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 (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, 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, 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, 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 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 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.