Let's Go To Legoland

LEGO as the Complainant filed the dispute over the domain names legoland.com.my and legoland.my, substantiated its complaint with evidence of its fame and its registration of variations of its LEGO mark worldwide. The Complainant showed that it was the owner of more than 100 domain names containing the term “LEGO LAND” and among them were the local ones, legolandmalaysia.com.my and legolandmalaysia.my.
 

LEGOLAND theme park was announced to be built in Malaysia was released to the public in December 2008, and the Respondent registered the domain names  in dispute on 5 December 2008.

Attempts to solve this matter through a Cease and Desist letter failed. The Respondent asked for USD 2,000 for the transfer of the domain names however the Complainant disagreed and offered to reimburse the Respondent for the registration fees incurred (i.e., actual cost incurred) and USD 500 to settle amicably. When the offer was not taken, the Complainant commenced the complaint through the Domain Name Dispute Resolution.

Facts were in favour of the Complainant as not only could the Complainant prove that it owned the registered trademark to LEGOLAND but it also had legitimate rights to the mark and domain name. That the Respondent was acting in bad faith was also easily established due to the timing in which the domain names were registered, the offer to sell the domain names for a figure exceeding its out of pocket expenses, and the domain names not being used in connection with bona fide offering of goods and services.The Complainant succeeded and the domain names in dispute were transferred to the Complainant.

My opinion:
This case the Respondant is clearly a cybersquatter because he registered the domain names with the intention to sell it back to Compainant for profit.

Petronas vs. GoDaddy

Petronas is a major oil and gas company located in Kuala Lumpur, Malaysia and GoDaddy is the world's largest domain name registrar. After a third party registered the domain names "petronastower.net" and "petronastowers.net" and then used GoDaddy's domain name forwarding service to direct the disputed domain names to an adult entertainment web site, Petronas filed suit against GoDaddy alleging contributory cybersquatting under the Anticybersquatting Consumer Protection Act, 15 U.S.C. 1125(d). The district court granted summary judgment in favor of GoDaddy.

The court affirmed, holding that the Act did not include a cause of action for contributory cybersquatting because:
(1) the plain text of the Act did not apply to the conduct that would be actionable under such a theory; (2) Congress did not intend to implicitly include common law doctrines applicable to trademark infringement because the Act created a new cause of action that was distinct from traditional trademark remedies;
(3) allowing suits against registrars for contributory cybersquatting would not advance the goals of the statute.

[Source: http://law.justia.com/cases/federal/appellate-courts/ca9/12-15584/12-15584-2013-12-04.html]

According to US court, GoDaddy was not liable for a form of trademark infringement. The court ruled that Go Daddy had not used the domains and was therefore not liable for cybersquatting under the terms of ACPA.

In my opinion, although GoDaddy just provided the infrastructure to the registrant to route the disputed domains to the website of his choosing, GoDaddy should filter before letting anyone to register for a domain name with trademark. However, there is no law to enforce such therefore there are still many cybersquatter are taking advantange.

How to Deal and Fight Cybersquatter?

The practice that's come to be known as cybersquatting originated at a time when most businesses were not savvy about the commercial opportunities on the Internet. Some entrepreneurial souls registered the names of well-known companies as domain names, with the intent of selling the names back to the companies when they finally woke up. Panasonic, Fry's Electronics, Hertz and Avon were among the "victims" of cybersquatters. Opportunities for cybersquatters are rapidly diminishing, because most businesses now know that nailing down domain names is a high priority.


There are several ways to deal with cybersquatter as suggested, however, one of it would be paying to the cybersquatter.

What else can we do to fight cybersquatter?
First of all, check if the domain name takes you to a website. In case it does not take you to a functioning website, but takes you to a site stating "this domain name for sale," or "under construction," or "can't find server," this increases the possibility that you are dealing with a cybersquatter. The absence of a real website may indicate that the registrant of the domain name bought the name for the purpose to sell it back to you at a higher price.
  
Secondly, Contact the domain name registrant. You can use you can use the "WHOIS Lookup" to find the name and address of a domain name registrant.Check and confirm whether there is a reasonable justification for the use of the domain name, or if the registrant is willing to sell you the name at a price you are willing to pay.

If you are a victim of cybersquatting in the United States and decided to go through legal process, there are two options:

• sue under the provisions of the Anticybersquatting Consumer Protection Act (ACPA), or
• use an international arbitration system created by the Internet Corporation of Assigned Names and Numbers (ICANN).

Trademark experts consider the ICANN arbitration system to be faster and less expensive than suing under the ACPA, and the procedure does not require an attorney.

[Information sourced from: http://www.nolo.com/legal-encyclopedia/cybersquatting-what-what-can-be-29778.html]

Trademark Infringement

Trademark infringement is the unauthorized use of a trademark or service mark (or a substantially similar mark) on competing or related goods and services. When infringement occurs, a trademark owner (the plaintiff) may file a lawsuit against the infringing user of the same or similar mark (the defendant) to prevent further use of the mark and collect money damages for the wrongful use.
[source: http://www.nolo.com/legal-encyclopedia/is-it-trademark-infringement]

Domain names can incorporate trademarks in a several of ways. An individual who is not the trademark owner, registers the trademark as a domain name engages in relatively straightforward trademark infringement.

As long as the cybersquatter owns the domain name and the trademark owner cannot register its own trademark as a domain name,the cybersquatter breaches the fundamental rights of the trademark owner. However, the practice of reserving a domain name is not against the law. Normally, cybersquatters register words or phrases they hope will some day be sought after by new companies or new business divisions. A trademark is not infringed by a domain name unless the trademark existed at the time of domain name registration. This kind of cybersquatting is speculative and legitimate. [cited from Murdoch University Electronic Journal of Law]

John D. Mercer also identifies "innocent" cybersquatting, whereby the registrant does infringe a trademark "based on some unrelated interest in the word itself, without intending harm to a trademark owner" and "concurrent" cybersquatting, whereby the registrant uses the same trademark as another commercial entity, but not within a competing industry.

Is He a Cybersquatter?

Is Elton Wang (the registrant of the domain name of "zara.com.tw") a cybersquatter?

 
According to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using an Internet domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else. (Wikipedia)





In several cases, competitors have registered their competitor's trademark. Could Elton be a fake name used by Zara's competitor to register the domain?

If yes, then this Elton is a cybersquatter.

Although he did not ask for ransom from Zara, but he is diverting the traffic from Zara to H&M and that is causing business impact to Zara.
This is considered as bad faith.


Cybersquatting is prohibited under the 1999 Anticybersquatting Consumer Protection Act as well as a set of international guidelines called the Uniform Domain-Name Dispute-Resolution Policy. (Disputes are usually mediated by the National Arbitration Forum or the U.N.'s World Intellectual Property Organization.) Both systems were created to protect companies, celebrities, and even Joe Schmoes from having their names exploited online for commercial purposes. To sue someone for cybersquatting, you have to show that they acted in "bad faith," meaning they deliberately registered a certain domain in order to profit off your name.
- by Christopher Beam

However, if Elton is a real individual who just registered the domain name for prank, will he being charged with crime?

You think you are going to Zara, but end up in H&M

The prank - You think you are going to Zara, but end up in H&M!

This has gone viral yesterday in facebook.

When you type www.zara.com.tw, you are expecting to enter Zara's Taiwan website. However,  you will not be landed at Zara official website. Instead, you are redirected to it's competitor, H&M's Taiwan website.

Why is this happening?
Did H&M registered rival's domain name do divert the traffic?
Is H&M cybersquatter?

Upon checking the whois database from http://who.is, found that the domain of www.zara.com.tw is registered under a guy name Elton Wang.
This domain was registered on 22-Dec 2015 and will be expired on 22-Dec 2016.

Netizens believed that this is a prank by this individual name Elton Wang and there's nothing to do with H&M.
There is no official statement from H&M and Zara regarding this domain name issue.

Domain Name Conflicts and CyberSquatting

As we are now in the era of cyberspace, more and more things have to go 'online'. The first and foremost thing for an organization or a business to expose online is to create their official homepage. When this comes into play, domain name is fundamental.

For domain names registration, it is first come first serve. The domain name is available to the first applicant. In cases where someone other than the trademark owner preemptively registers a trademark as a domain name, or where a domain name is registered as a trade mark, the current position under the trademark law and other relevant legislation is as follows:

1. Registering a domain name comprising a trademark registered by another person and using that name in a web site or related computer network for goods or services identical or similar to those of the registered trademark may constitute infringement under Articles 61 and 62 of the Trademark Law. Even where the use or display of a domain name does not constitute use of a trademark, if that use or display causes confusion, it could be subject to sanctions under Article 20 and Article 24 of the Fair Trade Law. 
2. Where an application is made to register as a trademark a well-known domain name of another, if the goods or services to be covered by the trademark registration are related to goods or services presented through that domain name, and where there is likelihood of confusion and misidentification among consumers at large, this may be grounds for registration being denied under Article 37 of the Trademark law. 

There are too many grey areas and the law to defend for domain name is not well developed yet. I decided to go into this topic further and will discuss some examples in future posts.