Virtual City Vision is the owner of the domain NewportNews.com
Of course there is a city by the name of Newport News and its in Virginia.
There are also cities named Newport around the world, for which the domain Newport News would be relevant and fair use.
The problem is there is also a clothing chain with the same name, Newport News which also has a trademark on the term and has been using the hyphenated version for their domain Newport-News.com
The ruling ends a legal battle between the clothing store and Virtual City Vision that has lasted for more than a decade.
According to the court record, Newport News (the clothing company) filed a complaint against the domain holder in 2000.
However in 2000 the site NewportNews.com offered tourism-related information on the city of Newport News, Virgina.
In 2007, Newport News, the clothing chain, offered to buy the domain, but its offer was rejected.
The domain holder countered to the undisclosed offer, that he would sell the domain name for a ‘seven-figure’ amount, or, in the alternative, sell Newport News goods on its website for a commission”
Sometime thereafter, the domain holder changed the content of the site from tourism information on the city in Virgina to showing ads for women’s fashion and women’s apparel.
The clothing company filed suit in 2008.
In 2009 Newport News won summary judgment against the domain holder and the court also awarded the trademark holder $80,000 in statutory damages AND it’s reasonable attorney’s fees. ”
So the domain holder took a great Geo, changed the content of the site to compete against the trademark holder and lost the domain, $80K in damages and certain six figures in attorney’s for both itself and the trademark holder.
Looks like a good ruling by the court, but the actions of the domain holder brought on the whole problem and changed a winner into a loser.
Good cautionary tale for all.
“Stupid is as stupid does”.
He asked for it.
“city in Virgina”
Sounds like a body part.
There are 3 ” i ” in Virginia.
I like seeing retards lose hard, so this makes me smile.
Agree with Berkens- they turned a winner into a loser. Well bowled, Corky.
He shouldn’t have changed the content and I’m sure he would have sold it for a good amount.
Greed is not good…nope!
His namesake would have handled it a lot better.
By 2007/2008 a domain investor should have known better than allowing content on a webpage that is trademark infringing and bad faith use.
This proves —-> Common sense isn’t so common !
“Sometime thereafter…”
This is where he made a mistake.
PPC ads need to avoid trademark classes registered by someone else.
If he stuck with tourism, the clothing company had no claim against him. In time they probably would have net his price.
Very stupid.
He should have partnered with the clothing store.
In my early days of practicing law, I was co-counsel with the Cohen, Pontani firm, which represented the appellees. They are good lawyers that ordinarily handle generic pharma cases so they are usually focused on patent law. It’s interesting to see them representing a client in a trademark/domain name space.
What an absolute plonker. We have all see this happen far to many times before, the domain owner gets af generous offes from the trademark holder yet wants to extort them. serves him right lol.
James
“…or, in the alternative, sell Newport News goods on its website for a commission”
Words fail me.
@LS Morgan
“I like seeing retards lose hard, so this makes me smile. ”
If this really makes you smile, please get out of the business. Yes, the guy made an horrendous decision and paid dearly, but to piss on his wounds is despicable.
His “wounds”?
Like he’s some sort of “victim” here?
This jagoff made his own bed from start to finish. He tried to exploit a company and in turn, they ripped his face off. Real shame too, as this was probably something he could’ve won but his own awful decisions lost this for him, and further sullied your “industry” in the process.
So, nope… Laughing hard at this guy. Straight up, unapologetic Schadenfreude, no different than the burglar who gets stuck in the chimney and suffocates.
Oh, and PS. This is just your hyper-empathetic inner Democrat coming out.
Most people enjoy watching predatory assholes get their just desserts.
@LS Morgan
How do you know he’s a predatory asshole? Do you personally know the guy? I know nothing about you because you hide behind a non-linking moniker. But I do know one thing about you. You are not successful. No way. Because if you were successful you would be more compassionate and know that stupid mistakes can happen to anyone – you, me, anyone – and to gloat like a 6th grader at someone else’s failing is to wish the worst upon yourself – regardless of your or my political affiliation.
@david agree 100 percent
Morgan is a no body
When I introduce domaining to newbies their first natural reaction is think one must be very successfull to register a trademarked domain and resell it for huge profit to his holder.
Error!!!
And this post should be bookmarked as a good example:
– While you are not exploiting a generic domain or geo domain that is trademarked with content competing or promoting the same service/product as the holder you should be safe.
– Not only you can lose a domain based in a trademark but you may also have to pay damages and legal fees, domainers often ignore or forget this fact and sometimes this cost is really over the domain value itself.
“the same product or service”
That’s the important lesson here. And this is a very clear and easy to understand example.
Trademarks do not cover everything under the sun. And usually there are geographic limitations as well. There’s ample room for domainers to operate free from trademark claims if due care is taken.
Many domainers seem to ignore this. Maybe they just don’t care. And so there’s little demand on the parking companies from their customers to filter ads based on trademark classes.
It’s a shame, really.
eeek, a very costly mistake (decision)
… and a very weird name for a city or a fashion company 😉
Under the US 4th Circuit:
my non commercial Constitutional Free Speech use of a .com coupled with off color comparisons to a CyberSquatter did not fly.
This NewportNews.com guy in the same 4th Circuit made some really stupid decisions and assumptions as well.
I call it expensive “tuition” – hopefully he realizes life is not about winning – but mitigating his loses.
That means I no longer challenge the rules – I play by them – and there is a lot of money in it.
BTW: the 4th Circuit allows protected information coming from a mandatory out of court settlement attempt (Fed Rules 408) regarding a domain – to be admitted to the Court. Started with PETA.org
Agreed with David J Castello “stupid mistakes can happen to anyone” and Francois “…newbies their first natural reaction is think one must be very successfull to register a trademarked domain and resell it for huge profit to his holder. ”
We will therefore likely have more “stupid domainer awards” in the future, so I also agree with Michael H. Berkens: “Good cautionary tale for all.”
But I do know one thing about you. You are not successful. No way. Because if you were successful you would be more compassionate and know that stupid mistakes can happen to anyone – you, me, anyone – and to gloat like a 6th grader at someone else’s failing is to wish the worst upon yourself – regardless of your or my political affiliation.
—
LOL.
This is one of those 100% garbage statements that doesn’t warrant a serious response… but I will just say this much.
“Compassion” and “success” are only tied together in the fantasy land of intensely idealistic ninnies. I’m guessing you’re also a believer in “karma” too…
@David – well said!
@LS Morgan (whoever you are) – <>
WOW – are you really that ignorant, unaware, and compassionless?! Pretty unenlightened comments dude! I think that you may have a few more cycles of misery to live through before you figure some things out!
Be careful crossing the street my friend – the sound that you hear approaching may just be the karma bus about to run you over (again!). Better luck on the re-do!
Bob, I realize you may still be in recovery from having a merry 4.20, but please, spare me the California flakeball bullshit and save it for your next Nader meetup. If you want to see ignorance and a state of unawareness, how this cat handled NewportNews.com would be the little picture in the dictionary.
As someone who’s screwed up spectacularly in my own life on a few different occasions and expected no compassion from anyone nor any weeping on my behalf, I’ll reiterate that I have no sympathy whatsoever for this guy. This is 100% a result of his own terrible (and predatory) decisions. He tried to screw and in turn, got screwed. If anything, this is precisely the sort of thing that makes me and everyone else on earth very sympathetic towards mark holders when they encounter domainers who pull stunts like this.
I realize the geo .com domaining community is small- so here we have David Castillo and now, some dude with a bunch of nice Southern CA geo .com’s singing Kum Bye Ya- but pick and choose who you rise to defend more wisely. This guy is not a good choice to get behind.
If you believe in Karma, this would probably be an example of it.
This guy screwed up huge, but in my opinion, he deserves at least a fair shake from at least the domain community, which continues to plague itself with a lack of cohesion and support. Let us not forget the fact that he DID have the name way back before 2000, which makes him a pioneer, relative to most of us.
If we were more organized and supportive as a whole, we would have embraced this gentleman as a fellow investor and colleague, and would have tried to educate him on our own mistakes, how he can avoid them, etc.
As it is, while I’ve had the extraordinary pleasure of knowing and calling friends many incredible domainers, the pure anonymous nature of the Internet-specific domain world lends itself to characters who jump on the opportunity to partake in blog-comment-mudslinging, thinking it inconsequential. The reality is that every comment on every blog represents me, you, and everyone else invested into this industry.
I’m personally involved in multiple industries, and I’ve said it before and I’ll say it again and again and again and again: until we domainers get our act together, the true value of domains will never be realized. We have to stand tall, support one another, and take collective steps toward educating one another and the population at large, or we are going fall prey to the general misconceptions about what we do, will be ostracized by legitimate business communities, and will become a footnote in the history of the Internet boom.
Chad Wright was doing nothing different than many others he still appears to be in court with Hayward.com, California – a town not much smaller than Newport News – any one of us could be next !!!
We need to remember a cybersquatter is someone who has a domain that someone else with a lot of money wants to usurp.
– and it is obvious with all the new laws / “procedures” being proposed that a “cybersquatter” is much more broadly encompasing today than it was when it was first “invented?.
[..]Sometime thereafter, the domain holder changed the content of the site from tourism information on the city in Virginia to showing ads for women’s fashion and women’s apparel. [..]
BINGO! sounds like cricket.com 2.0, and another contender for the “Bob Parsons most stupid CEO of the Year Award~” 🙂
It is a most unfortunate situation and makes me think about reassessing some of my parking names categories a good lesson for all
Handing out the Stupid Domainer of the Year award in April is stupid, domainer. Doing so not only overestimates the intelligence and integrity of domainers but more importantly it prevents you from crowning some other slimeball idiot domainer as SDotY year from now thru December and there is little doubt that some moronic domainer will do something even stupider and slimier than the guy you have annointed here.
It is refreshing to see all the mother Teressa types around here willing to forgive and forget the indescretions perpetrated by this clown. Solidarity domainers! Now if you can just convince the world that domainers are really great people and trade mark holders to turn the other cheek the world would right.
LS Morgan is spot on, you guys live in lala land. It probably wont be too long until one of your genius followers comments on how the guy was abused by an over reaching corporate bully.
The title of the post deserves recognition for being one of the stupidest blog post titles of the year; to date.
@David Castello well said. The only thing worse than a rubber necker at an accident is the guy who takes joy in someone else’s misfortune even if it was self induced.
There are plenty of dumb things that happen in the world. I have found that using other people’s misfortune/dumb decisions as lessons and education to be helpful. I however don’t get a big smile from it.
@LS Morgan deriving joy from misfortune of others? I am fine with being content with justice. I am happy when justice prevails. But you come across sadistic in your comments like a malignant narcissist who is enjoying a Roman holiday. You don’t come across as a champion of justice more like a lover of blood.
Luke
As long as there are successful winners in this world, there will be losers fighting losing battles and losing. Winners win, Losers lose.
@Luke Webster [..] There are plenty of dumb things that happen in the world. I have found that using other people’s misfortune/dumb decisions as lessons and education to be helpful. I however don’t get a big smile from it. [..]
You definitely hit the nail on the head here. UDRP conflicts have been the norm since the onset of domain investing/development, (Avg.com was a classic example – http://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-1381.html).
Domain investors and web developers need to educate themselves and those they employ to be vigilant, exercising foresight about the content they display, third party plugins – (ads etc) and how to manage these in such away as not to conflict with competitors seeking the same namespace.
Preparing for a potential UDRP and methods on how to communicate with a complainant to resolve such issues should be in every domain investors and web developers training manual, synonymous with link building, web programming, seo, sem, etc.. 🙂
“As long as there are successful winners in this world, there will be losers fighting losing battles and losing. Winners win, Losers lose.”
Is that a quote from Goldman Sachs or Bernie Mad(e)off …or perhaps Wachovia/Wells Fargo Bank after getting off with laundering $ 378.4 BILLION in drug money ? 😉
Any intentional harm to another business is frounded upon by courts. Plus the clothing people had a trademark. He picked the wrong fight. He could have sold for good money or stayed on course with local geo.
It is common knowledge that if you are selling competitor products on a trademark name that is also a domain name you will loose your domain name to the trademark owner. You might as well hand it over for free.
I have to agree. “Stupid is as stupid does.”
Looking in the rear view mirror we are all geniuses – god knows I have made terrible domain use decisions and terrible domain reservation “binge” mistakes over the last 12+ years – where I thought I was so “utopian” smart – no different than this NewportNews.com guy.
Whether its David Castello’s polished delivery or LS’s Blue Collar delivery – if it saves one moron from going down the wrong path – that is good in my book.
There are plenty of ways to really fuck up “real serious” in this business outside of the court room – Warren Buffet once said – “You only realize who is swimming naked when the tide goes out”
For example – I am waiting for the “tide to go out” and realize how much has been lost in “.co” Stroke .- life savings, maxed Credit Cards, refinancing homes into foreclosure, etc…
@LS Morgan
You are 100% right on everything except on the delivery.
There is no sympathy for someone that harms the domain industry as a whole by showing the general public that domainers are bad faith users. He shouldn’t have changed the content from travel to clothing. If any of us could have helped is advise this guy not to use clothing content on his website. Would anyone still have sympathy for him if knowingly he changed to clothing content anyway?
Bottom line: These kind of lawsuits can be used against domainers in the future. For this reason i have no sympathy or regret that he lost the domain. He should have known better!
I just want to know if this guy made his own presumption thinking it was ok to sell similar products of his competitor who owns the trademark to his term OR if he got bad advice from a lawyer, or worse, a stupid domainer (consultant) who thinks they know all.
“You only realize who is swimming naked when the tide goes out”
I for one hope they are all fit women.
see footnote 3, page 4 of the pdf
It looks like he was using a parking company at least once during the period between 2004 and 2007. That’s just a guess.
Unfortunately, althought domainers continue to lose domains in UDRP and ACPA because of them, parking companies still cannot be expected to exclude advertisements for a certain class of goods that could trigger trademark infringement liability for their customers, e.g. women’s clothing in this case.
In the footnote it sounds like this domainer infringed on two occassions during the 2004-2007 period. The first was by using an “adverising company” (probably a parking company) that without his knowledge fed the site ads for Spiegal. The second, circa 2007, was by intentionally placing women’s clothing ads on the page to assess how much targeted traffic toward those goods he had. In all likelihood, he was using a parking company.
Let’s assume hypothetically that neither infringement was intentional. As a customer, a domainer cannot tell the parking company to screen out ads for certain categories of products or services, he can only indicate that certain categories of ads should be included. And therein lies a potential risk.
Domainers do not seem to care about this; they do not put pressure on parking companies for exclusionary filtering. The parking companies just do the minimum that is expected of them, and so there remains a potential trap for the unwary.
The trademark lawyer has someone at her firm monitor the website, waiting for an ad to appear for a product in the trademark class his client has registered, e.g., clothing. Sooner or later, because of the way the parking companies have implemented their systems, there will be one.
The firm prints out a snapshot of the webpage showing the ad for women’s clothing and drafts the complaint. More often than not, it’s an easy win for the trademark holder. And no court is going to sympathise with a domainer because the parking company fed his site the wrong ads.
Note that the trademark holder here did try the UDRP first before resorting to the ACPA.
Parking companies do not attempt to help domainers in avoiding inadvertent trademark infringement. And domainers seem satisfied with that.
(( Parking companies do not attempt to help domainers in avoiding inadvertent trademark infringement. And domainers seem satisfied with that. ))
Wow. … OH2 (( see footnote 3, page 4 of the pdf )) …. Your entire post was so spot on, but your final sentence is the real damning — and true — statement.
Let me use another poster’s comment as total contrast to OH2’s — which completely ratifies OH2’s premise:
====================================
David …. 2011 April 21
This guy screwed up huge, but in my opinion, he deserves at least a fair shake from at least the domain community, which continues to plague itself with a lack of cohesion and support. …… If we were more organized and supportive as a whole, we would have embraced this gentleman as a fellow investor and colleague, and would have tried to educate him on our own mistakes, how he can avoid them, etc.
As it is, while I’ve had the extraordinary pleasure of knowing and calling friends many incredible domainers,…
… I’ve said it before and I’ll say it again and again and again and again: until we domainers get our act together, the true value of domains will never be realized. We have to stand tall, support one another, and take collective steps toward educating one another and the population at large, or we are going fall prey to the general misconceptions about what we do, will be ostracized by legitimate business communities, and will become a footnote in the history of the Internet boom.
===================================
“CODE BLUE to David, CODE BLUE to David — Fatality in parking lot”
So, if you’re into education and reputation, so you can make a killing, then I am sure you will be first to address OH2’s excellent analysis of how this guy could have, initially, fallen victim to sloppy reliance upon assumptions that a parking service is going to manage the issue properly re non-competition of content that would create brand confusion — i.e. steer clear of women’s clothing ads.
Maybe, for those wanting to give this guy the benefit of the doubt — that we all slip up — he took his eye off the ball, parked the domain for a while, for whatever reason, maybe as an experiment, maybe the local destination site was stale and required fresh content he couldn’t afford to produce, who knows.
OH2 is explicitly challenging that you — and many others — don’t give shit enough about the business practices of parking companies to actually use that giant COLLECTIVE POWER you speak of to actually FORCE THEM to adopt new business practices that ensure that trademark violation protections become required operational standards in how they serve up ads.
He (or she) is betting you won’t do shit about it. Nor will anyone here. But you will simply TAKE IT, and leave it as it is, and just shrug your shoulders as “eh, not something we have control over”.
So, you gonna step up to the plate and act in the manner you suggest: ” until we domainers get our act together” “more organized and supportive as a whole” … and “educate him on our own mistakes, how he can avoid them, etc”.. and “take collective steps toward educating one another”? If so, what do you see as STEP ONE in addressing how to realign the way the parking services are run… not just with a code of ethics, but with TEETH, as in — a complete boycott of their products collectively — until they immediately institute practices that enable domain owners to specify ads and ad categories they specifically seek to exclude, and they must be held legally liable for willfully violating such stated exclusions.
… Nice post, H2…
“As a customer, a domainer cannot tell the parking company to screen out ads for certain categories of products or services, he can only indicate that certain categories of ads should be included. And therein lies a potential risk.”
“Parking companies do not attempt to help domainers in avoiding inadvertent trademark infringement. And domainers seem satisfied with that.”
Totally agree, we have talked about this problem before but nothing has been done to fix it, if the parking companies gave us the “choice” to block certain ads then we could at least have some way to help protect ourselves when we use their service.
Considering how much some people have paid for their domains in the aftermarket I think we deserve better.
I don’t understand why everyone thinks we need a way to block certain advertisements? If advertiser specifically pays money for keywords ex. “newport news” and trademarked ads show up on the newportnews.com website then the problem should be between the advertiser and trademark holder. The same ads show if searched on the same search engine serving the ads. If trademark holder has a problem with those keywords and type of ads then he should go after the publisher and explain that it’s trademark infringement and remove the ads. I think the reason why they don’t do that is because trademark holders simply use this to reverse hijack the domain. It makes a good case.
@Phil – When you say “everyone” do you mean that as a figure of speech? Because it seems almost no one wants this capability enough to ask for it. If when you say “publisher” you mean who I think you mean, then I agree with your perspective. I think you are just viewing the problem from another level. But I also recognise that the publisher in question, if we mean the same one, has shown on multiple occassions over the years its immense power in the market and in the courts as well. It has proven it can where necessary carve out exceptions for itself (and thereby other similar publishers) in the trademark law, not to mention in the copyright law. Given that sort of power, the publisher is more likely to influence what trademark holders do than vice versa. It has such strong ties to the US economy, one might even argue it has the US government on its side. This publisher is truly a formidable opponent and it may be more sensible to just do business with them rather than oppose them. Is it unreasonable to assume that in dealing with infringement, trademark holders are going to pursue the options that are the least expensive and most likely to succeed? Those considerations may preclude the publisher as a potential defendant. But again, I think you are absolutely correct in your analysis. I’m sure many people see the same thing, including trademark holders. The problem indeed starts at the top. But that’s not where it’s going to successfully addressed if anyone is to be successful in addressing it.
If blocking certain types of ads can keep a domainer out of UDRP or court proceedings, is it worth it?
One must be very careful when dealing with Trademarked Domain Names and even while doing landing pages for the same…
One must be very careful when dealing with Trademarked Domain Names and even while creating landing pages for the same…
Thanks MHB for the cautionary tale.
As for LS Morgan, I’m getting a little sick and tired of so-called Conservatives, Teabaggers, Libertarians, Objectivists, Rationalists, whatever they call themselves, injecting political diatribe into every discussion lately. They are like rude children who just learned how to swear. And they force rational discussions into namecalling and then they whine. It gets tiring. This is the third serious forum I’ve been to today where this has happened. As far as I can tell, these are sociopaths who are full of themselves and not interested in anything except proving how smart and right they are.
And from LS Morgan’s comments, he obviously is a sociopath, and should probably seek professional help. He knows why. Sadly I was agreeing with his opinion up to the point he decided to act better than the rest of us and just mouth off. Please. Get a grip. Go to some political blog to score your mean little political points. You don’t know me, you don’t know the others here, stop judging and deciding what our political views are based on your own ignorance and stupidity.
This article is about serious stuff. My ass may be somewhere close to that sling, I need to read and evaluate with the other cool heads here.
As for the trademark issues mentioned by some of the later comments: I’ve been dealing with trademark issues for almost 20 years. In this NewportNews case, yes, it’s cut and dried and as a Monday morning quarterback you can see how the domainer screwed up. But in a lot of cases, trademark stuff is murky and hazy and you can get blindsided. I’ve been in situations where I was able to tell the other party (politely), hey, law’s on my side, you got nothin’. In other situations I’ve had to back down and eat crow and thank them. If it’s serious, I seek out the advice of a good intellectual property lawyer, before problems happen. Preferably one who does good trademark work as well as patents. They can usually tell you when you’re about to step in a cow pie, but you have to use your own business sense and common sense for the finer details. Remember, the lawyer doesn’t know your business, doesn’t know the market.
As additional caveat, I’m not a lawyer, remember that IP (intellectual property) lawyers are among the most expensive out there, do your homework, try to pick someone you trust and get along with, ask about alternatives, insist on simple contracts written in simple language, always double-check their work, etc etc, I could probably write a book about the ups and downs of tech people dealing with lawyers. I realize this entire paragraph probably makes me seem very naive, but I include all this just in case you’re like me and you just wanna do business and domains. End of preach.
I also like the comments and questions here by Brian Wick, Attila, and Phil. Not everybody plays fair, not everybody knows what the hell they’re doing. Thanks to the others for their insights, especially about parking companies.
Well, now I feel like a jerk and feel an apology of sorts is in order. I looked up LS Morgan’s comments on other topics here and he’s quite good in what he says, I even bookmarked a few of those pages for future reference. We all have our off days I guess – comparing his/her comments on this page to elsewhere, I’d put it down to a Jekyll/Hyde or evil twin or unbalanced meds hypothesis. Or perhaps saddle sores, those can make one cranky. My crankiness came from visiting 3 totally different serious websites where some douche blathered on about scoring political points totally unrelated to the serious business at hand. In one case, the troll was so obnoxious and unrelenting, the site took down all the comments, some of which were quite good, which only added to my irritation. So my apologies to LS Morgan, who apparently on occasion is worth listening to.
If they sued in 2000, it was probably WIPO, so their decision made him feel he could do what he wanted probably. But selling the stuff the TM owner did, no brainer, dumb and dumber.
None of you have any a tiny clue what the real case was about. Get your hands on the depositions or some of the case files and perhaps you’ll have more insight
It’s easy to jump to conclusions without the real facts…
These are the people that own Newport News Apparel: http://www.forbes.com/forbes/2011/0509/features-lynn-tilton-billionaires-wealth-watch-femme-fatale_3.html
It appears as if what InTheKnow is saying is that he thinks the Courts determined Newport News had gained strong secondary meaning in NEWPORTNEWS even if NewportNews.com had been used geographically – and not provided competing products to the clothing company. In short he was doomed to lose.
Probably something that may have not been so “eveuident” had he kept using it geographically – basically – a convienent opinion for those courts – which essentially is what this whole thread addresses – i.e. he “layed out on a silver platter”