Seattle Trademark Lawyer

Microsoft alleges defendant’s use of “bing”
in his domain name takes Internet users to this Web page 

It’s been a while since STL has posted on a Microsoft cybersquatting case.

The wait is over. Last week Microsoft Corp. filed one in the Western District against California resident Donald Davies.

Microsoft alleges that Mr. Davies registered at least 21 domain names that contain the formative “bing” in an effort to generate pay-per-click income from searchers allegedly seeking Microsoft’s BING search engine.

Microsoft claims such domain names include aolbing.com, bingcasinos.com, and bingporntube.com.

Microsoft says it has nothing to do with the Web sites associated with Mr. Davies’ domains, some of which lead to adult-oriented material.

This, Microsoft alleges, constitutes cybersquatting, false designation of origin, and dilution.

Mr. Davies has not yet answered Microsoft’s complaint.

The case cite is Microsoft Corp. v. Davies, No. 10-1583 (W.D. Wash.).

Alf Temme, a self-confessed typosquatter and defendant in a lawsuit Microsoft brought discussed here and here, went public again last week with a guest post in the Seattle P-I titled, “Why I typosquatted and why it should be legal.”

In it, he discusses his run-ins with Alaska Airlines, Air France, Dell, and Microsoft, and why the Anticybersquatting Consumer Protection Act makes for bad public policy.

Here’s some of why Mr. Temme believes he’s misunderstood:

“After the Dell disaster, I would have been quite justified to dump all the typo domains I was saving for their rightful claimants, but that would have done exactly what I wanted to prevent with my ill-fated domain-registration consulting service. I didn’t want malicious typosquatters to snatch them up.

“I had registered 24 Microsoft typo domains during my consulting experiment. Without sending me a demand letter first, Microsoft filed suit in March, demanding the 24 domains and up to $2.4 million – plus legal costs – in damages. Simultaneously, I received an offer from Microsoft to settle the case for $500,000.

“Tim Cranton, a Microsoft associate general counsel, is in charge of pursuing and suing all Internet-related criminals. He is doing a brilliant job, as is evident from the many victories of his I found on Google. Cranton identified me, Alf Temme, as a particularly egregious cyber criminal, telling seattlepi.com he wanted to make an example of me to dissuade others from typosquatting. Based on all the negative information you can find about me on Google, I think he took the right approach.

“The reality is, I am not the kind of person portrayed by all those Google results. If I were that kind of person, I certainly would not have registered all those domains with my correct contact information. I did not register them with the popular “private” registration option and I did not register them in some offshore jurisdiction like Korea, Bermuda or the Bahamas.

“So Tim Cranton must have concluded that I must be a complete idiot of a typosquatter for not taking these precautions. Most other people will decide I must be an idiot, because they cannot conceive of the possibility that I might just be an exception to the exceedingly mean and dishonest society we have created in the past 40 years.”

In 1999, S.H. Inc. registered lawsociety.com as a domain name.

The Law Society is one of the U.K.’s bar associations. It describes itself as the “representative and regulatory body for the solicitors’ branch of the legal profession in England and Wales.”

In 2009, The Law Society filed a complaint with the World Intellectual Property Organization under the Uniform Domain Name Dispute Resolution Policy. A three-member panel agreed with the complaint and ordered registrar eNom, Inc., to transfer the domain name to The Law Society.

To avoid the transfer, S.H. filed suit in February in the Western District seeking a declaration that its registration does not violate the Anticybersquatting Consumer Protection Act. It asserts the mark is generic.

The Law Society has not yet answered S.H.’s complaint.

Nor has either party filed a joint status report. On April 22, Western District Judge Marsha Pechman ordered the parties to do so or the court will dismiss the case for failure to prosecute.

The case cite is S.H. Inc. v. The Law Society, No. 10-00248 (W.D. Wash.).

Last week, the Western District re-examined counterclaim plaintiff Vericheck, Inc.’s cybersquatting and trademark infringement claims against counterclaim defendant David Lahoti in light of the Ninth Circuit’s review in Lahoti v. Vericheck, 586 F.3d. 1190 (9th Cir. 2009). Vericheck’s claims stem from Mr. Lahoti’s registration of the vericheck.com domain name. (For background, see posts on the Ninth Circuit decision and bench trial findings.)

STL readers may recall the Ninth Circuit vacated and remanded the district court’s finding that Vericheck’s VERICHECK mark is distinctive. In that decision, the Ninth Circuit separately affirmed the district court’s finding that Mr. Lahoti had registered vericheck.com in bad faith.

Given the Ninth Circuit’s direction, on April 9, the Western District entered Amended Findings of Fact and Conclusions of Law that reached the same conclusion it reached the first time. The court again found VERICHECK to be distinctive, though this time it clarified that it analyzed the mark as a whole in the context in which the average consumer would encounter it. After doing so, it again determined the mark is suggestive.

The court also again awarded Vericheck $100,000, the maximum amount of statutory damages under the Anticybersquatting Consumer Protection Act. It awarded Vericheck its attorney’s fees and costs in the amount of $78,109.95.

The case cite is Lahoti v. Vericheck, Inc., No. 06-1132 (W.D. Wash. April 9, 2010) (Robart, J.).

Neat follow-up from the Seattle PI’s Microsoft Blog.

It’s talked with Microsoft and exercise equipment maker Alf Temme about the Western District suit Microsoft filed accusing Mr. Temme of typosquatting. (Previous STL post here.)

The post reveals a few new facts:

• Microsoft has offered to settle with Mr. Temme for $500k.
• Mr. Temme calls Microsoft’s settlement offer “extortion.”
• He does not intend to hire a lawyer.
• Mr. Temme is no stranger to the Anticybersquatting Consumer Protection Act. He’s been sued by Dell, the American Automobile Association, Air France, Alaska Airlines, Register.com, IMDb, and America Online.
• In the Dell suit, the Middle District of Florida defaulted Mr. Temme for not answering the complaint and awarded Dell almost $130k for willful trademark infringement, including attorney’s fees.

“What Microsoft is in effect trying to do is put a small company of eight employees out of business,” Mr. Temme said. “It’s extortion! All they could have wanted to do was get the domain names.”

“OK, so I did a naughty, right? But a punishment that’s the same as the death penalty? That’s ridiculous.”

Microsoft, for its part, says it’s trying to teach typosquatters a lesson.

“From our perspective, if there are thousands of people doing this, we can’t sue all of them. We have to show that this is not a valid way to do business,” its associate general counsel said. “Our goal is to have an enforcement program to get people to stop tyring this, so they stop doing this in the first place.”

He added that Microsoft is “prepared to fully litigate” its case.

For Mr. Temme’s part, he does not intend to hire a lawyer. It sounds like he doesn’t intend to defend himself in the case, other than transfer the domain names to Microsoft — something he offered before Microsoft made its $500k demand.