Cybersquatting Law: Must Prove Bad Faith Intent To Profit

cybersquatting laws and lawyer
Judge declares cybersquatting laws case as “one of the bad ones.”

Judge Lewis Kaplan hammered his gavel on the cybersquatting scrum between programmer Jason Kneen and OfficeLinks.com executive Harsh Mehta. In tennis speak: “Advantage, Kneen.”

A Quick Background Summary of the Mehta v. Kneen Cybersquatting Laws Case

  • Kneen, a U.K.-based programmer, bought workbetter.com in 1999.
  • In the not too distant past, Harsh Mehta, an office sharing startup co-founder, bought workbetter.us to market his service.
  • In April 2014, Mehta approached Kneen about buying workbetter.com; he offered $500; Kneen ultimately refused and declined to sell his domain.
  • Sometime around the failed domain sale, Mehta initiated the USPTO trademark application process for “Work Better.”
  • Shortly after Mehta started the official process, according to Mehta, one of his “over-zealous” employees allegedly tried to get workbetter.com at the registration level. Twitter apologies were offered and accepted over the incident. At that point, most people assumed the workbetter.com domain battle was over.
  • But then Mehta filed a cybersquatting lawsuit against Kneen over the desired domain.

Tech industry pundits buzzed about this cybersquatting laws case (including yours truly) — probably because it was possible for people to appreciate both parties’ arguments.

Judge on Mehta v. Kneen Cybersquatting Lawsuit: “This is a really bad one.”

Unlike us in the peanut gallery, Judge Lewis Kaplan saw no ambiguity. “However you slice it, there are good cybersquatting cases and there are bad ones. And this is really one of the bad ones,” Kaplan stated in his ruling. He went on to explain his position:

The balance of hardships in my view, if it cuts in any direction cuts in favor of Mr. Kneen because an injunction could threaten to interfere with a perfectly lawful and appropriate course of business in which he’s been engaged since 1999, all at the behest of somebody who appears to have a — who quite obviously just went out and registered a mark that he undoubtedly knew was nearly identical to the domain name registered and used by the plaintiff for many years for perfectly legitimate reasons.

Plaintiff Didn’t Prove “Bad Faith Intent To Profit”

Mehta alegedly knew that Kneen owned workbetter.com but tried to register the mark anyway. For his part, Kneen had not – and at the time of this writing has not – violated any regulations in relation to the domain. As such, according to current U.S. intellectual property standards, in theory and praxis, Kneen isn’t doing anything wrong.

To put another way: if a URL is not being used to parasitically profit off another brand’s mark, owning a dormant URL is not necessarily a violation of trademark law.

If a URL is not being used to parasitically profit off another brand’s mark, owning a dormant URL is not necessarily a violation of trademark law.

To Win A Cybersquatting Lawsuit, Plaintiffs Must…

To win an online copyright or trademark lawsuit, plaintiffs typically must prove, at the very least, that the defendants:

  • Were using their marks – or ones confusingly similar;
  • Profited from the use of the contested marks; and
  • Acted in bad faith.

Owning A Domain For A Long Time Worked In Favor of The Defendant (This Time)

Since Kneen owned the URL long before Mehta had an interest in it, under sui generis circumstances, the judge ruled that Kneen did not act in bad faith by refusing to sell the domain. Moreover, in this case, the court reasoned that any future sale of the domain would fail to contravene Mehta’s trademark since Kneen bought it almost a decade before Office Space Solutions came into existence.

Speak With Someone Who Understands Cybersquatting Laws

Cybersquatting laws are nuanced. A top AV-rated Internet law firm, Kelly Warner attorneys are exceptionally well versed in domain disputes and other online intellectual property legalities. Our cybersquatting law attorneys:

  • Help clients secure, register and defend trademarks and copyrights – both online and off;
  • Settle domain disputes;
  • Work with clients on UDRP petitions;
  • Act as both plaintiff and defense counsel for intellectual property litigation; and
  • Conduct research for startups and established businesses.

Get in touch. We’ll do our best to change your mind about lawyers and help protect your intellectual property – online and off.

Cybersquatting Laws & Lawsuits: The Case of the London Playboy

cybersquatting laws and case study
Playboy Inc. won agTLD dispute with a London real estate agent.

In an effort to steal business, has a competitor bought a domain name similar to your company name? Has a person rival created an unflattering website under your name? Are you trying to wrestle control of a trademarked domain name? Kelly / Warner attorneys are well versed in cybersquatting laws and can quickly resolve your situation. Contact us.

Self-Identified Playboy Loses Domain Dispute With Heff’s Bunny Empire

The World Intellectual Property Organization (WIPO) flogged the online dreams of a property peddling London bloke.

In 2013, regional generic top-level domains (gTLDs) became available. At the time, Michael Ross, a seemingly enterprising Londoner, snatched the domain PLAYBOY.LONDON.

But as you’d imagine, Playboy Enterprises International Inc. – Hugh Heffner’s adult entertainment company – was not about to let that URL slide. But when Playboy approached Ross about handing over the domain, he refused, claiming to be a “London-based playboy with every right to use the domain.”

So, Playboy Inc. – not our self-styled playboy with a lower case “p” — opted to file a review request with the World Intellectual Property Organization via the Uniform Domain Resolution Dispute process.

Unfortunately for Mr. Ross, the international cybersquatting laws officials sided with the magazine.

The Anticybersquatting Protection Act

In the beginning, few rules governed the Internet. It was infamously known as the “Wild West”, and a few lucky early adopters made a fortune by purchasing, then selling, trademarked domains. But the unregulated wonderland didn’t last long.

In 1999, federal lawmakers passed the Anticybersquatting Protection Act, which states that trademark holders are the rightful owners of their corresponding domain names. For example, Nike, Inc. automatically has the rights to Nike.com, Nike.London, et cetera.

Contact A Cybersquatting Laws Attorney

Kelly Warner handles all types of online intellectual property matters. A pioneer in Internet law, our firm has successfully rectified hundreds of Internet trademark and copyright disagreements.

To learn more about our domain dispute legal practice and read more about other domain dispute cases, head over here. To learn more about our Internet law practice, go here. To set up a consultation with an attorney well-versed in cybersquatting laws, get in touch.

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