Trademark Law

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Popular industry blog ReadWriteWeb is in the midst of an escalating battle over their rights to the brand name, and URL extensions. As noted at the ReadWriteWeb blog, a cybersquattor by the name of Vladislav Sobolev from Russia registered ReadWriteWeb.mobi  then engaged in an extensive email exchange about  his registration with the owner of ReadWriteWeb, Richard McManus.  Mr. Sobolev's emails seek to show off his expertise in cybersquatting matters and trademark law, thereby establishing his rightful claim to the ReadWriteWeb.mobi domain. Instead, Mr. Sobolev establishes with surgical precision that he is in fact cybersquatting on the ReadWriteWeb domain in violation of the Uniform Domain Name Dispute Policy (UDRP) and Anti-Cybersquatting Consumer Protection Act (ACPA). 

Mr. Sobolev's emails are typical of what our lawyers refer to as the ignorant cybersquatter; someone who intentionally registers known trademarks and brands without any real understanding of domain name law under the  UDRP or the ACPA.  But Sobolev sets the mark. We think you will agree that Mr. Sobolev in his own endearing and vociferous way has earned the title as "The World's Dumbest Cybersquatter."

When we first read the story at WebSite magazine blog and then followed the link over to ReadWriteWeb, we could not believe the ever-increasing levels of cybersquatting stupidity exhibited by Sobolev.  After considering our options, we not help but to take this opportunity (tongue-in- cheek as it may be) to help educate and inform about the growing cybersquatting problem.  Perhaps posts like this will save some other poor soul from paying his $15 registration fee for domain variations of someone else's trademarks based on erroneous information.

Using The World's Dumbest Cybersquatter as our trusted guide, we give you no less than 12 pitfalls to avoid when cybersquatting on someone else's domain.  Our message to would-be cybersquatters is simple.  If you are going to engage in theft, don't seek out the homeowner so you can show him the loot and hand him a note admitting all the elements of the crime. (Traverse Legal is not responsible for any injuries you may incur if you attempt to read the remainder of this post without first sitting down on a stable chair).

Here is how Mr. Sobolev first disclosed his unlawful domain registration of Readwriteweb.mobi to the long time founder and editor of ReadWriteWeb.com Richard McManus.  

"Hi, I am going to launch ReadWriteWeb.mobi, the mobile version of ReadWriteWeb optimized for viewing on a mobile phone. I am also launching a number of other mobile sites including buzzmachine, craphound, crunchboard, deadspin, micropersuasion, scobleizer, sethgodin, and a couple dozen other projects.Thought you might be interested. I'm also launching MacManus.mobi btw."

Bad Squatting Strategy #1:  Admit Your Are A Bad Faith Cybersquatter! Mr. Sobolev actively seeks out the owner of ReadWriteWeb.com to tell him he has registered the ReadWriteWeb brand as a .mobi domain.   Mr. Sobolev can not longer argue that he was unaware of the ReadWriteWeb site.  ReadWriteWeb is not a strong trademark since it is fairly descriptive. However, after use for 5 years, it is no doubt protected under the secondary meaning doctrine. Thus, Sobolev has also lost the ability to argue that he registered the words read, write, web because of their descriptive and generic nature.

Bad Squatting Strategy #2: Admit Your Are A Habitual Bad Faith Cybersquatter! Mr. Sobolev admits that he intentionally registered other trademarked domain names setting himself up as a 'habitual' or 'pattern' bad faith cybersquatter.  We checked with DomainTools just to make sure Mr. Sobolev wasn't just bragging.  Sure enough, he is listed as the registrant of buzzmachine.mobi, craphound.mobi, crunchboard.mobi,  deadspin.mobi, micropersuasion.mobi, scobleizer.mobi, and sethgodin.mobi.  Perhaps we'll contact each of those sites and see if they have a problem with Mr. Sobolev registering domains with their trademarks.  Stupidity plus cockiness is inexcusable and begs proportional punishment, don't you think?   

Bad Squatting Strategy #3:  Cybersquatting on Proper Names is Also Illegal! I think we can now all see where this is going. Why doesn't Mr. Sobolev just come right out and say "I'll sell you your trademarked domains for $10,000."  But Mr. Sobolev has just begun to amaze and impress us with his presumed leverage.  So he throws out the fact that he has also registered the proper name of the owner of ReadWriteWeb, Richard McManus. I guess Mr. Sobolev doesn't know that registering the proper names of others in bad faith is also a violation of law.

"I am in receipt of your message. I was led to believe that "ReadWriteWeb" is not registered as a trademark, which means that anyone can legally use this name as the name for their website, as well as use it as a domain name in case the name is available for registration."

Bad Squatting Strategy #4: Trademark Registration is Not Required! Just because someone doesn't have a registered trademark doesn't mean they don't have trademark rights.  Registration is not mandatory.  Given the popularity of ReadWriteWeb (Page Rank 7; very impressive!), it has a strong argument for secondary meaning and common law trademark rights.

To further illustrate the idea, good examples are ReadWriteWeb.net and ReadWriteWeb.org registered by someone else. As a matter of fact, the name in question has already been registered in France, Germany, and Poland. ....   In fact, besides the mobile version, my colleagues and I are also planning to launch a Russian-language version, at ReadWriteWeb.ru.

Bad Squatting Strategy #5: Defensive Domain Registration Is Not Required! We were going to give  Mr. Sobolev one point for noting that defensive domain registration is a great idea.  If  Mr. McManus had registered all variations of his domain name, he wouldn't be in this mess and would not have to deal with The World's Dumbest Cybersquatter.  We, however, are certainly happy Mr. McManus  did not register the .mobi extension of his domain since we would have been denied the fun we are having now. Unfortunately for our cybersquatting friend, just because you don't register all variations and extensions for your trademark doesn't mean you  don't have trademark rights. Defensive registration of domains is a great idea, but not required. Sorry, Mr. Sobolev, we are going to have to take away the point we so desperately wanted to give you for encouraging trademark owners to defensively register variations of their trademarked domains. :-(

My colleagues and I run a network of popular Russian websites (about 1 mln visitors daily, which is about 5% of all Russian Internet traffic), so I have no doubt as to the Russian version of ReadWriteWeb becoming popular among Russian readers. We are not going to use your name or the names of other ReadWriteWeb.com authors, of course; neither are we going to copy the copyrighted content of your site. What we are going to do is just use the name ReadWriteWeb, which we sort of grown fond of. And this, doubtless, is absolutely legal. Will we copy your writings? No, we won't. Basically, what we need is a name that generates traffic, not the writings (I am a bit of a writer myself, you know).

Bad Squatting Strategy #6: Don't Admit You Are Stealing Traffic!  The statement "Basically, what we need is a name that generates traffic" is as powerful of an admission of bad faith under the UDRP and ACPA as we have ever seen.   And yes, Mr. Sobolev, we can tell you are quite the writer.  Perhaps too much so?  Not realizing he is drowning fast, Mr. Sobolev decides to tie a another couple cinder blocks to his ankles before jumping off the bridge.  In one brilliant sentence, he manages to admit that his goal is to steal traffic and then, no doubt just to show off, undermines any possible argument that he has a legitimate use for the domain.  We think Mr. Sobolev may be stretching the truth when he claims 5% of all Russian web traffic.  Maybe Jay Westerdal at DomainTools will run a report and tell us what whizbang web site to which Mr. Sobolev may be referring.

Of course, if you need this domain, we can discuss it. But I must say I am sure it is most certainly worth a little bit more than the registration fee.

Bad Squatting Strategy #7: Don't Offer to Sell The Squatted Domain Name At An Inflated Price!  At this point, we have to note that Mr. Sobolev must be teasing us, or perhaps he knows we have been searching the globe for the World's Dumbest Cybersquatter and simply wants the title, free iPod nano and red carpet fame which goes with it. 

I am afraid you tend to overestimate the effect of taking legal action against someone who, being a Russian citizen, legally registered a domain name, with a Russian registrar (so let's make a simple calculation to find out how much time and money it would take someone if they were to try and deprive me of my honestly registered domain)...

Bad Squatting Strategy #8:  Don't Taunt Your Adversary:  Taunting by cybersquatters almost always backfires.  Now McManus will be less inclined to pay an inflated price for the domain just to be done with it and, instead, spend his money on a lawyer to take the domain by force of law.  When McManus brings his UDRP action and the domain is transferred, he will now be motivated to broadcast his victory to the entire world. Plus, our lawyers thinking 'squat taunting' is bad form. 

Bad Squatting Strategy #9: The UDRP Applies to Registrants In Russia and Everywhere Else! I can't seem to find a provision of the UDRP which exempts Russian citizens from the policy. Hmm, it must be here somewhere.  As sure as I am writing this, Mr. Sobolev's ICANN accredited registrar Regtime LTD will in fact transfer the domain out of Mr. Sobolev's control when the transfer order comes down from WIPO or NAF.   

The domain name was available and I registered it...

Bad Squatting Strategy #10: Just Because The Registrar 'Lets' You Register The Domain Doesn't Mean You Can! I can't tell you how may times we hear "but Network Solutions let me register the domain." Registrars take no responsibility for trademark protection or cybersquatting. Think of registrars (Moniker and a few others excluded) as Sergeant Schultz on Hogan's Heroes - a basically good-hearted man who, when confronted by the shenanigans of the prisoners, will simply look away, repeating ?I hear nothing, I see nothing, I know nothing!?  Need I say more about the "registrar made me do it defense?"  And by the way, Mr. Sobolev affirmed to Regtime when he registered the domain that he was not infringing on any trademarks owned by others.  So he is also in breach of his registrant agreement with Regtime.  

In fact, this reminds me that in 2000, we created a site called Softodrom (Softodrom.ru, now it's the most popular download directory in Russia, with 100K+ unique visitors daily, the Russian Download.com so to speak). And now there are dozens of various Softodroms of all shapes and colors, and nobody gives a flying dick who registered the name first. Had we trademarked the name, the situation would have been different, but we had not. ... I am just going to put up a very nice-looking website, very mobile and very readwritewebbish (it will be optimized to use ReadWriteWeb as the main keyphrase so that Google indexes it the right way), so that people can visit it and click on colorful Google ads. No rights infringed, everyone's happy.

Bad Squatting Strategy #11: Two Cybersquatting Wrongs Don't Make A Right!   Apparently, Mr. Sobolev created a successful site and established a brand with his Softodrom site.  He was cybersquatted, and is now turned to the dark side. It kind of sounds like Stockholm syndrome.  He is no doubt a kindred sole with millionaire heiress Patty Hearst.  Isn't this the danger of cybersquatting ... when every trademark holder is squatted, then becomes a cybersquatter themselves?  I am starting to understand Mr. Sobolev now.  He is the victim here. The Anakin Skywalker of cyberspace, turned to the dark side by circumstance.  We need to save him, de-program him and run anti-virus software on his soul. Perhaps this post will turn Sobolev back to the good side of the force and he will volunteer to transfer all of the domains noted above to the rightful owners.   

Bad Squatting Strategy #12: Don't Mention Google Adwords!. Damn, the gripe site defense just went out he window.  Since his site will clearly be commercial in nature with classic cybersquatting adlinks colorfully populating the whole of the site he is now totally without hope. That was it, the last possible hope for a UDRP defense is gone.

I hope this post is read in the spirit in which it was written. Cybersquatting, and its kissing cousin typosquatting, are serious business with ramifications well beyond the UDRP or ACPA violations involved.  Cybersquatting is a rampant and serious problem affecting the whole of the world wide web. And bad faith squatters such as Mr. Sobolev become fodder for trademark rights groups, diminish the reputation of legitimate domainers registering high-traffic generic domains and inflame an already escalating situation alluded to by Rick Schwartz in a recent blog post here and as reported at Domain Name Journal here. 

Blatant cybersquatting is a problem which must be addressed by both the domain monetization and trademark communities. Otherwise, draconian laws will surely be passed to the detriment of the everyone.