http://patnetlyo.com – Typosquatter

Patent.Law028In preparing for my e-commerce class on cybersquatting, I tried Veralab’s typo-squatting search engine on patentlyo.com. It turns out that someone has registered the typosquatting site http://patnetlyo.com/.

According to Network Solutions, the offending registrant:

Navigation Catalyst Systems, Inc
2101 Rosecrans Ave. #2000
El Segundo, CA 90245
Email: domainadmin@navigationcatalyst.com
Phone: 3106471592
Fax: 3106476001

I’d be interested in what action you would suggest to meet the following objectives: Cancel the registration; potentially walk away with money; but avoid any potential major loss of money. (I have handled UDRP Arbitration cases in the past, but am deterred by their lack of money damages)

27 thoughts on “http://patnetlyo.com – Typosquatter

  1. 27

    I am currently looking for some legal help regarding a typosquatting case with Microsoft who are claiming a considerable cost in compensation for 4 domain names that only generate approx 40 hits per month!
    Any help would be appreciated as we cannot afford the legal fees, is there previous cases with compensation claims.?
    We are based in the UK.

  2. 26

    “Has anyone given thought to a class action law suit on behalf of trademark owners against such companies under the ACPA or other law, alleging that automatically registering domain names without regard for trademark rights of others is bad faith?”

    Vulcan Golf is trying that right now, although there aren’t many independent lawyers being optimistic about it.

  3. 25

    Has anyone given thought to a class action law suit on behalf of trademark owners against such companies under the ACPA or other law, alleging that automatically registering domain names without regard for trademark rights of others is bad faith?

  4. 24

    Sorry, meant when you or an outside counsel you choose draft that C&D, beware of hyperbole. It’s a good thing to think about whether you’re worried about being outed on Chilling Effects or not.

  5. 23

    It is a commercial site. The registrant is diverting traffic to its site by exploiting your trademark. You can argue bad faith just on these appearances because there’s no apparent basis for use of the domain name other than to take advantage of the good will you’ve built up in your mark.

    Filing an ICANN complaint can force a transfer, but as others have noted you won’t get damages. And you’ll pay about $1200, assuming you draft the complaint yourself. A well-crafted cease and desist letter first may provoke a response. Many cybersquatters take a wait-and-see approach, making money as long as they can from a site. Some flinch faster than others when they see that C&D. If the domain name’s registered by a third party it will be harder to get a response and registrars will rarely take action when alerted to the misdeeds of a registrant.

    So pick your battles when it comes to a cybersquatter. A C&D may be worth it, but when you (or an attorney) draft it, always be prepared for the possibility it will be posted on the Chilling Effects Web site (link to chillingeffects.org). So avoid that purple prose and tailor the letter to the circumstances without a lot of dire threats. Even if you think a C&D will have no effect, you’ve made the effort and can argue you’ve been diligent in trying to protect your mark.

  6. 22

    Carefully contemplate all of this thoughtful advice, then think back to when you pondered these issues dispassionately as counsel to your own clients, because you had the distance from the sense of violation that they did not, and recognize that it is not worth the time, energy, and money to do anything other than secure the name through a UDRP. Then forget all of that common sense BS and SUE THE BASTARD! We’ve done lots of ’em. We’ll need a $25,00 retainer. . ..

  7. 21

    Another thing. Since it is possible to reserve a domain name for a few days before paying, some typosquatters go after a bunch of similar names, put up “click through” sites to see how much revenue they can generate and drop the ones that don’t seem to get much play before they have to pay for them.

    Before filing a UDRP wait at least a week to see if the site goes away and if it does buy it up. If it doesn’t and is used as a “click through” site you’ve got a good chance to win on the issue of being registered in bad faith.

  8. 20

    I’ve handled dozens of matters involving domain names, including litigation (usually an ACPA claim as part of a trademark case), UDRPs, cease & desist letters, monetary negotiations, etc.. I don’t think there is any cost effective way to recover a domain name from a cybersquatter — other than, perhaps, watching to see if it expires and using a domain-snapping service to grab it just after it leaves the redemption period. Otherwise, you’ve got to figure out how much the domain name is worth to you and compare it with the costs and likelihood of success of the various options.

    You do have the option of valuing your own time at $0/hour (or some low amount), in which case some of these options become more cost-effective. You could try just sending a standard C&D to the cybersquatter enumerating causes of action, etc.. Some domainsquatting companies will transfer domain names as a matter of course when presented with a bona fide / good faith trademark claim. In my experience, about half of the squatting companies fall into this category.

  9. 18

    Looks like Navigation Catalyst Systems has been down the road at least once before (and won):

    link to domains.adrforum.com

    According to link to forums.webhostdir.com, NCS (www.navigationcatalyst.com) is owned by the Vendare Group (www.vendaregroup.com).

    Contact:

    Brad Copeland,
    Senior Account Manager
    of Navigation Catalyst Systems,
    +1-818-528-2794,
    brad@navigationcatalyst.com;
    or

    Lynn Fireside,
    fireside@folfry.com,
    or

    Jerry Freisleben,
    freisleben@folfry.com,
    both of Foley/Freisleben LLC,
    +1-213-955-0020,
    for Navigation Catalyst Systems

    Lots of opportunities for fun and games.

  10. 17

    While I see your basis for action under 15 USC 1125(d), I do not see the subsection (a) basis. The typosquatter site is plainly not providing “news reporting service; and online journal, namely, blog featuring patent law and information” as recited in the PATENTLY-O registration. And, as a practical matter, I would tend to agree with Don’tGetIt. If you’re trademark rights are not being diminished, and you are not suffering any quantifiable harm, why waste your resources pursuing this matter?

  11. 16

    Dennis,

    Where the case for trademark infringement is strong, a cease and desist letter coupled with the filing, but not the serving, of a complaint may motivate successful negotiations including payment for harms caused.

  12. 14

    If a lawyer represents himself, is that still pro se?

    Yes. Being a lawyer is only a privilege to represent other people.

  13. 13

    Now this is a coincidence. There’s a nice article about this very thing in the latest Out-Law magazine. Take a look over at http://www.out-law.com. It’s Pinsent Masons that are behind Out-Law so, rest assured, it’s a quality publication :-)

  14. 12

    Dennis, we often are confronted by typosquatters coming close to clients’ domain names and trademarks, and we cannot recommend our clients’ taking “all” such typo domains or even challenging each and all of them. What counts is whether people seeking your site would be confused upon landing on the typo site and think they have reached yours. If not, don’t worry. If it’s a phishing site or such, then worry: contact the domain registrar first with the facts. If that does not immediately work, get a TRO from your nearest federal court (under 15 USC 1125 even if your mark or name is not federally registered). You can claim cybersquatting damages, but then your costs go way up in proving and trying to collect those; domaintools.com, for instance, can tell you (for $$) if the registrant has thousands of domain names or not. Good luck!

  15. 11

    ICANN works very well. In most typosquatting cases the squatter never replies to defend themselves and you win (quickly and easily = inexpensively).

  16. 10

    (This isn’t legal advice, I don’t know enough about the situation, nor have I done enough research).

    WIPO publishes statistics on UDRP decisions, and I believe that the trademark holder prevails about 80% of the time, across the board. I’m a big believer in UDRP proceedings where you suspect a typosquatter. I wanted to share a few things that I have found helpful from the couple of UDRP cases that I have worked on.

    Generally, you are looking to show that the other person does not have a legitimate use for the mark. Specifically, if you can show that their business is typosquatting, you have a strong argument. I begin by running Google searches over the other side’s domain name, company name and street address. At a minimum, you should learn what names they are operating under. Hopefully, you will also learn of other domain names that they own (if they are a typosquatter, they will have a number of them).

    Then, I go to link to icann.org to search previous UDRP decisions. This should give you an idea of the other side’s success rate (once I ran the search and learned that the other side simply never responded to UDRP proceedings, and thus always lost by default).

    Next, I turn to reverse domain name look-up tools to show that the other side is a typo squatter. This takes a while (and unfortunately, I don’t have the URL of the tool handy). First, you look up the DNS number of each domain name that the squatter owns. Second, you use the reverse look up tool to learn which other domain names are hosted on the server with that DNS number. Third, you look up who owns each of the returned domain names. For as tedious as this can be, a typo-squatter will generally own a server, and thus all of the domain at that address will likely be commonly owned, and will likely be obvious typo-squatting domains.

    It is good practice to keep a copy of the typo-squatting site (which is likely to be further evidence of typo-squatting).

    Lastly, it might be worthwhile looking over the typo-squatter’s ISP’s terms of service. It could be that the ISP is willing to pull the website for a violation of the terms of service (though this is only a temporary solution).

    These steps have been enough to build very strong cases for the matters that I have handled. Next steps would be dependent on what you find going over these basics.

    Best of luck,
    David

  17. 7

    Even if you could find a statutory or common law cause to recover damages – what damage have you suffered? Loss of advertising revenue? Reputational impact?

    Could you prove damages severe enough that the compensation would even cover your own time (if you proceeded pro se … never mind the old saw about lawyers as self-clients)?

    Whatever alternative has the lowest entry cost, that’s the route you should probably go.

  18. 6

    Well, “Don’t get it,” Patently-o is a registered trademark.

    WIPO has dealt with a lot of typosquatting cases. They are almost uniformly favorable to the complaining party (for obvious reasons).

    My suggested approach: 1) request an immediate transfer & assignment; 2) file a UDRP complaint; 3) request an immediate transfer; and 4) continue with the UDRP. At some point you win.

    Have your e-commerce class put together your complaint. The best complaint gets an A. ;)

  19. 5

    One avenue is to use the UDRP (Uniform Domain-Name Dispute Resolution Policy). It is fairly inexpensive from what I remember. Below is a link for the ICANN rules:

    link to icann.org

    However, there is no ability to obtain damages with the UDRP (if I remember correctly), just domain name transfer.

    Another avenue is the ACPA (Anticybersquatting Consumer Protection Act), see 15 USC 1125(d). This can be expensive, but damages are available.

    In either case, the domain name is supposed to be confusing similar to an existing trademark.

    Also, (sorry I have to do this, but…) this is not legal advise, but if you so desire, feel free to email me.

  20. 4

    One avenue is to use the UDRP (Uniform Domain-Name Dispute Resolution Policy). It is fairly inexpensive from what I remember. Below is a link for the ICANN rules:

    link to icann.org

    However, there is no ability to obtain damages with the UDRP (if I remember correctly), just domain name transfer.

    Another avenue is the ACPA (Anticybersquatting Consumer Protection Act), see 15 USC 1125(d). This can be expensive, but damages are available.

    In either case, the domain name is supposed to be confusing similar to an existing trademark.

    Also, (sorry I have to do this, but…) this is not legal advise, but if you so desire, feel free to email me.

  21. 3

    DC, what’s the problem? Why should you have rights to “patnetlyo.com” just because you already registered “patently-o.com” and “patentlyo.com”? If I mistakenly type “patnetlyo.com” when I want patently-o, it’s immediately apparent I goofed, and I’ll just retype the address. That this process might cost me 10 seconds, instead of me being automatically redirected to your site, is reason to entitle you the domain name? Puh-leez. [Wait for chorus of screams from readers who think DC should be entitled to “patnetlyo.com”.]

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