Tuesday, February 12, 2013

Cybersquatting on the Sooners.

The University of Oklahoma is suing a man in district court for cybersquatting. The story is replete with almost unparalleled levels of irony, because the school's nickname -- Sooners -- refers to settlers who squatted on land in what is now Oklahoma before Grover Cleveland proclaimed the territory open to settlement in 1889.

The University is undoubtedly suing under the Anticybersquatting Consumer Protection Act (ACPA), found in Title 15 of the U.S. Code. "Cybersquatting" occurs when one registers, traffics in, or uses a domain name that is identical or confusingly similar to a famous or distinctive trademark at the time of the domain name's registration, and the individual has a bad faith intent to profit. 15 U.S.C. § 1125(d)(1)(A). "Bad faith intent to profit" (BFIP) is a legal term of art. In determining whether a putative cybersquatter has BFIP, a court considers a variety of statutory factors. Here, the relevant statutory factors will be:

- the defendant's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
- the defendant's bona fide noncommercial or fair use of the mark;
- the defendant's intent to divert consumers from the University's online location to the defendant's site that could harm the goodwill represented by the mark;
- the defendant's offer to sell the domain name or otherwise obtain financial gain;
- the defendant's provision of false or misleading information in registering the domain name; and
- the defendant's acquisition of any other domain names including famous or distinctive marks.

There are a lot of facts that remain in this case, and the above list will likely dictate the case's outcome. Most of the landmark cybersquatting cases occurred in the 1990s and early 2000s, when people still thought they could get away with taking domain names and selling them to other companies. Unless the site is a parody and it is clear from the outset, in which case there will be no BFIP, these cases do not end well for the defendant.

The University of Oklahoma does own the rights to the mark "Sooner," for clothing, sports apparel, t-shirts, hats, sweatshirts and the like. It also owns a number of other registrations where "Sooner" is juxtaposed with another word. I suspect that this individual registered the second-level domain name "SoonerNetwork" in order to profit off of the school's third-tier media rights, which are reserved to Big 12 member schools. However, if the individual is actually using the site for a bona fide purpose and has no BFIP, he may be able to keep it. I doubt this is the case, because the purported legitimate purpose, a site directing people to elderly care providers in the area, has no connection to the term "Sooner Network." Also, he apparently included information on the site at an earlier date that betrayed his fanaticism for the Texas Longhorns.

I suspect that, in addition to his motive for registering the site, he talked to someone with a rudimentary knowledge of the law, or an attorney, who advised him on the BFIP considerations. I doubt an attorney would have advised him that he should change the website's content, but an attorney might have let him know how a court would look at it (which led the individual to change the content on his own).

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