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August 03, 2007

"Protecting Your Domain" - Cybersquatting and Typo-Squatting - Interview With Enrico Schaefer

In keeping with my post on "Who Owns Your Website" here is a transcript of an interview with Enrico Schaefer of Traverse Legal (Greatest American Lawyer) on VTalk Radio: Topic: Protecting your internet identity: Cybersquatting and Typo-squatting.

JOHN: Welcome to VTalk Radio Tech Spotlight. Sponsored by Traverse Legal, PLC . Today we are talking about domain name nightmares with Enrico Schaefer, specialist in technology and domain law. Enrico joins us via phone here in the studios. Welcome Enrico.

ENRICO: Thanks, John, pleasure to be here.

JOHN: Now, what is a domain name and what is it used for.

ENRICO: Well, domain name is a fancy word for the website address we are all used to plugging into our browser, Internet Explorer or Firefox or the Netscape browser. That is the www. address. So www.traverselegal.com
- that's a domain name. And domain names are what we commonly think of - when think of websites.

JOHN: Now, what should I do if someone steals my domain name?

ENRICO: Well that's a good question, John, because people really don't understand and appreciate that the domain name business is really still the wild west in a lot of ways. We get calls here at Traverse Legal everyday from people who have lost their domain names, and people lose their domain names for a variety of reasons. In general, it can be that they simply didn't respond to a email from the Registrar asking them to provide information on whether or not they wanted to renew their domain name or someone could hack into the registrar level, and the registrar is the company that holds your domain name for you. They're the company you go to to register a domain name. They'll send you an email, for instance, when it's time to register and for a variety of reasons, you don't get that email or you don't respond; all of a sudden you wake up one day and that great website that you invested in that's driving tens of thousands or hundreds of thousands or millions of dollars of business through is gone. And someone else owns it. So, it's a big problem. It's one people really don't anticipate and they don't manage and in many cases, they are surprised when they wake up that one morning and their domain name is no longer under their control.

JOHN: Now that is a nightmare. Especially if you're a business.

ENRICO: It is a nightmare, and we get people who call us and they are really heated because they don't understand what happened. They say, "How could this of happened. How could I of lost my domain name?" And there are literally hundreds of ways people can lose their domain names. One that we get a lot of calls on concerns cybersquatting. And, John, cybersquatting is a huge problem in the internet area right now.

JOHN: What do you mean by cybersquatting? What is cybersquatting?

ENRICO: John, cybersquatting is a term which essentially means that someone stole your domain name or lawfully registered a domain name that includes your company name or your personal name or a name you own the common law or registered trademark rights at. So, for instance, if someone were to register the domain name, vtalkradios.com, VTalk Radio owns the common law trademark for VTalk Radio. That is a business. It's being operated. And, if someone were to try and use that name with a slight variation in the letters or the wording. They would be infringing on VTalk Radio's trademark rights. A lot of times people will go ahead and register a domain name for someone that owns the trademark in that domain, and then they'll put up different sorts of content on that website. John there's all sorts of content that someone might want to put up on your trademarked name website for financial gain. Now, John, that's really the essence of cybersquatting is someone who registers your trademark name and uses it for some purpose in order to pawn off of your good will.

JOHN: I've been on the internet before, and I've seen this kind of an idea before. When I typed in a name of a site I wanted to go, and I missed a letter, and it's been directed to another site using basically the name I typed in. That's cybersquatting?

ENRICO: Yes, that's a version of cybersquatting. That's called "type-o squatting" And type-o squatting is rampant today in the internet because General Motors for instance has not registered every possible variation of their trademark name General Motors. So if I were to delete a letter from General Motors and register that as a domain name or add a word to the front or the back or to the middle of General Motors, I might end up with an awful lot of traffic of people who are simply trying to get General Motors and accidentally ended up with me on my site. Now, if I were a classic cybersquatter or type-o squatter, what I'm gonna have on my website which is infringing on General Motors trademark is I'll have a bunch of google adwords, programs, or other advertising revenue or other link programs or perhaps pornography that I'm doing business off of that cybersquatted domain because I know a certain percentage of people are going to accidentally end up at my site. So I'm using the General Motors' trademark for my own financial gain. I am under law, a cybersquatter. I am a type-o squatter and, John, there are some essential elements you have to prove in order to categorize someone as a cybersquatter or type-o squatter in order to have legal rights.

JOHN: What would those things be that I'd have to prove?

ENRICO: In general, John, they deal with a couple different elements. The first thing you have to show is that you have trademark rights in the domain name. So, trademark rights are easily established. If you you're in business as a company name, the moment you started business, you have common law trademark rights in that company name, as long as you were the first to use it in commerce. If you have a product and your product has a name, the moment you put that product for sale, and you use that brand name, that product name, related to that product, you have common law trademark rights. Now, you can register that trademark with the various government agencies. In the United States it would be the U.S. Trademark office. You could register those rights, but you don't have to. If you are doing business as a name, you are selling a product as a name, you have trademark rights and that's the first thing you have to show in order to have legal claims for someone who is cybersquatting on your name. So, John, the first thing you have to show is that you have some rights in the name that someone has taken from you.

******

JOHN: Welcome back to VTalk Radio's Tech Spotlight. We are in the studio with Enrico Schaefer of Traverse Legal. We were talking about establishing trademarks. Enrico, how do I prove I was the first to use a trademark?

ENRICO: There are a variety methods that can be used to establish first use under the trademark laws. Obviously, if you weren't the first to use the trademark, you'll never win that particular battle, but keep in mind you only have to prove you were the first to use that particular trade name or mark or company name in commerce within the relevant market you are operating in. So, if you are selling, for instance, if you're a website developer and you're selling websites and you're using a particular name, ABC Website Company, it doesn't matter that there is an ABC Tool Company that is manufacturing pipe. That wouldn't be a problem, but you establish your first use by going out on the internet doing the Google search and showing that, hey look, there is no one else who is coming up within my class, my category of goods and services that's out there. Because virtually everyone who is anyone has got some sort of website presence. So if I wanted to search for ABC Web Development Company, I could do that. I can research to determine whether or not someone else was using that name before me.

JOHN: What about personal name registration, like enricoschaefer.com?

ENRICO: That also can actually be cybersquatting, John. If someone were to actually use my name or register my name and my name had some fame to it. For instance I was an actress or actor or even a business person. I am fairly well know within my market as an attorney specializing in technology internet domain name issues. So if someone were to register enricoschaefer.com and put up a website that dealt with those issues and the person's name wasn't Enrico Schaefer and they had no other legitimate use for the words, Enrico Schaefer, then chances are they are a cybersquatter as well, and they're simply trying to leverage the traffic of folks who would be putting the words Enrico Schaefer into Google or Yahoo in order to find me and then would click through by accident to their site. So that's another very common form of cybersquatting. John there are a few more things that have to be proven in order to establish that someone is cybersquatting on your domain. And, those are issues dealing with bad faith.

JOHN: Tell us about bad faith? What is bad faith?

ENRICO: Well if you have trademark rights in a name or a brand, the next thing you have to do is you have to show that the person who is using that domain is doing so in bad faith. A good example of a use that would not be in bad faith would be for a domain name, for instance, maybe the domain is liongate, ok and there is a company called Liongate Industries and someone registers liongate.com. Well, that person is not necessarily a cybersquatter if they have a legitimate right to use that domain. For instance, they may be a non-profit organization called Liongate and the purpose of that non-profit is to saves the lions. So that person isn't a cybersquatter, they have a legitimate use for that domain in a separate market. So what you need to show, John, is that person who has registered the domain on something where you have trademark rights and that they did it in bad faith and there are four examples that are given for bad faith, John.

JOHN: And what are these four examples, Enrico?

ENRICO: Well, the first one is registering or acquiring the domain name primarily for the purpose of selling it back to the trademark owner. So, a lot of times what happens is, I'll get a lot of calls from folks who register a domain of a major company. So let's say, they were to register microsoftisgreat.com, and then they contact Microsoft to try to sell it to Microsoft. Well, they are a cybersquatter and they've just established they are registration was bad faith registration because then they tried to sell the domain to the rightful trademark owner, Microsoft. So that's the first one, John.

JOHN: I've heard of that before in the news where people will buy names of big companies or even key word names knowing that somebody down the road may want that name and almost like gambling.

ENRICO: In many cases it is, and the cybersquatter doesn't know what they are doing is illegal or unlawful or creates liability to them. They think it's a great idea and they simply register the domain of a major company, changing the words around a little bit and the next thing that happens is they get a threat letter from an attorney say, "you're a cybersquatter and we're going to sue you if you don't turn over the domain." Now, if they've offered to sell that domain to the trademark owner, they're dead in the water. They are a cybersquatter and they would lose a court case concerning that issue. So that's the first one, John. That's the first typical thing we see that establishes bad faith.

JOHN: What other things would we see that would establish bad faith?

ENRICO: Well there are some other examples. If you simply register a domain name to prevent the trademark owner from getting the domain, that's also an element that shows bad faith. So, if I happened to be Netscape and I want to preclude Microsoft from getting a domain of a new product they are putting out say Vista, the new operating system, and so if Netscape were to hear that there was going to be a new system and Microsoft was silly enough to fail to register, not only the domain, but all versions of that domain and Netscape registered a version of that domain, it would be pretty clear that Netscape was simply registering it to prevent Microsoft from getting it. This typically occurs between competitors and that would in fact show bad faith registration and thus cybersquatting. That's the second one, John.

JOHN: What else would establish bad faith, Enrico?

ENRICO: Well, there are other examples as well and if you simply trying, and this one is related to the last one that you typically see among the competitors, but if you register a domain simply to disrupt the purpose of the business of a competitor, that would also be an element of bad faith. And then the fourth thing we often see is that people will register a domain name simply for commercial gain to attract website visitors to their website using someone else's trademark. So, some of the early examples that we talked about would apply here. If someone were to register traverse-legal.com, and therefore, they would be using our trademark and if they had no legitimate use for that mark and there was simply a link site which had a bunch of Google adwords links on it, that would establish that they are a bad faith cybersquatter because they're actually getting paid for everyone that comes to that site that then clicks through to one of these adword links, but they are getting paid by Google for all these referrals. So, that's the most common thing we see out there. There are huge companies that simply register or take expiring domains and through these link programs on the domains. They have no legitimate use or interest in the domain name, but they know there is traffic that is going to be coming there and so they will simply pickup the domain, they'll put there little software program on it that puts these links on the domains, and they'll drive commercial benefit profit from people who are unfortunate enough to land there and think it's traverselegal.com
and click through to an unrelated site perhaps even a competitor. This brings us to the classic situation which is where people forget or fail to re-register the domain name, and one of these giant companies has gotten the domain name on reserve because they see that it's coming up for expiration and that automatically gets scooped up by that company that's cybersquatting, a link site goes on it, sometimes it's pornography and boom all of a sudden, you've got a huge problem, because not only do you lose your website, but everyone who comes to visit your website is seeing unrelated activity and in some instances it's pornography.

JOHN: Now, Enrico, you do have a website and contact information that people can speak to you about these important subjects, can you give me that please?

ENRICO: Sure, John, I am an attorney and founding attorney at Traverse Legal. We are a high-tech internet based, technology based law firm which can be found at www.traverselegal.com
or at www.thetechnologylawyer.com. Our phone number is (231) 932-0411 and you can always send me an email at enrico@traverselegal.com.

JOHN: Well thank you for being on the program with us today, Enrico.

ENRICO: Thanks for having me John.

JOHN: You are listening to VTalk Radio's Tech Spotlight. We've been in the studio with Enrico Schaefer of Traverse Legal
based in Traverse City, Michigan. Thank you for joining us today.

ENRICO: No problem, John, it was my pleasure.

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QC Injury Lawyer

This issue just came up on NBA player Gilbert Arenas' blog, as he has someone trying to sell him the rights to gilbertarenas.com.

From the blog: "Know who is a thief? The guy that is trying to sell the domain name of GilbertArenas.com to me. It’s my name! I have to buy it back from him. Now that’s stealing, borrowing, whatever you want to call it."


Link: http://www.nba.com/blog/gilbert_arenas.html#070803_01

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