Domain name disputes have existed since the dawn of the internet. Most domain scandals involve cybersquatting, the controversial practice of buying domain names in order to profit from a trademarked name. The Anticybersquatting Consumer Protection Act (ACPA) of 1999 attempts to prevent such misconduct. However, efforts to capitalize on popular trademarks have not ceased.
Here are the top domain name disputes from four of the biggest brands in the United States:
Trump is a well-known trademark at the U.S. Patent and Trademark Organization. Not for his presidency, but rather his high-profile business ventures. In March of 2014, J. Taikwok Yung of Brooklyn, described as a chronic domain collector, developed four Trump websites. They included trumpmumbai.com and trumpindia.com in the same year the Trump Organization announced it would build hotels and condos in India.
Trump initially offered $400 to Yung in exchange for the domain names. After refusing, Trump smacked him with a $400,000 lawsuit, suing for “federal cybersquatting”. In the end, the judge ruled Yung to pay $32,000 in damages to Trump. A far cry from the $400 he could have made.
See here for more Political Consequences of Not Securing Domains.
2. Facebook –
In July of 2011, the term “cybersquatting” morphed into “typosquatting” after Facebook filed a lawsuit against companies and individuals who attempted to capitalize on common typos of their trademarked name, including registrants of facefook.com, ffacebook.com and faecbook.com. Facebook claimed the defendants’ actions injured the Facebook reputation, interfered with their business, and unjustly enriched the squatters.
There were a total of 105 domain names in dispute from 10 defendants, none of whom showed up to court. As a result, the judge awarded Facebook $2.8 million dollars in response to their motion for default judgment.
3. Microsoft –
In another high-profile typosquatting case, Alf Temme of California used common misspellings of the Hotmail trademark to redirect fat-fingered users to his company website, fastexercise.com. There were 24 total domain names in dispute including the likes of hot5mail.com and ho0tmail.com.
Like Trump, Microsoft sought the maximum damage of $100,000 per offense, totaling $2.4 million dollars, but in the end offered to settle for $500,000. A serial typosquatter, Temme has also faced lawsuits from Dell, AAA, Alaska Airlines, IMDb and others.
4. Google –
In an entirely different type of scandal, Google managed to defend their very brand after a 2012 lawsuit filed by entrepreneurs David Elliot and Chris Gillespie. The two purchased 763 domain names incorporating the word “google”, claiming that the term had become too generic to trademark.
They used their ownership of domains such as googledisney.com and googlegeorgeclooney.com to attempt to invalidate the Google trademark. U.S. District Court Judge Stephen McNamee in Arizona ultimately sided with Google, ruling the trademark could not be invalidated even though the general population uses it as a verb.
How to Avoid Domain Name Disputes
These notorious cases serve as a cautionary tale, both for businesses to protect their domains (see Step 2 in Get Hooked on These 5 Strategies to Take Taken Domains) and for individuals to stop and think about it before attempting to make a quick, fraudulent buck.