Sticking Up For Google
Jesse Staywrote an interesting post earlier today about Google. It is a well thought piece objecting to the treatment by Google of a blogger who registered the domain name googleappsengine.com. Unfortunately, I am compelled to stick up for GOOGLE. Sorry, it is partly the lawyer in me and partly due to experience I have had with others cybersquatting on my client's trademarks.
One of the difficult positions a trademark owner is placed in is the requirement that it defend its marks against infringement. Sometimes this requires a company to send a cease and desist letter to a "friendly infringer." While Jesse's friend may have had good intentions, use of GOOGLE's trademarks by an unlicensed third party weakens the marks and makes them more difficult to enforce in the future. It is often a tough balancing act. A company does not want to offend friendly users of the mark, but needs to make sure that its marks are not infringed. There is probably a reasonable likelihood that someone going to googleappsengine.com would believe that the site is in some way affiliated with GOOGLE. If something happened on the site that was objectionable, GOOGLE may get blamed before most people understood that the site is not affilitated with the company. Additionally, the site could be used to sell competing products and create confusion among consumers.
When I reviewed the letter I actually thought that it was pretty reasonable in tone. GOOGLE is obviously big enough to crush anyone who is infringing its marks. The letter, while firm, is not overly threatening. You have to remember that GOOGLE probably has thousands of Domainers trying to snag any GOOGLE related domain name they can. It is hard to tell up front if the person who registered the domain name has honest intentions or if they are simply trying to make a quick buck by cybersquatting. The only safe approach is to firmly, but politely go after everybody.
One potential way to resolve the trademark infringement/cybersquatting issue is to have the company whose trademarks are at issue own the website. They can then license the use of the domain to those who want to blog about their products. Of course, they may also require a disclaimer that the views expressed on the site are not those of GOOGLE.
Jesse's friend may have had good intentions. From a legal point of view, however, GOOGLE was being pretty reasonable.
One of the difficult positions a trademark owner is placed in is the requirement that it defend its marks against infringement. Sometimes this requires a company to send a cease and desist letter to a "friendly infringer." While Jesse's friend may have had good intentions, use of GOOGLE's trademarks by an unlicensed third party weakens the marks and makes them more difficult to enforce in the future. It is often a tough balancing act. A company does not want to offend friendly users of the mark, but needs to make sure that its marks are not infringed. There is probably a reasonable likelihood that someone going to googleappsengine.com would believe that the site is in some way affiliated with GOOGLE. If something happened on the site that was objectionable, GOOGLE may get blamed before most people understood that the site is not affilitated with the company. Additionally, the site could be used to sell competing products and create confusion among consumers.
When I reviewed the letter I actually thought that it was pretty reasonable in tone. GOOGLE is obviously big enough to crush anyone who is infringing its marks. The letter, while firm, is not overly threatening. You have to remember that GOOGLE probably has thousands of Domainers trying to snag any GOOGLE related domain name they can. It is hard to tell up front if the person who registered the domain name has honest intentions or if they are simply trying to make a quick buck by cybersquatting. The only safe approach is to firmly, but politely go after everybody.
One potential way to resolve the trademark infringement/cybersquatting issue is to have the company whose trademarks are at issue own the website. They can then license the use of the domain to those who want to blog about their products. Of course, they may also require a disclaimer that the views expressed on the site are not those of GOOGLE.
Jesse's friend may have had good intentions. From a legal point of view, however, GOOGLE was being pretty reasonable.
Very nice rebuttal Rand. I think a lot of unsophisticated people feel they need to raise a big ruckus, stick up for each other as the "little guys" and point fingers at the big gorilla and imagine offenses and slights. It's the victim mentality. It is understandable from a political standpoint; special interest groups feed off victimhood. It is unfortunate that the mentality also penetrates the business arena. It clouds their reading and results in faulty interpretation of very reasonable and standard legal notices. They imagine "evil" deeds as keeping them from success. When they don't have a good business strategy, they resort to feeling victimized. They resort to emotional responses about how "nice and well-intentioned" they are but fail to look at the rational legal logic.
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Isn't it true that if a trademark owner does not actively defend their mark in commerce that eventually they may lose their rights? Is this also true of copyrights?
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A party may effectively lose rights by failing to act in many areas of the law. Many causes of action have an express deadline by which they must be exercised or the claim will be barred (the statute of limitations). However, Courts are reluctant to enforce most rights if the owner has failed to enfore those rights within a reasonable time. Courts often turn to laches (unreasonable delay which potentially damages the defendant's ability to defend itself) and estoppel (the defendant acted on the conduct of the owner) to prevent a very delayed attempt to enforce rights. Thus, it is best to promptly assert any rights to have. Otherwise, they may be difficult to enforce.
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Rand, thought I had posted this earlier but not seeing it so I'll try again. Thanks for the great post, btw - I agree with you on many fronts. I respect your opinion even more than my own - you definitely have more experience than I in this area. I'd love to meet you some time btw - we should do lunch!
My question is on the Uniform Resolution Dispute Policy - it was my understanding that as long as the domain is being used in a non-commercial manner or in a way that doesn't tarnish the trademark, per the ICANN regulations it was fair game. Is that not the case, and do Trademark laws trump the agreements set forth by ICANN and the individual Registrars? I remember going over a few of these cases in my Law class in school and it seemed as though the cases where the Plaintiff was using the domain for something related to the name they had purchased, the domain could not be taken away from them. Am I wrong here? I'd love to hear your opinion on the matter - again, thanks for sharing. It's great to get a Lawyer's opinion on this.
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Jesse,
Trademark/domain issues are usually a challenge because the are both economic rights and free speech rights are often at issue. There is no hard and fast rule that non-commercial use cannot constitute trademark infringement or cause transfer of a domain name. One of the earliest domain cases related to a person who registered peta.com to give grief to the People for the Ethical Treatment of Animals. PETA prevailed.
While the UDRP is based on protecting trademark rights, the test for trademark infringement and the test under a UDRP proceeding are different and could lead to different results. In a trademark dispute, the question is whether the defendant is creating a likelihood of confusion between its products or services and those of the trademark owner. In contrast, to prevail in an UDRP proceeding, a complainant must show:
1) the domain name is identical or confusingly similar to a trademark or service mark under which the complainant has rights;
2) the domain name owner has no legitimate interests in respect to the domain name;AND
3) the domain name has been registered and used in bad faith.
A person who has simply registered, but not used, a domain name is unlikely to incur liability in a trademark infringement suit - there is nothing to be confused by. However, leaving the domain name unused for a prolonged period of time supports a finding of bad faith under prong 3 of the UDRP.
Your friend actually has a strong argument that his use of the name is proper. He is not using it commercially and he is apparently using it to comment on GOOGLE's product. GOOGLE, however, needs to err on the side of going after people. Otherwise, your friend might start creating confusion. (If he decides to use the domain, I would strongly suggest that he puts a disclaimer at the top that the blog is designed to comment on GOOGLE's products and that the blog is in no way affiliated with GOOGLE. This would substantially reduce any argument that he is trying to trade off GOOGLE's goodwill as long as he is not trying to monitize the site.) The question is how much is he willing to pay to defend his right to free speech? There are a few public interest firms who may be willing to take the matter if GOOGLE really gets aggressive.
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Great response Rand - you are a smart man. I am now a loyal subscriber to your blog - you've got some great insight!
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