We’ve been getting a series of complaint emails from Gawker over our Gaming Blog, in terms of the domain name “Kotaku” and, thus far, no agreement or settlement has been reached. When you look into it, there is some interesting case history in terms of trademarks vs. domain names. To see an excellent legal summary, visit the Harvard Law website.
One good case example, some time ago, was between eToy.com vs. eToys.com as it is, like many of these cases, a David and Goliath story. And, perhaps surprisingly, in most instances- the courts have favored David. If one searches through the Domain Name Handbook Dispute Diaries – most courts have found that the registering of a domain is simply the taking of an opportunity, unless the registrant is falsely posing as the company with a specifically registered trademark. In other words, based on case history, it’s an extremely cumbersome case to prove and the bar is set high.
And this is in the United States, where anti-cybersquatting laws have been passed by Congress and work in conjunction with ICANN’s UDRP. But when one starts getting into the foreign laws and less established TLDs- it becomes a maze almost impossible to unravel.
Let us deal with ICANN’s Domain Name Dispute Resolution Policies-:
The policy provides that all domain name registrants must submit to mandatory administrative proceedings if:
1. the domain name is identical or confusingly similar to a trademark in which the complainant has rights; and
2. the domain name holder has no rights or legitimate interests in the domain name; and
3. the domain name has been registered and is being used in bad faith.
There are four factors in the policy listed as evidence of bad faith registration and use:
1. circumstances indicating that the primary purpose is to sell or transfer the name to the trademark owner or competitor for consideration in excess of direct costs related to the domain name; or
2. history of registration in order to prevent the IP owner from reflecting their mark in a domain name; or
3. registration primarily for the purpose of disrupting the business of a competitor; or
4. intentional attempts to attract users to your site for commercial gain, by creating a likelihood of confusion as to source or endorsement.
If any of these apply, then the registration is in bad faith. However, if the domain name holder has a legitimate interest, then a trademark holder will not win under the UDRP. The policy lists 3 factors as evidence of legitimate interests:
1. use or demonstrable preparations to use the name in a bona fide offering of goods or services before notification of dispute; or
2. if the entity or person was commonly known by the name even if it has no trademark rights; or
3. legitimate, noncommercial or fair use of domain name without intent to misleadingly divert consumers or tarnish the mark at issue.
But here is the problem as pointed out by Harvard Law….
There is some question regarding the enforceability of the registrar agreements both inside and outside the United States. These agreements could be considered contracts of adhesion since registrants have no other options for registering a name in a gTLD.
In our case, the name “Kotaku” is actually in honor of a 17th/18th Century Japanese artist and we do have declared interests outside of the US. For example, see our Japan Blog and major Japanese website. Does a US trademark supercede a Japanese trademark or patent?
Furthermore, the UDRP requires not only that the domain name was registered in bad faith, but that it is being used in bad faith as well. Nowhere in our Gaming Blog do we claim to be Kotaku.com or anything to do with the “brand” developed under that trademark, by Gawker.
The fact is that, as “Goliath“, Gawker had ample opportunity to register the .net version of Kotaku.com. That they chose not to is their own oversight. It should not be incumbent on us, “David”, to lie down and be trampled on- just to protect the interests of those who have been remiss in their online business strategies. Are they seriously saying that by registering a trademark in the US, this gives them an immediate right to all ICANN domain names for that name? What a bargain that would make all trademark registrations!
By caving into demands that are beyond reasonable, one would open the door for corporations to be able to impose trademarks on a huge amount of words/phrases that might be otherwise considered as “generic” or part of the “public domain”. Should Johnsons have a trademark right over all ICANN domains for “Baby Shampoo“? The mind boggles…
This is not in any of our interests. Don’t the Goliaths have enough advantages already in the online marketplace?
And so, while we may lose this particular battle..it will not be without a fight.
[tags]gawker,kotaku,domain name disputes,icann,udrp,cybersquatting,etoys,harvard,gaming,japan[/tags]