Recently in cybersquatting Category

November 2, 2009

Mickey D Does Espresso Pronto

caffeinated.jpgDear Rich: I have a coffee business and called it 'espresso pronto.' I failed to get a trademark for it. But I did get a domain name associated with it (the dot com version). A couple of years ago McDonald's decided to get into coffee and chose my business name and got a trademark for it. I changed my business name but kept the domain name. Now I have received a letter from McDonalds stating that not only do they want me to stop promoting my domain but they want ownership of it. Can they do this? Frankly, as much as we'd hate to get involved in a dispute with the folks who invented the "Happy Meal," we're not clear who has the rights to the domain. You'll need to go through the long answer (below). 
WIPO Rules. Under domain name arbitration rules, if McDonald's has a trademark for "espresso pronto" and they can demonstrate that you registered or acquired the domain name in "bad faith," then they'll have a legal basis to acquire that domain from you. What's bad faith? It's if you own the domain primarily for the purpose of selling, renting, or otherwise transferring it back to the trademark owner (or to a competitor) for more than you paid -- in other words, if you're trying to capitalize on McDonald's trademark rights.
Who Has Trademark Rights? We're not clear what trademark rights McDonald's has to the mark. Although some websites use the "R" in a circle to describe the Espresso Pronto product, we're not seeing any U.S. federal registration (or applications) for the terms and the product is not listed on McDonald's U.S. menu. We did find references to it in New Zealand and we found two trademark applications in New Zealand's TM database for the term. Both were filed by McD Asia Pacific, apparently the Singapore subsidiary of the U.S. company. One application was abandoned and the other is currently under examination. So, perhaps we should assume you're writing to us from New Zealand? (That would be exciting. The Dear Rich Staff once traveled to Kiwi country and had a great time.) 
Playing by NZ Rules. We couldn't determine whether New Zealand has a cybersquatting law, but the international rules cited above would apply for ICANN arbitrations. You say you failed to acquire trademark rights to the term when you used it. We're not sure what you mean -- as any first use in commerce generally establishes common law trademark rights --but in any case, the fact that you no longer use the term does not help your case and may hurt it. Your case could also run into problems if McDonald's has evidence that you are offering to sell the domain at a profit to others - particularly a coffee-making competitor. If you're not offering to sell it for a profit and there's no evidence of bad faith, then McDonald's legal basis for seeking the domain appears misguided.

For more information on domain name arbitration, see Stephen Fishman's A Legal Guide to Web & Software Development.
May 4, 2009

Infringing Domain Name?

Dear Rich: Mdomainname.jpgy wife sells hand-made jewelry and recently started putting it up for sale in a local shop and asked me to help her get an e-mail address. Knowing a bit or two about the Internet I decided the best way to do this was to register a domain name and then setup a Google Apps account to host the mail. Everything was set up and fine and then last week I received an  e-mail from a law firm saying that the domain I had registered was an "infringing domain" and that the use of such a domain name that incorporates their trademark yadda yadda. Now they say that I have 7 days to respond and transfer the domain name to them and provide a sworn affidavit attesting that I ceased selling any goods that infringe on their trademark. If my wife's little side business is not related to anything that the other company sells, do they have any right to order me to turn over my domain name etc.? I didn't think that anyone could come after you for just requesting a domain name. I'm so glad you asked. The short answer to your question is "More information is needed." You're correct about the basic trademark principles -- if you're not likely to confuse consumers, then there's no trademark infringement. That's why, for example, different companies can use Arrow as a trademark for shirts and staplers and electronics (although only one company can have the domain name, www.arrow.com). Under another theory (dilution), a company with a  famous trademark can stop you from using a similar trademark even if the goods or services are not related -- for example, Microsoft could stop a company from selling Microsoft Vista dog food.

But wait, there's more... there's cybersquatting. If you acquired the domain name in bad faith -- most notably if you intended to hold the domain hostage in the hopes of selling it back to the trademark owner -- then the trademark owner can pursue you in federal court under anti-cybersquatting laws (or can force you to arbitrate under international domain name rules). The Dear Rich staff is not saying you're doing any of these things (and it appears from your letter that you're not). But if the big company is hassling you, we're not sure where that will lead. Keep in mind that there's a financial benefit for the law firm if you fight. (Law firms love people who drive up their billables.) We don't want you to cave to a bullying law firm but we're not sure of all the facts in your case and we're not sure that a $10 domain name is worth the hassle. (Unfortunately, it would cost you at least ten times that amount for a half-hour consultation with a trademark attorney.)
January 15, 2009

Stopping Blogspot Subdomains

com.jpgDear Rich: I have a question. My business partner and I have acquired trademark registration for the name of our business. We bought the domain name (.com), as well as about nine different extensions (.net, .org, etc.), and plural versions in nine extensions as well. We also have registered copyright protection on the name. I was going to use the name for a blog at the Blogspot domain -- but it is already taken. (The person who had it is no longer using it and has started a different blog.) Do we have any legal rights to the name when it is used as part of the domain name at Blogspot. If so, can we ask a confusingly similar website/blog to cease and desist? I'm so glad you asked. The short answer to your questions is, "Probably."

In your case, you registered in two classes and one of them included "On-line journals, namely, blogs featuring self-help, personal growth, and gratitude." So, you'll have a good basis to stop a blog that offers information or commentary under a confusingly similar name. That is, if you went to court, you would have a good chance of prevailing.

However, you will have difficulty asserting your rights against the blogger under international cybersquatting rules, even if the blogger acted in bad faith, since all Blogspot.com blogs are subdomains. In other words, bloggers at Blogspot.com don't "own" domains; they've acquired limited rights to post under Blogger's (that's the company that runs the service) terms of service. However, if the blog's name is misleading or confusing people as to its source, you may be able to appeal to Blogger (owned by Google, Inc., btw) based on a violation of its blog content rules. Write to them and explain the situation; they may be able to help you out.

The Dear Rich staff admires your diligence in acquiring all these forms of protection, but the staff is confused about your statement that you have acquired copyright protection in the name, since copyright does not extend to names

February 5, 2008

When domian names are mispeled: The rules of typosquatting

typosquat.jpgDear Rich: I have a question. I've been buying domain names that are common misspellings of well-known online retailers and then setting up websites with Google Ads. So when someone types in the wrong spelling, they arrive at my site. Then, they can then click through to the correct company's site using a Google Ad. I got a letter from one of the companies telling me to take down my site and give up my domain name. Why? Sure, I make some money, but aren't I doing a good thing by leading people who misspell domain names to the right company? I'm so glad you asked. I can't tell you whether what you're doing is a 'good' thing or a 'bad' thing -- let's leave that up to the Dalai Lama -- but I can tell you that what you're doing is called typosquatting.

A typosquatter purchases misspellings of domain name in the hopes of catching and exploiting traffic intended for another website. (It's been a lucrative source of income for many years.) Typosquatting is a variation of cybersquatting and if the company whose name you're exploiting takes you to arbitration under international domain name arbitration rules and proves you're acting in bad faith, you'll have to give up the domain name. If the company takes you to court in the U.S. instead, you'll have to give up the name, and perhaps pay damages. Some companies guard against this practice by purchasing the misspellings, such as www.amzaon.com (sic). Others have to chase down violators and either buy the name back from the squatter or go after them with lawyers -- for example, Land's End went after a typosquatter who purchased domain names such as www.lnadsend.com and www.landswnd.com and then demanded money for referring customers under the Land's End affiliate program. Nice scheme. (Land's End prevailed in the early stages of litigation, but so far, the company hasn't managed to acquire the domains.) Another unfortunate problem -- some unscrupulous typosquatters trigger malware. Arrivederci!