Legal Decision Against Domainer And Registrar

[Dave_Z]

Read all about it:

http://www.ilrweb.com/pfdocuments/ilrpdfs/verizoncal_v_navigation.pdf

Rather interesting that the decision was also found against the registrar. To
think Network Solutions had 2 previous decisions of contributory infringement
in their favor, but this one turned out different.

Then again, this is just a preliminary injunction. It ain't over 'til it's over.

 

[jberryhill]

Rather interesting that the decision was also found against the registrar.

The registrar was apparently more than a passive service provider. In order to do tasting, which is what this suit was about and why it's not all that interesting to ordinary domainers, you need to have the registrar actively engaged in the process.

 

[flamewalker]

There is nothing in the statute that defines “registration” as complete only upon payment, and Defendants have pointed to nothing to show that Congress intended “registration” to hinge on payment. Further, “reserving” versus “registering” is a distinction without a difference -- either here entitles Defendants to the exclusive control and use of the names at issue, at least for some period of time.

Tasters of typos - beware.

All indications show that Defendants “used” the domain names they had “reserved” during the Add Grace Period. That is, they hosted websites using the challenged domain names, on which were posted paid advertising links to other websites, in some instances selling products in direct competition with Plaintiffs. Thus even if Defendants never “registered” any of the challenged names, the statutory requirement would be satisfied nonetheless.

Basically, you taste a typo and put up a website with paid links/other adverts, and the company finds out, they can sue and probably win... at least an injunction.

Defendants also argue that they lacked the “bad faith intent to profit” required by ACPA. However, they completely fail even to acknowledge, let alone discuss, that there are nine factors provided by the statute that should be considered in determining whether a defendant has the requisite bad faith for liability.

A review of these factors makes clear that Defendants had the requisite “bad faith.” They do not claim to have any intellectual property rights in any of the domain names at issue; nor do they claim that any of these names consists of any Defendant’s legal name, or the name of any individual associated with any of Defendants. Nor is there any history of a prior use by Defendants of any challenged name in connection with either the bona fide offering of any commercial goods or services, or any noncommercial or fair use. The first four factors thus support a finding of bad faith.

In addition, it is clear that Defendants acquired thousands of domain names that were confusingly similar to any number of famous marks. And some of the marks to which their domain names are confusingly similar are unquestionably “distinctive and famous,” including some of Plaintiffs’. Thus, the eighth and ninth factors also strongly support a finding of bad faith.

Sounds like a snowflakes chance in hell of winning the "no bad faith" argument :D

Plaintiffs also present evidence that Defendants are continuing to register new domain names that likely violate ACPA -- after the complaint was filed, and even after the motion for a preliminary injunction was filed...
The problem at this point lies not with domain names that Defendants have been using for some time, but with the fact that they continue to acquire new ones that affect Plaintiffs.

That's like stealing an apple in a marketplace, getting caught, and stealing another on the way to jail...

As Defendants continue to use domain names during the Add Grace Period, the distinction is important. The use of “confusingly similar” domain names during the Add Grace Period is within the scope of the harms the ACPA was enacted to prevent.

Is that the main reason the Registrar was caught in the middle? Deleting names during add grace period rather than at registration? Wouldn't that in effect put all Registrars at risk of typo squatters using their service to taste domains and getting them in trouble? Sounds to me like if this ruling goes all the way, Registrars that allow tasting would essentially have to police any names registered, BEFORE registration, to absolve culpability! Sounds like an unreasonably tough sanction on registrars if you ask me...could this be a precursor to the end of tasting?

I know if I were a registrar, I would not want to be put as risk by tasting... would it be possible to craft a T.O.S. that can absolve them of culpability?

Also, isn't this along the same lines as the 3 registrars that were sued by Dell and others?

 

[Dave_Z]

I know if I were a registrar, I would not want to be put as risk by tasting... would it be possible to craft a T.O.S. that can absolve them of culpability?

Unfortunately no TOS can save them as long as it can be shown they've done
what the registrar in this case did. And to think there's a section in ACPA (uh,
I think) that supposedly protects them from this sort of thing.

Apparently it doesn't if the registrar itself is "actively involved" in it.

 

[flamewalker]

And "tasting" as it stands requires active involvement from the registrar? In that case, my question about all registrars that allow tasting, is potentially liable for the taster's actions, is true?

Sucks to be a registrar that allows tasting, if that's the case.

 

[Dave_Z]

In that case, my question about all registrars that allow tasting, is potentially liable for the taster's actions, is true?

Potentially, anyway. Still up to the complaining party to demonstrate such.

 

[jberryhill]

And "tasting" as it stands requires active involvement from the registrar?

Large scale tasting requires active and extensive registrar participation. The people who were registering thousands of domains per day were not some arms-length "customers" of a registrar that "allowed" tasting, since the tasting activity that was going on several months ago was by far the primary registration activity of the registrars involved.

 

[flamewalker]

Thanks for clarifying that.

 

[jberryhill]

Potentially, anyway. Still up to the complaining party to demonstrate such.

...and still up to them to determine intent,which really isn't present in domain tasting, since there is no intent to register trademark typos. The intent is to register "stuff that people type" generally. But, given the way these things work out, it is difficult to get a court to understand that.