirection to the online store of a competitor. Besides, Respondent argues that the Disputed Domain Name is costly. Therefore, it seems strange that the latter has chosen such domain name for a simple joke.
This seems to contradict the statement about a “wealthy business entrepreneur.” To Cuban, the cost was surely a drop in the bucket, lending credence to it being a simple joke.
The domain will be transferred within 10 days of the decision unless Cuban files a lawsuit.
Thanks for posting.
I’m always on the look out for potential UDRP decisions that’ll likely be contested in the Courts.
I hope Mark Cuban decides to file suit in Court because he is the right test plaintiff for this sort of challenge on 1st Amendment grounds.
He has the celebrity and $$$ to push this case to SCOTUS the same way Booking*com forced a new interpretation.
I hoped France*com would set a strong precedent favoring Domainers, but it failed. Until proven otherwise, France*com is the greatest injustice in domain legal history.
However, this Cuban case could be the next big one if he fights UDRP ruling.
Maybe if the stars aligned, Mark Cuban might become a backer of ICA and a celebrity advocate for Domainer rights.
Mark Cuban says
I bought the domains for 38k after the seller pestered me for more than a year. It was always meant to be a joke and then move to forwarding to markcuban.com. But It never because a priority to move it. Real life and all.
Explain to me the impact you think this will have for domainers ?
Richard Coogan says
Your next buy should be CubanCigars.com and/or MarkCubanCigars.com
Chris Hydrick says
I think this is more of a free speach issue than a domainer issue. UofM retaliating against the trolling and UofM using the commerce slip up (redirect to Nil.Store) as an inflection point to reverse the troll attempt into a loophole allowing UofM to acquire their desired domain name (GoBlue.com) for less money than they may have offered any of its previous domain owners.
There have been other, arguably more infriging domain names registered such as (m-goBlue.com) which was registered (not by UofM) from 2005 to 2020. This domain is currently available for registration, but previously it had parked links relating to UofM similar to how GoMavericks.com has parked links for the NBA Mavericks which is known to use GoMavs.com. Why didn’t UofM go after the domain owner of m-goblue.com? Probably because that domain owner didn’t say anything on ESPN to provoke UofM, and objectively GoBlue.com is a more valuable domain name to win in a dispute than m-goblue.com. Additionally, It is not known if UofM has had previous efforts of obtaining GoBlue.com, and the new domain owner + new use of the domain likely prompted a new strategy if UofM still had interest in acquiring GoBlue.com.
One domainer issue might issue might be defining acceptable usage of a domain name. If somebody owned MarkCuban.com, is it acceptable for that domain owner to forward MarkCuban.com to RobertHerjavec.com hoping that forwarding the domain would entice Mark Cuban to buy it to prevent the redirect? Harmless trolling, similar to the 2016 election cycle with the redirects of TedCruz.com and JebBush.com? This is not a domainer issue unless the intent to redirect to a competitor is to entice a sale.
The point that may shift this GoBlue.com away from free speech and to a commerce issue is how GoBlue.com forwards to Nil.Store (a Mark Cuban Company). Effectively, it appears Mark Cuban’s Nil.Store is making money/building traffic off the GoBlue mark, specifically in the college apparel sector. While not similar in scale, the usage of redirecting a mark to a brand, reminds me of when ChrisBosh.com redirected to Hoopology.com, where ChrisBosh.com along with 800 other domains were forwarding to Hoopology.com; Chris Bosh ultimately filed suit and won. More about the Chris Bosh case can be read in an archived article from the now general counsel of the ICA (InternetCommerce.org) Zak Muscovitch:
Lastly, if this comment is really from Mark Cuban or his representatives, then I highly recommend they take the word of an experienced domain attorney. Zak Muscovitch and the ICA are experienced resources, though IMO it doesn’t get much better than John Berryhill. <<>>>
Great points. This is why the Court is the correct venue for this type of case. Only Courts can issue the level precedent and clarity needed in a 1st Amendment case.
Mark Cuban responded on Twitter with a poll, as of this morning, 77% are of the opinion he should sue U of M. I agree with the super majority on this issue. These might be the same sort of folk on a potential jury.
I just can’t accept losing a six-figure domain to $1,500 administrative decision, especially after studying the [initiv.com ruling AGAINST Sanofi (July 2022)].
Different panelists and judges come to different conclusions, and Cuban has the support and resources to get a DEFINITE decision from the Courts.
The ICA & Cuban need to connect, because this is the level of overreach Domainers deal with daily.
Hopefully Andrew can host Mark for a much needed interview.
Logan Flatt says
Mark — to answer your question, the impact this would have for domain investors (i.e., not the pejorative “domainers”) is that if you took it to court under the ACPA of 1999 and won thus overturning the UDRP panel’s decision to take the domain name away from you or your representative, you’d be a celebrity representative of domain investor rights, which are actively represented at ICANN and elsewhere by the Internet Commerce Association (ICA). In short, you would be a bright star shining a light on the plight of domain investors who are forced to spend money on lawyers to defend frivolously filed UDRP complaints by weak trademark holders or non-trademark holders or trademark holders with rights junior to the rights of the domain name holder due to registration dates.
P.S. — Go Mavs!
C.S. Watch says
And by domainers one means individuals and new businesses.
If a mark has been used by MORE THAN ONE entity, prior to the domain registration date, then that domain should not be yanked in absence of a present bad faith USE.
(Under 100yrs of US trademark law–meaning, law in service of consumers’ valuable search time, and protecting consumers against a reasonable risk of confusion).
Absent this bright line rule, it is just government corruption–in favor of monopoly, and in favor of one citizen over another.
Respondent is Jason Ferrantello (“Respondent”)
Who is Jason Ferrantello?
Mark Cuban is using this name?
Who is owner of GoBlue.com Mark Cuban or Jason Ferrantello?
If you believe that you had a right to express yourself through your GoBlue*com domain asset, your case would be much stronger under the decision of the Courts.
UDRP doesn’t have a strong history of meeting constitutional standards.
My thought is that a Court will give more weigh to your ‘freedom of expression’ argument. Any protections recognized at Court level in favor of domainer rights helps domainers.
In fact, the most understated case to move from UDRP TRANSFER to Court overturning UDRP decision was VisitQatar.com. Study to judicial reasoning of the Judge in overturning the 3 Panelist decision.
The judge in the visitqatar.com case strengthened domainer rights; where 3-panelists tried to weaken them.
No way I’m walking away from a $38K purchase, over a $1,500 UDRP decision.
If Michigan wants GoBlue .com, they’ll have to take it at the Court level.
Logan Flatt says
The UDRP report states that Mr. Ferrantello is an employee of Mr. Cuban.
Well said Logan.
“Cuban registered the domain name ahead of this year’s game between University of Michigan and Indiana University, the school that Cuban attended.”
No. He did not. He may have purchased it but I don’t he “registered” it per se. To say he registered the domain name gives the impression that it was readily available to be registered at the time he searched it and I’m going to take a wild guess and suggest that go blue dot com was not available to be registered ahead of this years game between Michigan and Indiana and that he purchased the domain name from the prior registrant! Big O fer Mark as Indiana lost the football game to boot
C.S. Watch says
He’s just rich, he’s not dinner. Another UDRP stinker.
1. The UDRP is not to be used to settle trademark disputes. It’s a cursory procedure for expediting a ‘narrow class’ of clear cybersquatting. It doesn’t have the capacity for the evidentiary review TM disputes require.
2. There are 36 registrations for ‘go blue’ in the US*. Another 37 in the WIPO database (Mexico, UK, Canada…).** U of M’s rights are not superior to all of those other ‘go blue’ TM registrants, and this windfall for U of M harms all of them. The other mark uses are evidence of the inherent value in the domain. Value to which Cuban is entitled.
3. U of M knows exactly what they’re doing. They could not purchase the domain from the original owner because he would be risking his asset to the trademark lawyer panelist ‘activism’ that is rife in the UDRP. If the UDRP better adhered to the language of the ACPA on distinctiveness, U of M could have legitimately obtained it. The domain is not a ‘narrow class’ dispute, like a ‘michigangoblue.com.’ The domain is not even their ‘M go blue’ mark.
4. Under US trademark law, Cuban would remit the records of the profits from the errant affiliate link, and then hand that $0.17 over to U of M. Now if Cuban wants justice on his $38,000. domain name, he has to foot legal bills. Though as a Blue card user (American Express), I’d say it’s probably worth his time.
5. As U of M put it: “Respondent’s use of the Disputed Domain Name cannot be considered a parody as a parody should convey two contradictory messages: that it is the original and that it is not the original but a parody (Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 4th Cir. 2001). Oh, they want actual trademark law to be applied–that’s good news for Cuban.
U of M’s lawful move would have been to send Cuban a Cease and Desist for the affiliate link, which he might rightly have refused, along with a request to put “not the original but a parody” at the top of his website. Their clunky language at the top makes it even funnier.
Very detailed points to consider. I agree with the extreme over reach of UofM.
The UDRP is not the best venue for this dispute.
I hope Mr. Cuban considers all the strong points made in this comment section and forces this case to the Courts.
C.S. Watch says
These lawsuits are avoidable. The UDRP must be disciplined to keep ‘narrowly tailored’ front of mind.
*distinctiveness: (IX)…is or is not distinctive and famous…, as against fair use (I) and Cuban’s IP rights in domain’s inherent value (IV).