We have all bumped into pay-per-click sites while looking for actually useful information. You know these sites. You type in a domain name, fully expecting to find a useful website, and all you find is a sponsored link generic page.
The Periplaneta Americana of the Internet
Up until I was about 26, my primary form of transportation was always a motorcycle. However, I never owned a bike that cost more than $600. In high school and college, I drooled over the Moto Guzzis that I would see from time to time that were hopelessly out of my financial reach. As soon as my bonus came in this year, I resolved to spend it on a Moto Guzzi.
I figured that Moto Guzzi would be at http://www.motoguzzi.com. No such luck. Let’s try http://www.motoguzzi.us. As you can see by clicking the image above, you don’t exactly wind up at Moto Guzzi’s website. (www.motoguzzi.com used to resolve to a pay-per-click site too, but it has since gone down)
These pay-per-click pages and their operators are the parasites of the internet. I love when they put some goddamned phrase at the top like “find something interesting” or “helping you find what you need.”
Far from “helping you find what you need,” these sites do nothing except divert traffic from its intended destination. Trying to wipe them out is like playing whack-a-mole. Go find your favorite website. Lets presume that it is “The Drudge Report.” Now type in http://wwwdrudgereport.com/ (note that I forgot the period). Click it and see where you wind up – certainly no where near the Drudge Report. You can do this all day long — and you’ll find these crappy and annoying pages everywhere. I suspect that they outnumber “legitimate” websites at this point.
These pay-per-click sites are truly the Periplaneta americana of the internet.
And not only that, when these pay-per-click sites operate by using another person’s trademark, like Moto Guzzi, they are breaking the law. Under the ACPA (15 U.S.C. § 1125(d)), this kind of parasitic behavior can subject the pay-per-click domain owner to up to $100,000 in damages as well as forfeiture of the domain name, and possibly an attorneys’ fees award.
Dude, Where’s Your Blog?
Now that you know how I feel about pay-per-click sites, and you know that establishing one on the back of someone else’s trademark rights is illegal, lets take a look at a little GoDaddy issue, which served as the inspiration for this post.
GoDaddy runs its own pay-per-click program that isn’t really all that parasitic. If you buy a domain from GoDaddy (or any other registrar for that matter), you can “park” the page, and the registrar will turn it into a pay-per-click site for you. This is not, generally speaking, the kind of practice that I rail against, nor is it a violation of the ACPA. It is kind of like putting a billboard on a building that is under construction.
Imagine my annoyance a few days ago when I was trying to visit one of my favorite IP blawgs and entered the address into my browser.
I left off the “www” as I often do, since it is usually superfluous. See, if you type in legalsatyricon.com, or http://www.legalsatyricon.com, or http://www.legalsatyricon.com, you wind up at the same place — the Legal Satyricon — your intended destination (I hope).
So here is what I typed in: http://vegastrademarkattorney.com.
Imagine my surprise when the page that came up said “this domain is parked,” and I was provided with a generic GoDaddy pay-per-click domain parking page! Had a cybersquatter stolen Mr. Gile’s domain and turned it into yet another plague-of-the-web pay-per-click site? Did Gile just give up the whole blawg concept in favor of collecting a few bucks a month in click-thru fees?
Just for giggles, I looked at the address in my browser and I entered the “www” — http://www.vegastrademarkattorney.com. When the familiar logo and layout popped up, I breathed a sigh of relief and thought little of it.
A few days later, I tried to visit one of my other favorite blogs, Nobody’s Business:
I entered in the following: http://bakelblog.com. Yikes! It appeared that one of my favorite libertarian blogs was gone! (note, by the time you read this, the issue may be corrected)
and proud of it!
I thought, “oh no, did Queen Beatrix send her secret police to drag Rogier van Bakel from his island hideout to answer for the crime of insulting Dutch royalty?” As I loaded my Glock and started wondering who to call to assist me in my rescue mission, I considered trying one less drastic solution… I typed in the “www.” http://www.bakelblog.com
Relief… Rogier is still safe from being cast into an Amsterdam dungeon, and I don’t have to take on any Dutch prison guards.
Now that we have established that neither censors nor domain thieves have conspired to deprive me of some of my favorite reading material, I still must ask the question — WTF? It looks like GoDaddy is playing the cybersquatting game by slightly different rules.
Is GoDaddy Violating the ACPA?
When GoDaddy provides these pay-per-click pages instead of its customers websites, is the world’s largest registrar violating the Anti Cybersquatting Act? Maybe. Lets look at some pertinent portions of15 U.S.C. § 1125(d).
(d) Cyberpiracy prevention
(1) (A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person –
(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
(ii) registers, traffics in, or uses a domain name that –
(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
Well, first of all we will need to decide whether Gile’s “Vegas Trademark Attorney” or van Bakel’s “Nobody’s Business” are trademarks. They are not registered marks, but registration is not required — trademark rights arise from use, not registration. I would say that “Nobody’s Business” certainly is a common law mark, and perhaps so is even “bakelblog”.
“Vegas Trademark Attorney” is super descriptive, and almost generic. However, that would only be the case if the services were “legal services.” For a blog, I’d say that the name qualifies for some degree of trademark protection. Add to that his secondary meaning, and I’m willing to say that both blogs’ names and domains are distinctive.
I realize that I am skipping a few details here, but this is a blog, not an appellate brief.
Next, lets see if Godaddy’s behavior fits within the ACPA’s prohibitions. There is no case law to guide us on this, since this particular kind of behavior hasn’t been dealt with in any reported case (at least none that I could find).
It sure looks to me like it fits.
Godaddy is “using” domain names that are supremely confusingly similar. In fact, Godaddy is actually using van Bakel and Gile’s domain names, absent the “www.” The “use” is for profit — the pages that Godaddy provided to me, instead of the pages I searched for, were chock full of sponsored links. GoDaddy makes advertising revenue off of them.
But is it Bad Faith?
15 U.S.C. §1125(d)(1)(B)(i)(I) thru (IX) provides nine nonexclusive factors to help us determine whether the use is in bad faith. None of them seem to fit neatly within this factual scenario. GoDaddy certainly is using these domains with an intent to profit — but in order to call this an ACPA violation, we need to say that it is a bad faith intent to profit.
At first blush, it sure seems like it is. Naturally, I alerted these two bloggers to the issue. Rogier van Bakel put on his journalist hat and went digging for the truth. His results suggest that GoDaddy gets a legal (but perhaps not moral) pass on this one.
GoDaddy gives its customers the option of having their site load without the visitor typing in the “www.” They do this by adjusting their “CNAME” settings. As I understand it, the CNAME is a kind of alias that, behind the scenes, automatically modifies a URL to go to a specified site. These websites’ CNAME’s were set adequately but not perfectly. Any GoDaddy user who fails to select the proper option will find some of their traffic re-directed to a sponsored link page, where coincidentally GoDaddy makes a few bucks on click-through fees.
However, ultimately, it does come down to the webmaster operating his account properly.
It seems that GoDaddy makes this needlessly complicated (or at least non-transparent), and that it should be a cinch for the company to autoforward, say, vegastrademarkattorney.com to the exact same place it takes you when you type http://www.vegastrademarkattorney.com. I fail to understand why any customer would prefer that a visitor who omits the “www” should be re-directed to a pay-per-click site — especially when such site gives the impression that the website the user sought has gone out of business (or worse).
But back to the legal question: Does GoDaddy’s conduct rise to the level of “bad faith?” At first, I was certain that it does. After Rogier’s research is taken into account, it appears that at least some (if not most) of the responsibility must fall on the shoulders of the user — who can control the issue at any time.
Does that make GoDaddy right? No. The default should be that internet users wind up where they intended to go. It is still parasitic and sleazy to draw traffic intended for someone else to your own money-making scheme. It is even sleazier when you do it to your own paying customers.
Rogier van Bakel contributed mightily to this post.
[…] Marc Randazza does a great job in explaining, and suggesting at least one answer to the question, “Is GoDaddy a Cybersquatter?” […]
While IANAL, it so happens this topic is one I’m passionately interested in due to my previous registrar life.
There are a few catches to this, namely:
1. Go Daddy isn’t the registrant of those domain names. Who’s the trademark holder’s lawyer likely to go after in this scenario? (assuming s/he’s smart, anyway…)
2. Of course, Go Daddy’s registration agreement towards the registrant covers their butt on the subject of parking pages and trademark infringement. The registrant could sue Go Daddy for this like what happened in Zurakhov v Register.com, but its chances might be low.
3. Although the trademark holder can still sue the registrar for, say, contributory TM infringement, its chances of prospering are also probably dim. Domain registrar Network Solutions was sued 2x for this (Lockheed Martin and Size Inc, respectively) and won both, though there are some recent suits against them for TM infringement, I think.
All in all, Go Daddy’s learned from both Network Solutions and Register.com. One’s gotta CYA (Cover Your Ass) anyway. :)
Oh yeah, just thought I’d add that other registrars do this as well. Looks like it’ll take someone with lots of time and money in their hands to sue and send the message, though no guarantees they’ll win, of course. :D
1. As far as GoDaddy not being the registrant, I don’t think that matters. It is “use” of the domain.
2 Just because you are not a lawyer doesn’t mean that you don’t have powers of observation, and it doesn’t mean that you are wrong. In fact, I think you landed on a great point! You are probably right about the registration agreement. Even if it were an ACPA violation, the agreement might cover (I haven’t taken the time to fully review it).
3. I think the prospects of a TM infringement suit would be difficult, but not impossible (that is, if we forget about the registration agreement, which I’m sure does control).
Nice work. Great responses!
This is a common question from prospective clients and a regularly discussed issue. Simply put, GoDaddy is likely not liable as a cybersquatter. The ACPA provides immunity to domain name registrars (such as GoDaddy). In fact, case law has consistently held that lawsuits against registrars will fail. See Lockheed Martin Corp. v. Network Solutions, Inc., 141 F. Supp. 2d 648 (N.D. Tex. 2001) (holding that a domain name registrar or registry is not liable when it accepts registration of domain names violating the ACPA); see also Bird v. Parsons, 289 F.3d 865 (6th Cir. 2002) (affirming dimissal of ACPA claim against registrar because domain name registrars do not register, traffic in, or use domain names as required by the cyberpiracy statute, 15 U.S.C. 1125(d)). However, this immunity is from monetary damages only. Registrars may still be subjected to an injunction if they, for example, violate a court order.
Ultimately, as some of you have alluded to, most registrar registration agreements clearly (I mean clearly if you read through pages and pages of fine text) allow them to put up parking pages. Therefore, a change in the law may be a necessary prerequisite to not only labeling GoDaddy as a cybersquatter, but being able to collect money damages from them.
Lets not lose focus here… The cases that you cite are not exactly on point.
First off, I don’t think that the registrar’s behavior fits squarely under the ACPA. Nevertheless, the cases you cite simply say that registrars are not liable when their *customers* commit acts of infringement.
In this circumstance, it is the registrar itself that is, arguably, *using* the domain name to its own advantage. This is more akin to the Dotster case than the Lockheed Martin or Bird cases.
And… although I did not analyze this behavior under simple trademark infringement theories, it very well might fit as a simple Lanham Act violation — depending on the text of the registration agreement.
Interesting, so as far as GoDaddy goes this only occurs with GoDaddy’s customers? (That would make sense, I can’t see how they have the ability to mess with a behind the scenes redirect for domain names registered through other registrars.)
On a loosely related side note, I’m struck at how many legal blogs have their names typosquatted (e.g., howappealing.com, http://professorbainbridge.typepad.com/ (who incidentally, has a mark)).
Under few specific conditions, though. As Marc later mentioned, Dotster itself was sued by Neiman Marcus which they eventually settled.
Now this is mainly “insider talk” that’s not (yet) officially confirmed, but Dotster was supposedly used by its owners precisely to monetize trademark-domain namesakes via domain tasting. Neiman Marcus happened to document them, and was even prepared to demonstrate Dotster itself “owned” those domain names themselves.
[…] websites equal bad faith under the UDRP Two weeks ago, in Is Godaddy a Mass Cybersquatter?, I discussed pay-per-click sites: The ubiquitous “sponsored links” pages that have […]
If you are going to say that DomainNames are trademarks, and should be protected. Then if a TM holder DOES NOT PAY for the renewal of the domain he should lose all rights to the Trademark. Just like the USPTO.gov trademark office. If you don’t pay the fee you lose your TM.
Or do trademark holders want all the benefits and none of the responsibilities? TM holders love to make it someone else’s problem rather than take care and pay there bills.
Also review the Duncan YoYo case, when a phrase or word is common english NO trademark protection is allowed. Those if you brought up how common phrases are not trademark protected then TM lawyers couldn’t charge stupid fee’s
Google is a common term and SHOULD not have TM status, unlike kleenex, Scrabble or Xerox all which had to spend millions to save there TM status.
Did you google him? It is a verb now, no longer. Used in movies, tv shows etc. You do NOT see that with Scrabble, if a newspaper uses the mark Scrabble you will see they always use the R symbol.
Wow… I am really happy that you posted here, because you are operating under some real misinformation with respect to trademark law.
First of all, trademark rights are granted through *use* not through *registration.*
You don’t need a registration to have a trademark. You can fail to renew your trademark registration, and still retain common law rights to the mark. You only lose your trademark rights if you abandon your *use* of the mark. Get it?
With respect to the Duncan Yo-Yo case, you’ve again obviously gotten a little knowledge of trademark law by talking to angry domainers, but not in a trademark law class. Duncan v. Royal Tops, 343 F.2d 655 (7th Cir. 1965) does not stand for the proposition that “when a phrase or word is common [E]nglish, NO trademark protection is allowed.”
Duncan stands for the proposition that previously valid trademarks can lose their status as trademarks through the process of genericide. Asprin and escalator are other examples of trademarks that became generic terms for the products they represent.
This does NOT mean that a common English word, like APPLE can not be used as a trademark — in fact , it is a registered trademark. Not for “apples,” naturally, but for computers.
Google, as you point out, is used as a verb. However, only someone with no knowledge of trademark law would say that it has suffered genericide. I don’t say this to insult you — but rather to insult the idiot who told you this. I presume that it was some idiot on a domainer chat board. If it was an attorney, you should NEVER hire him, because he will screw up your case for sure. If it wasn’t an attorney, you shouldn’t have listened to him in the first place.
Now to the point… if you say “I googled it” do you mean “I searched for it on the internet?” Or do you mean “I searched for it on the Google search engine?” If I told someone to “Google it,” and they used “Ask Geeves,” I would not think that they had followed my instructions.
So, to conclude: Whoever taught you trademark law is either uninformed, an idiot, or both. Alternatively, they are one of these attorneys that preys on people like you — trying to get you whipped up into a frenzy so that you waste your money defending hopeless cases.
If you want to learn anything else about trademarks, feel free to ask. Just please stop using whatever source you’ve been using — because they have been lying to you.
Lets look at Flamigo.com UDRP/Trademark case.
There are 44 Classes of TM’s in US? (i think i am close)
Flamingo.com was lost, Even though in Florida there are at least 3 hotels with the same name, all were in business before Flamingo hotel in Vegas, you can check it for yourself. The one place I stopped at in Florida said the hotel has been in business since the 30’s. WAY BEFORE Vegas.
The case of SUPERIOR rights is what the real problem is. If you are a big company (railroader) and hire a lawyer (Pinkerton) you will get the domain except in all but extreme cases.
(not the typo’s or scrable.com dellBUSINESSTERM.com) Actually it is crazy that they have to pay UDRP anything to recover those, that is another story.
The current UDRP is like Pinkerton’s who worked for the railroad in 100+ years ago.
The Flamingo hotel in Vegas does NOT own all classes of TM’s so why should they have the domain? Even if Gambling links showed up what does it matter?
Common words like that an many others shouldn’t be UDRP cases.
Also, Didn’t apple have to pay off someone ($250 million+ I believe, correct me if I am wrong) over the logo? Dealing with the Beatles record company? Bad example on your part but ok.
Are you saying that the company Apple should own ALL TLD’s that are APPLE.whatever? Apple.ca, Apple.ws? Apple.mobi (stupid TLD) etc?
You can add this to my last post.
Duncan v. Royal Tops, 343 F.2d 655 (7th Cir. 1965) does not stand for the proposition that “when a phrase or word is common [E]nglish, NO trademark protection is allowed.”
If people said, Did you buy an apple today? (refering to a computer) common term used everywhere then Apple TM would be Void. That was my point. People refer to them as PC’s. If not why not? Otherwise YoYo would still be a TM, correct?
[…] turns un-used domains into pay-per-click sites. I’m not a big fan of them, as is obvious from this prior post. In theory, they are fine – they turn unused web domains into money-making enterprises. […]
[…] domain name is parked at a pay-per-click site (if you don’t know what that is, click here for an explanation). This is bad faith use, even if the page is automatically […]
[…] the domain name in dispute is parked at a pay-per-click site (if you don’t know what that is, click here for an explanation). Someone is making click-through fees on that page’s sponsored links, but Seville-Smith […]
[…] Prof. Marc Randazza: Is Godaddy a Mass Cybersqatter? Sphere: Related Content Add to Delicious Digg This! · Stumble This! · Mixx This! · […]
[…] about how one of my theoretical posts has now come to life. Prof. Marc Randazza had a great post Is GoDaddy a Mass Cybersquatter? on his Legal Satyricon and, while it’s great fun to muse about these things hypothetically, I […]
Hi, Funny, no mention of the CNN article about the lady who created website, myhusbandneedsajob, and posted a link that led to a godaddy page: http://domainnamewire.com/2009/03/14/godaddy-makes-it-harder-for-womans-husband-to-find-a-job/
since corrected. The article came out about the same time as your blog post.
When it comes to legal, go daddy isn’t accountable. When it comes to the court of public opinion, that’s a different story!
Louise “I won my small claims against Go Daddy” Timmons
Case Number: 09S00328
Filing Court: Long Beach Courthouse
Hey can I use some of the insight found in this blog if I provide a link back to your site?
The situation with the domains that went to a parked page when you left off the www. was probably just bad DNS on the owners part rather than anything insidious. A lot of blog host give you instructions on how to point your CNAMEs (like http://www.domain or blog.domain) to your site but not your root domain. By default a lot of registrars point your domains primary A record to their generic parked page, partly so you can tell right away that your registration was successful and your domain resolves to something instead of a server not found message, but probably also to make a few bucks off lazy domainers who don’t both to point their domain anywhere else until they have a site ready. So yeah, the registrars are trying to make an extra buck off something they’ve already been paid for, but it’s the domain owners fault for not either figuring out how to fix their DNS or finding a better host.
Is it true that I would have to pay monsterdomain.com for the use of the domain name of my new business?? anyway i get around this? They are just sitting on it and want me to pay $2700. Can they do this?
I bought a name of a musician who is just getting famous. Did I get anything useful or did I unintentionally keep it from that person. Can I operate a site that directs traffic to them and run side ads? Can I give it to that person or sell it? I tried to buy my business name and someone offered to sell it to me for $5000.