Phil Craig here with DomainsIntoDollars.com I am at the Miami TRAFFIC domain name conference the auction is getting setup and is going to happen here in an hour but before we have the auction and I show you some of the auctions that are taking place I have asked Dr John Berryhill, a very popular and effective attorney here in the domain name industry to appear here and talk about trademark law and the types of things a beginning domainer might get in trouble with and what to stay away from, so thanks for showing up here.
Thank you. It's tough to be popular and effective at the same time. I would say that I am effective with some people and maybe a little less popular with others.
[Laugh] Of course and that's something I want to talk about at the end. But let's talk a little bit about trademark typos and I know that there have been some reports that some of my viewers have seen that talk about getting a name that is a misspelling of some popular brand and then registering that name and then making revenue off that parked page. Now is that something my users might consider as a business?
If your business is to get in trouble that would be fine but that is virtually the definition of cyber squatting and the classical case of the instance of that is a man named John Zuccarini who is legendary for racking up court judgments for registering domain names like electronicboutiqe.com without the 'u' and targeting that toward electronic traffic. The law in the united states is, that if you register a domain name that is identical or confusingly similar to, a trademark with the specific bad faith intention to make a profit from the misdirected traffic to that trademark, you can be held liable for up to $100,000 dollars per domain name plus any other damages. It doesn't matter if you made $5 or $2 or even at a net loss for that domain name, it's not a question of even what your profits were the law allows a trademark owner to bring a case and say I don't even know what my actual damages are but judge I would like you to award me up to $100,000 in damages. Now the cases that have gone to decision are cases where defendants haven't shown up and have registered large numbers of bad domain names, so a judge considering an action under this law the precedent that he has to look at are situations where previous judges have maxed out, and it's not something (and particularly a lot of domainers are young people) that you can blow off and say well I don't even have $100 in the bank, what do I care about a $100,000 judgment. Because a federal court judgment can be brought against you in another state, it can then be imported into your state, it can then go on your credit record, it can follow you for the rest of your life if you have ever thought about buying a car someday, getting a car loan, getting a mortgage, there are a number of things in life that even if you don't have $100,000 and consider yourself to be judgment proof, having that judgment hanging over you can significantly influence the course of your life.
[laughs] I mean really so why bother, why even get involved but, let's say before they heard us, they have done it, and now they receive a notice from somebody what should they do?
Ok, unfortunately it can be very difficult for domain registrants to sort out these types of threats that come in. In fact there was a man in Nevada that recently went to jail for pretending to be an attorney and sending emails out like this to domain registrants. It can be extremely difficult for a domain registrant to determine what is a valid claim or not but that is not a reason for ignoring them. I should back up a moment and say that prevention is certainly better than the cure. If people have been registering typographic names of various trademarks, you don't need to wait until you are notified by Microsoft that they have trademark rights in Halo 3, and Xbox and if you are selling halo3xboxmoddingchips.com that's the type of thing that Microsoft is going to be concerned about. Now I am sure after saying that, someone is going to look up and find out that halo3xboxmoddingchips.com is taken and used by somebody. It was never a good excuse in school when you were the only person singled out by the teacher it also doesn't work at law, to say that other people are doing this, why can't i do it, because if you look at cyber squatters as a heard, and the trademark owners as cheetahs, they are going to pounce on those particular antelope that look particularly tasty to them at any given time, so first if one knows that their traffic is coming from trademark typos, you need to get rid of those. In the event that you receive correspondence on a domain and you have never heard of this trademark and you are not sure what the claims are, there is a number of domain name attorneys such as Ari Goldberger, Brett Lewis, Steve Lieberman, and myself many of who participate in domain name forums, many of whom offer free consultation. I probably look at 10 to 30 cease and desist letter that I receive from people every single day, and I can tell you without obligation if it's clear drop dead yea absolutely you are going to have to address this issue, or let you know if it would require some heavy lifting, if you are in a gray area, or if it clearly is a deficient claim in some sense but these are judgments that you probably shouldn't be making for yourself without a legal background.
Some people will look at the US Patent and Trademark Office has an online trademark database but many people don't realize that there are a lot of things that are in that database that are not trademarks, they may be pending applications, they may be refused applications, they may be expired trademark applications, and of course the most important consideration I see domainers having when trying to figure out whether something is or isn't trademarked is that is not required for a trademark to be registered with the patent and trademark office well when people ask what the best trademark search system, I tell them the best trademark search system is Google. If somebody says I have a trademark for x y or z, and you put that term into Google and the first three pages of results are either their stuff or references to their stuff, that's a good initial indication (along with some other considerations if its descriptive or generic) that they may have an enforceable right in that mark, and clearly if any of your readers/viewers feel that it's a game that they want to play, and it's a game that some people play for a long time, but once you get caught, once you get burned, once someone has latched on to you, it's becoming increasingly difficult for someone who has gotten into cyber squatting situations, to get their way out of it simply by saying "oh well, now that you have filed the lawsuit, now you can have the domain name, trademark owners are particularly tired of having to bother and pester and send repeated notices and then to have to file a lawsuit, only to have the guy surrender and increasingly they are looking for considerable amounts of money simply to let you out. Because if they sense that they can get a default judgment for $100,000 why shouldn't they say well, we will let you go for $10,000, $15,000 $20,000 or more.
It's a serious game, and the thing about it is, you don't need to play that game, but if you do or if you have and something comes up for you, John is available, you got to get some legal advice, you just can't ignore the claim. Hey thanks, John, for coming in here and talking to them.
Sure thing , be safe.
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