10
Mar
gplay_logo_g

Cybersquatting, one of the more profitable forms of trolling, is nothing new to anyone familiar with the interwebs. In fact, it's often a source of some pretty funny disputes.

That gets us to today's story: a lot of people have noticed Google doesn't actually own GooglePlay.com (link goes to WhoIs.Net - not the actual page). Now, Google wants that page, and they've filed an ICANN dispute to get it.

It has become such a problem that the United States passed its own legislation to address the issue. The preferred method for dealing with these disputes, though, has been an arbitration body known as ICANN, whose decisions are binding around the world (mostly because they essentially control the Domain Name System). The requirements for successfully disputing a registration under ICANN's rules are as follows:

    1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
    2. The registrant does not have any rights or legitimate interests in the domain name; and
    3. The registrant registered the domain name and is using it in "bad faith".

Google has the first two in the bag. Google has registered the trademark for Google Play, and that's obviously very likely to go undisputed (though the Google Play mark itself might not matter). As for the second, it's very unlikely the domain's owner would be able to show he has any legitimate interest in the Google Play mark - the website is an empty domain host placeholder with ads, and I doubt he (or she) would be able to shown any use of the mark outside the act of registering the domain.

The issue here is "bad faith." What is "bad faith" according to ICANN? That's open for debate. Normally, a trademark owner will have to go through the semi-rigorous process of proving not only that the registrant of the alleged "squatted" mark did so with the intent of abusing it (through one of a number of means), but that they have actually been using it for that abusive purpose.

But Google seemingly has a trump card up its sleeve, here - the company's name almost certainly qualifies for "famous mark" status:

The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark ....

15 U.S.C. Sec. 1125(c)

ICANN is not a part of the US judiciary system (though it works closely with US government bodies like IANA and the Dept. of Commerce), but it does recognize principles of US trademark law, and the "famous mark" provision has traditionally been one of them. This particular provision for famous marks has been internationally lauded as one of the best changes in the law for protecting trademarks with long and well-established reputations (think Coca-Cola, Gucci, XEROX, Rolls-Royce, Versace).

Basically, it means that no one can use that trademark in any way, shape, or form that doesn't qualify for fair use or specific comparative advertising exceptions.

For example, if you were to register CocaColaSwag.com, you would almost certainly be infringing on Coca-Cola's trademark, because you'd be using it either to sell merchandise without permission, use Coca-Cola's mark to draw traffic or advertising, or to squat on the domain hoping the mark owner would buy it. However, if you were to register CocaColaIsAwesome.com, you probably wouldn't, so long as you could show you were using it as a fan news site or some other qualifying fair use. Equally, CocaColaBlows.com would probably be OK, as well, so long as you weren't committing defamation (legally speaking, not colloquially).

So how does this relate to Google? To put it simply, famous mark protection gives you the ability to stop "dilution" of your trademark - which is to say, unauthorized use that might harm your business or make it seem as though you weren't being very protective of your brand.

Because Google itself is (very, very likely) a famous mark, that means derivations of that mark (if used in a way that doesn't qualify under an affirmative defense to infringement, like fair use or comparative advertising) cannot be used in trade without the owner's permission - period. Google doesn't even technically have to show that it ever intended to use Google Play in trade, it could simply assert that the existence of the domain GooglePlay.com gives the registrant profit through traffic (and is therefore being used "in commerce") because it uses the Google name, and/or that consumers going to GooglePlay.com might be discouraged when they discover it is not associated with Google. That's it.

Google has a particularly strong advantage because its trademark is "unique" (Google, as spelled, was not a word until Google invented it).

Given that ICANN proceedings are extremely plaintiff-friendly to start, there's little reason to think Google will have much difficulty in obtaining the domain. Once the proceeding occurs and a decision is reached, if Google wins, ICANN will issue an order that the domain be seized for the plaintiff, and acting in concert with the US Department of Commerce and IANA, engage the appropriate mechanisms to cause the domain name to be seized from the defendant. There have been some concerns raised about ICANN's seemingly arbitrary authority in this regard, though its arbitration system has proved much more efficient and significantly more cost-effective than trademark infringement litigation.

David Ruddock
David's phone is whatever is currently sitting on his desk. He is an avid writer, and enjoys playing devil's advocate in editorials, and reviewing the latest phones and gadgets. He also doesn't usually write such boring sentences.

  • Owen Finn

    So if Google decided to launch an anti-virus service for their phones and call it "Android Police"... ?

    • David Ruddock

      Android is not a famous mark, and we're a news-reporting site.

    • Metacore

      Nothing will happen(yay, more advertising!) because they are using it validly and legally. Read the article... Technically, it would be Google at fault for naming their service the same as a widely read website.

      If "Google Play" was somehow already coined legitimately, and GooglePlay.com used to host the site, before Google trademarked it, it would be their fault for not checking with other people using the name.

      Of course, they might call Google or Android a famous mark, but that would be up to ICANN to decide, and I doubt they would take away a legitimately used domain from anyone, or the decision wouldn't be left up to them.

      • https://plus.google.com/109398421611492546729/posts?hl=en William

        Single, Google, never existed before Google inc made it, any use of the Word "Google" in anyway is infringing on the famous mark "Google". If they named it Googol play than you might be right.

    • toshistation

      More likely to happen when THX-1138 comes true and there are actual police officers who are automata.

      In fact, I think Samsung has already built an automaton prison guard...

  • doug

    so does that mean someone an never register a domain that says 'google sucks' or something similar?

    • David Ruddock

      As long as it isn't legally defamatory (eg, spreading actual, provable lies about Google maliciously actually causing demonstrable harm to its reputation), you could, sure. And as long as it wasn't created in bad faith.

      • Rainer

        Or you just create a album called "Suck Fony" like Wheatus did ;)

        • Hal Motley

          I am pretty sure Microsoft would fund that album! XD

  • David

    I see they don't own googleplay.co.uk either. According to Nominet (UK domain registering body) it was registered by someone on the 3rd March, around the time Google Play was announced, so I guess they would have the "bad faith" one for that address as well.

  • A J

    How is this bad faith when this domain was registered in 2010?

    • http://www.AndroidPolice.com Artem Russakovskii

      Bad faith because they're squatting a domain with Google's name in it. David, care to add to this?

    • kenyu73

      Do you not know what squatting is? You think it's ok for a company or individual to buy hundreds of domain names for the only purpose of hopes that someday some big company will want that name and pay millions to purchase it? Its almost as bad as patent trolls.

      • shaggyskunk

        Almost as bad as patent trolls... It IS as bad!

        • matt

          Sounds like an genius "lazy" business model if you ask me. I hope Google has to squirm and pay up the ass to whomever owns the site.

  • Victor

    source link please...??????????

    • http://www.AndroidPolice.com Artem Russakovskii

      It's right there in the article.

  • spydie

    the word "google" was not invented by "Google". That word has been around all my life and probably longer. (at least 60 years). Ever read the comic strip "Barney Google"? or the song "Barney Google" ("with the goo, goo, googling eyes")??? The word Google was stolen from the artist of Barney Google, who probably holds all rights to it.

  • shaggyskunk

    Famous Marque? Owen, that was pretty funny.

  • hsigmond

    Quote from the domain owner:

    "For a second I thought about it and then wrote a mail to the google lawyers saying that I would peacefully hand it over."

    http://www.kullengren.com/2012/03/google-inc-vs-kristoffer-kullengren/

  • Nick Ashton-Hart

    ICANN is not an 'arbitration body.' Disputes like this are not handled by ICANN, but by the WIPO Arbitration Centre, which administers the policy which ICANN adopted to deal with these disputes.

  • http://androidgist.com Tim

    It is indeed somewhat unfair to grab a domain name from the previous owner. But as long as the domain was empty and unused, I suppose there isn't any damage done. Having registered the trademark Google will most certainly win.

  • SamuraiBigEd

    Name squatting should be illegal, period. After reading the ICANN regulations in 2000 it is not supposed to happen but they stop short of specifically prohibiting it.

  • Nick Coad

    I wish domain squatting in general was regulated, I'm sick of seeing perfectly good domains that are being used purely for advertising - no actual site or content at all. Really fucks over the web developers out there trying to get a new product off the ground, this is why everyone is making up new words for their product names these days "Flickr", "Twitter", "Tumblr", etc etc

  • http://SimranApps.com Simran

    The domain was registered in 2010, how could this be bad faith if the domain was created 2 years before Google Play came out? Hope Google doesn't win!

    • Phreqd

      If you would have read the comments, you'd have an answer. Go back and read.

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