The Responsible Cybersquatter
July 5, 2016
Cybersquatters are many, and we’ve all seen the typical pay-per-click websites that are reached by inputting certain domain names into the address bar. Sometimes they show generic links featuring dating services, mortgage lending, or nutritional supplements; other times, they show links to the owner of a well-known brand name that’s contained in the domain or, worse, to its competitors.
Who’s Responsible For Domain Content?
When I hear from domain owners in response to demand letters or UDRP complaints, a common theme is “but I didn’t know that my website showed these links” or “I never made any money off that site.” Most blame the registrar or Google for posting the automatically-generated ads or links. This raises the quite legitimate questions of who is ultimately responsible for the content of a website and how one can infer that a domain name owner is a cybersquatter on the basis of this content. On the one hand, many amateur domain investors don’t really think about what happens with a name after they purchase it and likely believe that they can safely use it or even list it for sale. On the other hand, the domain owner does, as a technical and factual matter, have the power to decide what gets displayed on the website that resolves from the name, even if what’s displayed is nothing at all.
Many UDRP panels have considered this dilemma and the vast majority come down on the side of the domain owner having final control. Many are influenced by the cybersquatting nature of these domains – after all, it’s the inclusion of the brand in the domain that drives what automatically-generated links appear on the page. But, others feel that the brand owner has zero power to determine how the name resolves, while the domain owner has at least the potential to do so, and this influences whether a domain owner is seen as a cybersquatter.
In one decision involving a website that displayed a series of advertisements next to informational text about the complainant’s brand, the panel held that “[the] Respondent stands in the shoes of those who advertise on his site. It is precisely his use of Complainant’s brand which attracted such advertisers to his site in the first place.”
Further, the WIPO Overview 2.0, which discusses panelist views on many frequently-raised UDRP issues, finds that many decisions adopt the approach that, “[t]o the extent that the presence of certain advertising or links under such arrangement may constitute evidence of bad faith use of the relevant domain name, such presence would usually be attributed to the registrant unless it can show some good faith attempt toward preventing inclusion of advertising or links which profit from trading on third-party trademarks.”
Cui Bono? Commercial Use Hinges on Existence of Financial Gain For Cybersquatter
Next, the question arises as to whether such use is “commercial” if the potential cybersquatter doesn’t personally make any money from the website activities. In a recent case the Panel cited a longstanding principle that, even if the Respondent never sees a cent from its activities, “it is enough that commercial gain is being sought for someone for a use to be commercial.” So, even if it is only the brand owner’s competitors or other third parties who ultimately receive traffic from visitors who click on one of the website links, it is the respondent who must be held accountable for this commercial diversion. The WIPO Overview 2.0 agrees, noting that commercial gain made by a third party, such as the operator of an advertising generating or parking service used by the domain owner typically leads to a finding of bad faith commercial use.
So, domain owners who are not intending to squat on someone else’s brand are well advised to make sure that neither they nor any other company are benefiting commercially from the use of a disputed name. Where an otherwise generic word makes up the main part of the domain, a truly responsible owner will ensure, in good faith, that any advertisements appearing on its page result only from such generic meaning and don’t, in any way, relate to products sold under a trademark that also consists of that generic word. Of course, if you receive a cease and desist letter from me, it’s probably already too late…