legal issues around "popular domains" approach

Yevgeniy and I have had an interesting week.

I registered a domain for him that apparently had some traffic which he was
directing to advertisers.

Well, last week I received a letter (by fax and FedEx) from a lawyer
representing the owner of a trademark for this name. (Doing some research
today, it appears they used to own this domain – the .ca version of their
…com name)

He had a good case. It would be hard to argue that the traffic was not 100%
people who were looking for his client, and thus this use of the domain
definitely looks like taking advantage of their trademark for commercial
purposes.

We had no case, not having made any other use of the domain, there was not
much to argue in our favour. We gave them the name (asking for reimbursement
for domain fees – he thinks that’s do-able)

Other interesting implications: The lawyer also sent letters to the
companies he found advertised at the domain name and got Yevgeniy kicked out
of two advertising networks.

To me, this brings up interesting issues for those who are using the
“popular domains” approach to domain registration. Could this approach not
be construed, on every occaision, as taking advantage of someone’s (perhaps
unregistered) trademark?

Re: legal issues around “popular domains” approach

I’ve actually had 2 or 3 people call me and ask why I “stole” their domain
name after I registered it when it expired. 2 or 3 more people have emailed
me and asked me what happened.

Once I explain what actually happened (their domain name expired, and
anybody could register it, and I did) they usually calmed down. After that,
we just worked out a way to transfer the domain to them. I usually just have
them pay me whatever I paid for the registration.

Honestly, I don’t want some domain that somebody still wants or is actually
using, but their “webmaster” forgot to renew it, or they got screwed by
Network Solutions somehow and the domain expired before they could register
it. I just want domains that have traffic that people aren’t using anymore.

Most are happy to be rid of network solutions when you talk to them. I have
had threats of litigation…like “I’m reading to spend all that I have to
get my name back by whatever legal means necessary”, but after talking to
them and explaining exactly what happened, then I just tell them to pay me
what I registered it for and we call it even.

There are actually a few rules in favor of domain name registrants that
register expired domains. I can’t find the article at the moment though…


Rodney Blackwell - site owner/administrator

http://T-ShirtCountdown.com http://TalkT-Shirts.com/
http://ihateclowns.com/ http://Globie.com/
http://DomainJunkies.com/ http://reservoirfrogs.tk
http://GotPaintball.com/ http://CircleRPrinting.com

“Winston” <wd@winston.org> wrote in message
news:a90dkk$jaa$1@www.t-shirtcountdown.com
> Yevgeniy and I have had an interesting week.
>
> I registered a domain for him that apparently had some traffic which he
was
> directing to advertisers.
>
> Well, last week I received a letter (by fax and FedEx) from a lawyer
> representing the owner of a trademark for this name. (Doing some research
> today, it appears they used to own this domain – the .ca version of their
> .com name)
>
> He had a good case. It would be hard to argue that the traffic was not
100%
> people who were looking for his client, and thus this use of the domain
> definitely looks like taking advantage of their trademark for commercial
> purposes.
>
> We had no case, not having made any other use of the domain, there was not
> much to argue in our favour. We gave them the name (asking for
reimbursement
> for domain fees – he thinks that’s do-able)
>
> Other interesting implications: The lawyer also sent letters to the
> companies he found advertised at the domain name and got Yevgeniy kicked
out
> of two advertising networks.
>
> To me, this brings up interesting issues for those who are using the
> “popular domains” approach to domain registration. Could this approach not
> be construed, on every occaision, as taking advantage of someone’s
(perhaps
> unregistered) trademark?
>
>
>

Re: legal issues around “popular domains” approach

“Rodney Blackwell” <rodney@webdiscuss.com> wrote
> Once I explain what actually happened (their domain name expired, and
> anybody could register it, and I did) they usually calmed down.
[…]
> There are actually a few rules in favor of domain name registrants that
> register expired domains. I can’t find the article at the moment though…

Yes, but my quesiton was more specific.

If you had any reason/use for registering the domain other than the existing
traffic, then I think you’re okay.

It seems to me that registering a domain in order to take advantage of
existing traffic could always be seen as taking advantage of someone’s
trademark. If I (deliberately) let winston.org expire, there are hundreds of
good reasons that someone else may legitimately register and use the domain
name. But if their only intent in registering the domain is redirecting
people who are looking for me, then they are taking advantage of my
trademark (even if they don’t know of my or my website or my trademark)

Re: legal issues around “popular domains” approach

“Winston” <wd@winston.org> wrote in message
news:a90fon$mlm$1@www.t-shirtcountdown.com
> “Rodney Blackwell” <rodney@webdiscuss.com> wrote
> > Once I explain what actually happened (their domain name expired, and
> > anybody could register it, and I did) they usually calmed down.
> […]
> > There are actually a few rules in favor of domain name registrants that
> > register expired domains. I can’t find the article at the moment
though…
>
> Yes, but my quesiton was more specific.
>
> If you had any reason/use for registering the domain other than the
existing
> traffic, then I think you’re okay.
>
> It seems to me that registering a domain in order to take advantage of
> existing traffic could always be seen as taking advantage of someone’s
> trademark. If I (deliberately) let winston.org expire, there are hundreds
of
> good reasons that someone else may legitimately register and use the
domain
> name. But if their only intent in registering the domain is redirecting
> people who are looking for me, then they are taking advantage of my
> trademark (even if they don’t know of my or my website or my trademark)

Well, you could also say that you are developing a site and in the interim,
you are directing traffic to a site that you think the visitors will like. I
guess it is about intent. But I don’t think you are infringing on a
trademark or taking advantage of it by registering a domain name.


Rodney Blackwell - site owner/administrator

http://T-ShirtCountdown.com http://TalkT-Shirts.com/
http://ihateclowns.com/ http://Globie.com/
http://DomainJunkies.com/ http://reservoirfrogs.tk
http://GotPaintball.com/ http://CircleRPrinting.com

Re: legal issues around “popular domains” approach

> guess it is about intent. But I don’t think you are infringing on a
> trademark or taking advantage of it by registering a domain name.

Exactly what i was saying – It’s not just registering the domain. it’s the
intent.

So the only thing that protects you when you use the popular domains
approach is that they can’t prove your intent?

In any case, once you’ve got the lawyers coming after you, fighting them
would be more expensive than most domains are worth.

Re: legal issues around “popular domains” approach

here’s an interesting article:
http://www.isp-planet.com/hosting/2002/expired_bol.html

do you think you fit ALL three of the requirements?

“Here are the rules. You have to prove that their registration of the domain
name meets all three of these conditions. First, the domain name is identical or
confusingly similar to a trademark in which the complainant has rights. Second,
the registrant has no rights or legitimate interests in respect of the domain
name. And third, the domain name has been registered and is being used in bad
faith. Bad faith is defined as registering the name just to sell it back to the
original owner, to prevent the owner of the trademark from using it, to disrupt
the business of a competitor, or to create confusion with the complainant’s
trademark. I doubt you have a case, especially since you made a statement on a
publicly archived forum that you have no trademark rights in the name.”

Winston wrote:

> Yevgeniy and I have had an interesting week.
>
> I registered a domain for him that apparently had some traffic which he was
> directing to advertisers.
>
> Well, last week I received a letter (by fax and FedEx) from a lawyer
> representing the owner of a trademark for this name. (Doing some research
> today, it appears they used to own this domain – the .ca version of their
> .com name)
>
> He had a good case. It would be hard to argue that the traffic was not 100%
> people who were looking for his client, and thus this use of the domain
> definitely looks like taking advantage of their trademark for commercial
> purposes.
>
> We had no case, not having made any other use of the domain, there was not
> much to argue in our favour. We gave them the name (asking for reimbursement
> for domain fees – he thinks that’s do-able)
>
> Other interesting implications: The lawyer also sent letters to the
> companies he found advertised at the domain name and got Yevgeniy kicked out
> of two advertising networks.
>
> To me, this brings up interesting issues for those who are using the
> “popular domains” approach to domain registration. Could this approach not
> be construed, on every occaision, as taking advantage of someone’s (perhaps
> unregistered) trademark?

Re: legal issues around “popular domains” approach

> First, the domain name is identical or
> confusingly similar to a trademark in which the complainant has rights.

In this case, identical.

> Second,
> the registrant has no rights or legitimate interests in respect of the
domain
> name.

If your only interest in the domain is to take advantage of existing
traffic, I think you’d lose on this one

> And third, the domain name has been registered and is being used in bad
> faith. Bad faith is defined as registering the name just to sell it back
to the
> original owner, to prevent the owner of the trademark from using it, to
disrupt
> the business of a competitor, or to create confusion with the
complainant’s
> trademark.

I think that using the domain to take advantage of existing traffic would be
construed as creating confusion with the trademark. The users are using the
trademark to reach the trademark holder and the new registrant is seeing to
it that they ending up somewhere else – this would seem to be the very
definition of creating confusion with the trademark, no? You could possibly
get out of this one by demonstrating that you did something else to generate
traffic other than rely on trafic intended for the trademark holder – but
otherwise you would seem to be causing this trademark-confusion for 100% of
the visitors to the domain.

Also these three rules are from the UDRP (dispute resolution policy for
domain names) – not the law. UDRP arbitors are notoriously pro-complainant
(The complainant selects an arbitor and pays the arbitor – hmm who would an
arbitor most want to please?)

In a lawsuit, I think what I said about the third point alone could be
sufficient.