Posts Tagged ‘cybersquatting’

Activison in Battle with Rival Fan Base

Monday, 25 July, 2011 06:08 Written by Aaron Thalwitzer 0 Comments

John Frazier Jr., Guest Author

Modern Warfare, produced by Activison, is a video game series that has been developed for the past few years and is now entering its third installment. ModernWarfare3.com now redirects users to Modern Warfare’s rival, Battlefield 3.  Nerd fight!

Some even thought that EA, makers of Battlefield 3, pulled this stunt on their own. Activison has filed a complaint alleging that this domain was registered in “bad faith”. The unnamed operator of ModernWarfare3.com appears to have ceased and desisted, because ModernWarfare3.com no longer exists.

This may have been an example of domain squatting, a.k.a. “cyber squatting”. According to the U.S. Anticybersquatting Consumer Protection Act, cybersquatting is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else.

In practice, a cybersquatter first squats, then offers to sell the domain — at an inflated price — to whoever holds the applicable trademark.  Furthermore, the act in itself allows for profit earned off of the work or brand of others (if you can get away with it).

However, in this case the apparent squatting wasn’t done for profit. The purpose (as I am aware) for the domain name was instead to defame Activison’s brand and entice viewers to take a look at Battlefield 3. Thus, it falls under a different policy, UDNP (Uniform Domain-Name Dispute-Resolution Policy). Pursuant to UDNP, when a registrant chooses a domain name, he must “represent and warrant,” among other things, that registering the name “will not infringe upon or otherwise violate the rights of any third party” as referenced in the Complaint (see here).

Here’s an excerpt from the Complaint :

The UDRP requires the transfer or cancellation of a domain name if the Complainant can establish (1) that the domain name at issue is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) that the Respondent has no rights or legitimate interests with respect to the domain name; and (3) that the Respondent has registered and used the domain name in bad faith. UDRP 4(a). Each of these factors favors Complainant in this case. Accordingly, transfer of the Domain Name is appropriate.

So, ModernWarfare3.com is no more, ostensibly because of the UDNP. Score one for justice.

TuPAC-12 Shakup – All Eyez On Cybersquatters

Sunday, 13 February, 2011 20:06 Written by Scott Nyman 3 Comments

By Scott Nyman

Anyone following college football this past year will remember the big conference shake-up of 2010. The Big 12 lost two schools, dropping to ten schools represented. The Big Ten picked up one of those schools, the University of Nebraska, bringing the Big Ten’s total number of schools to twelve. That’s right, the Big Ten used to have eleven. The Pac-10 also picked up a former Big 12 school, the University of Colorado which, along with former Mountain West Conference University of Utah, brings the Pac 10 to twelve schools. Let’s recap. Twelve in the Pac 10. Twelve in the Big Ten. Ten in the Big 12. Got it? Okay.

After acquiring its new schools, the Pac 10 announced that it would change its name to the “Pac 12.” Through out its history, the former Pac 10 has stood out by using names that correspond with the number of teams included therein, as evidenced by prior names such as “Pacific-8” and “Big Six.” It seems, however, that the transition to Pac-12 will not be without its difficulties.

According to Whois.com, the domain www.pac12.com has already been privately registered to another party, masked through the Canadian registrant “Contactprivacy.” Fellow news postings and additional coverage of this story have stated that the website provides links to the “Tupac 12 pack,” a compilation of hits from the deceased rapper. As of the writing of this article, I was only able to find the banner title “Tupac Lives!” and a blank white page.

The lack of functionality or content for the present www.pac12.com could mean two things. First, the servers could be overloaded in light of the recent publicity and news coverage. Second, the lack of content could be due to a DMCA takedown request from soon-to-be Pac 12 Conference as it gears up for litigation to protect its trademarks and copyrights from its potentially cybersquatting opponents.

The Anticybersquatting Consumer Protection Act provides that a person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person (i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and (ii) registers, traffics in, or uses a domain name that in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark, or in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark. 15 U.S.C. § 1125(d)(1)(A)

The ACPA continues, stating nine factors used in determining bad faith. The likely relevant factor VIII considers the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties.

If I were the owner of the Pac12.com domain name, I would consider a hasty settlement with the soon-to-be Pac-12 Conference. Any hopes to get rich off selling the domain name for an exorbitant amount may be crushed by the reality of legal fees incurred while defending him/herself in what looks to become a vicious litigation battle. Either way, Tupac will be watching from the afterlife. And by afterlife, I mean his new identity as Miguel Sanchez, the mysteriously wealthy gentleman with the secluded estate in Tahoe.

Update:

The website, “www.pac12.com” appears to be working again. Also, Whois is now showing that the domain information is now lists Austin Linford of Draper, UT as an administrative contact.

Edit:

PAC-12 has provided us with an updated version of their conference logo.  The current logo is below:

Ferrari Stops Using F150 Mark After Trademark Dispute With Ford

Saturday, 12 February, 2011 15:11 Written by Mark Malek 1 Comment

By: Mark R. Malek

In a story out of Detroit that I read a few days ago, it seems as though there is a trademark dispute between Ferrari and Ford.  Apparently, Ferrari used F150 as the name for one of their race cars.  Ford sued Ferrari in the United States District Court in Detroit for trademark infringement and cybersquatting.  The cybersquatting claim comes from the website that Ferrari had registered – www.ferrarif150.com.

I giggled a little bit when I read that Ferrari said it was difficult to understand how someone could confuse Ford’s hulking truck with a race car – ya’ think??  Ferrari is probably not too off base with that argument.  I cannot ever imagine a scenario where someone could go to a car dealership looking for an inferior truck (I own a Chevy) and was confused when they looked at the sticker on a Formula 1 racecar.  Oh wait, car dealerships that sell Formula 1 racecars don’t exist.

The real gripe here is trademark dilution.  Ford’s concern is that they have worked so hard to popularize the F150 mark and that any use by an automobile manufacturer would dilute the value of that trademark.  Here’s the problem with that argument.  Ferrari is a very high end automobile manufacturer.  The vehicles that they make are so high end that it is very rare to see one.  When you do actually see a Ferrari pass you on the road, most people actually say “look, there’s a Ferrari.” It is not as though many people would normally interrupt a conversation to say “look, there’s a Ford truck.”  Ford’s trademark infringement claim based on dilution, however, does probably have some merit, and Ferrari would have to do battle on that front.

With respect to the cybersquatting claim, good luck Ford.  I do not expect that there is any way they would be able to prove that Ferrari engaged in cybersquatting when they registered the www.ferrarif150.com domain name.  The biggest hurdle that Ford will have in proving their cybersquatting claim is showing that Ferrari acted in “bad faith” when they registered the domain name.  In my humble opinion, I doubt that a marketing group at Ferrari sat around a table in Italy and decided that a good way to promote the 150th anniversary of their Formula 1 racecar was to, in bad faith, register a name that was confusingly similar to a truck, in an attempt to redirect traffic that would normally go to a website dedicated to Ford trucks.

Cybersquatting is normally reserved for the most egregious of behavior.  For example, if I were to register www.coke.com and put up a website to promote my new beverage and, to top it all off, I offered the domain name for sale to Coke for an exorbitant amount of money, then maybe I would have some liability under the Anticybersquatting Consumer Protection Act.

This case has resolved itself with Ferrari backing down.  Probably a good business decision, but I still think they would have given Ford a run for their money.

Groupon Sues Scoopon Over Domain Name Dispute

Saturday, 15 January, 2011 23:32 Written by Mark Malek 2 Comments

By: Mark R. Malek

According to a story by an Australian publication titled “Business with Wall Street Journal,” Groupon has filed a suit against two Australian brothers that have purchased the domain http://www.groupon.com.au.  As indicated by the Groupon CEO in the article, as Groupon has become more popular, it has also become a target for “opportunistic domain squatters.”

No kidding!  It is almost a guarantee that anytime this set of facts comes up, it will soon be followed by cybersquatting. In other words, if you can name a trademark that became popular almost overnight, I will show you a case of cybersquatting. Cybersquatting occurs when someone registers a domain name that is the trademark (or substantially the trademark) of another.  For example, if I was on top of things way back in the day, I might have been able to register Nike.com.  I’d bet that the good people over at Nike would not have been too happy about it.  However, back then, i.e., when Al Gore first invented the internet (see background on my ongoing joke here), there was not a great deal of cases or legislation that dealt with what eventually became an issue – cybersquatting.  As such, and if I was somehow able to have registered Nike.com, the big plan would have been to somehow make money off of it.  That could be accomplished in one of two ways.  First, I could hold it hostage and wait for Nike to send me a huge paycheck.  Alternately, I could just start engaging in commerce and people who would normally be looking for Nike products would come across my products instead.

As you can imagine, that is not something that powerful companies with expensive trademark portfolios (and money for lobbyists) really liked.  We eventually saw laws and cases that took this type of behavior into account.  That is why we have very clear case law on that which constitutes cybersquatting (apparently called domain squatting in Australia).  The facts that I read in this story seemed pretty dead on, but I do not purport to be an expert on Australian law.

The perplexing thing about this case is that Groupon apparently offered the brothers about $300,000 to resolve the matter and turn over the domain name.  When it was turned down, I suspect that there were a group of people from the business development department at Groupon sitting around and scratching their heads trying to figure out why such an offer was turned down….probably the same way that a similar group at Google has been sitting around a table trying to figure out why Groupon turned down a $6Billion (yes, Billion with a B) offer.

The Ugly Side of Intellectual Property – Infringement!

Sunday, 07 November, 2010 22:23 Written by Mark Malek 3 Comments

Gravatar Iconby Mark Malek

A downturn in the economy has resulted in a significant rise in the development of new technologies and new business models.  Many of these new technologies and business models are born of creative people that are looking for new ways to make a living.  A number of these creative people had either been laid off or were business owners that were looking for alternative sources of income.  Many of them were successful in their new endeavors, while others failed.  Those who were successful in their new endeavors sought to protect their intellectual property in a number of various ways.  For example, inventors filed patent applications, artists filed copyright applications, and others who came up with new brands for high quality products filed trademark applications.

Along with the rise in intellectual property filings has come the rise of infringement.  The infringement is not necessarily directed to the newly filed intellectual property.  Many times, the infringement has been of well-established technologies, copyrights and trademarks.  Unfortunately, the owners of the intellectual property that is being infringed find themselves in an unenviable position of needing to take legal action to put an end to the infringement.  The owners of the intellectual property have generally worked for many years at developing their intellectual property and have gone through much expense to do so.  Turning a blind eye to infringement weakens that intellectual property.

If you find yourself in the position of having your intellectual property rights trampled upon, then there are some steps that you likely want to consider.  The first step in attempting to stop an infringement of intellectual property is to simply put the infringer on notice of your rights in the intellectual property and demanding that they stop their infringing activities.  Many times, such a notice will result in stopping the infringement.  In some cases, however, you may be required to enter into some negotiations.  For example, and only in appropriate cases, you may enter into an agreement to “phase out” the infringing matter.  In other cases, you may even enter into a licensing agreement with the infringer.  Sometimes, the notice may be ignored, or the infringer may respond by contending that they do not infringe.  If, after further investigation, you still believe that infringing activity continues to be an issue, one option that remains is litigation.  Although undesirable and costly, litigation may be the only way to stop infringing activity.

As you can imagine, there has been a rise in intellectual property litigation as less creative people have tried to generate revenue on the proverbial intellectual property backs of others.  There have been many recent examples of these types of behavior.  One example is cybersquatting.  In this case, the infringer attempts to extort a trademark owner by holding a domain name hostage.  Another is creating derivative works on someone’s copyrights and then attempting to profit off of those works.  Yet another example is making an identical product as that of the intellectual property holder that bears an identical name.  It is sad to report that these are not hypothetical situations.  These are examples of cases that I have handled in just the past six months.

The Way Litigation Can Feel

If you are an intellectual property holder, do as much as you can to secure your intellectual property.  This can be achieved by marking your intellectual property with notices that inform the general public of your rights.  If you believe you are a victim of infringement, try to seek the advice of an attorney whose practice is focused on intellectual property.  Attorneys that focus their practice in this specialized field are generally able to recognize the appropriate intellectual property issues, and provide you the proper advice on dealing with an infringement.  The same advice goes for those accused of infringement.  If you are actually infringing, defending the action based on bad legal advice will end up being far more costly than simply swallowing your pride and stopping the infringing activity.

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