Weather Underground, Incorporated v. Navigation Catalyst Systems, Incorporated et al

Filing 189

MOTION for Partial Summary Judgment by Weather Underground, Incorporated. (Attachments: # 1 Index of Exhibits, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C, # 5 Exhibit D, # 6 Exhibit E, # 7 Exhibit F, # 8 Exhibit G, # 9 Exhibit H, # 10 Exhibit I, # 11 Exhibit N, # 12 Exhibit P, # 13 Exhibit Q, # 14 Exhibit R, # 15 Exhibit Y, # 16 Exhibit AA - Part 1, # 17 Exhibit AA - Part 2, # 18 Exhibit BB, # 19 Exhibit CC, # 20 Exhibit EE, # 21 Exhibit GG, # 22 Exhibit HH, # 23 [PLACED UNDER SEAL PURSUANT TO 192 ] Exhibit II, # 24 Exhibit JJ, # 25 Exhibit KK, # 26 Exhibit LL - Part 1, # 27 Exhibit LL - Part 2, # 28 Exhibit MM, # 29 Exhibit NN) (Schaefer, Enrico) Modified on 8/2/2011 (DWor).

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Domain Name No-No's - October 2007, Miami, Florida
Craig:

Phil Craig here from Domains Into Dollars and I'm at the Miami Traffic Domain
Name Seminar and Domain Name Auction. The auction's getting set up. It's
going to happen here in an hour, but before we have the auction and we show
you some of the auction that's going to, take place, I've asked Dr. John Berryhill,
who's a very popular and effective attorney in the domain name industry, to
appear hear to talk a little bit about trademark law and the types of things that a
beginning domainer might get in trouble with and what to stay away from. So,
thanks for showing up here.

Berryhill:

Thank you. It's tough to be popular and effective at the same time. I'd say that
I'm effective for some people and maybe a little less popular with some others.

Craig:

Okay. Of course. So, and that's something that I want to talk about at the end is
if they're in trouble with some type of trademark issue and what you can do for
them.

Berryhill:

Surely.

Craig:

But let's talk a little bit about trademark typos, and I know that there's been some
reports that probably some of my viewers have seen that talk about getting a
name that is a misspelling of some popular brand and using and registering that
name and then making revenue off that parked page. Now, is that something
that my users might consider as a business or ;s that something that is going to
get them into trouble?

Berryhill:

If you use these businesses, getting in trouble, that would be fine, but that is
virtually the definition of cybersquatting and the classical case instance of that is
a man named John Zuckerini who is legendary for racking up court jUdgments for
registering domain names like electronicsboutique without the "u" and targeting
that toward electronic traffic. The law in the United States is that if you register a
domain name that is identical or confusingly similar to a trademark with the
specific bad faith intentions to make a profit of misdirected traffic to that
trademark, you can be held liable for up to $100,000 per domain name absent
any other damages. It doesn't if you made $5 or $2 or even if you're in a net loss
from that domain name. It's not a question of even what your profits were. The
law allows a trademark owner to bring a case to say, "I have, I don't even know
what my actual damages are, but Judge, I would like to, I would like you to award
me up to $100,000 in damages." Now the cases that have gone to decision are
cases where defendants haven't shown up and have registered large numbers of
egregiously bad domain names. So a judge in considering an action under this
law, the precedent that the has to look at are situations where, you know,
previous judges have maxed out and it's not a, it's.not something, and
particularly a lot of domainers are young people, it's not something that you can
blow off and say, "Well, you know, I don't even have, you know, $100 in the

bank. What do I care about $100,000 judgment?", because a federal court
judgment can be brought against you in another state. It can then be imported
into your state. It will go onto your credit record. It can follow you for the rest of
your life. If you've ever thought about buying a car someday, getting a car loan,
getting a mortgage, you know, there are a number of things in life that even if you
don't have $100,000 and consider yourself to be judgment proof, having that
judgment hanging over you can significantly influence the course of your life.
Craig:

I mean really, and so why bother? Why get involved? But let's say that before
they heard us, they've done it, and now they received that notice from somebody,
what should they do?

Berryhill:

Okay. Unfortunately, it can be very difficult for individual domain registrants to
sort out these, these types of threats that come in. In fact, there was a man in
Nevada that recently went to jail for pretending to be an attorney and for sending
emails out to domain registrants in order to, in order to ....

Craig:

Okay, so we're back. They turned the lights down on us, and so before they did
that, we were in the middle of talking about the man in Nevada that got into
trouble with sending out some notices.

Berryhill:

Right. And, you know, so it can be extremely difficult for a domain name
registrant to determine what is a valid, a valid claim or not, but that's not a reason
for ignoring them. Now, I should back up a moment and say that, you know,
prevention is certainly better than the cure. I think that if people had been, you
know, intentionally registering typographic variations of famous marks, you don't
need to wait until you're notified by Microsoft that they have, you know,
trademark rights in, in Halo 3 and in X-Box, and if you're, you know, selling
Hal03XBoxllloddingchips.com, that's the kind of thing that Microsoft's going to be
concerned about. Now, I'm sure, after I say that, someone's going to look up and
find out that Hal03XBoxmoddingchips.com is taken and used by somebody, and
what other people are doing, it was never a good excuse in school when you
were the only person singled out by the teacher, it also doesn't work at law to say
that, "Well, other people are doing this. Why can't I do it?" because the, if you
look at, if you look at cybersquatters as a herd and the trademark owners as the
cheetahs, you know, they're going to pounce on, on those particular ante~ope
that they appear particularly tasty to them at any given time. So, first, you know,
if one knows that one's traffic is coming primarily from trademark typos, you need
to get rid of those. In the event that you receive correspondence on a, on a
domain, and you never heard of this trademark or you're not sure of what, what
the claims are, there are a, a number of domain name attorneys, such as Art
Goldberger, Brett Lewis, Steve Lieberman, many of, and myself, many of whom
participate in domain forums who offer free consultations. I probably look at, at
any where, you know, from 10 to 30 cease and desist letters that I receive from
different people every day, and I can tell you without, you know, without
obligation if it's, you know, a clear drop dead, you know, yeah, absolutely, you're

going have to address this issue, you know, or let you know if it would require
some heavy lifting if you're in a grey area, you know, or if it's a, you know, clearly
a deficient claim in some sense, but these are, are judgments that you probably
shouldn't be making for yourself without a legal background. Some people will
look at, for example, the USPTO, US Patent and Trademark Office, has an online
trademark database, but many people don't realize that there are a lot of things
in that database that are not trademarks. They may be pending applications.
They may be refused applications. They may be expired trademark registrations,
and of course, the most thing that I, misconception that I see domainers having
when they're trying to find out whether something is or is not a trademark is that
it's not required for a trademark to be registered with the United States Patent
and Trademark Office. People say, "Well, what's the best trademark search
system?" I tell them, "The best trademark search system is Google." If
somebody says I have a trademark for x, y, or z and you put that term into
Google and you get three pages, the first three pages of results are either their
stuff or references to their stuff, then that's a good indication, a good initial
indication, absent some other considerations if it's descriptive or generic, but it's
a good indication that, that they may very well have an enforceable right in that
mark, and then clearly, if any of your readers or viewers are under the impression
that, you know, this is a game they want to play, it is a game that some people do
play for a long time, but once you get caught, once you get burnt, and once, you
know, once someone has latched on to you, it is becoming increasingly for
people who have gotten into cybersquatting situations to get their way out of it
simply by saying, "Oh, okay. Now that you've filed a lawsuit, you can have the
domain name." Trademark owners are particularly tired of having to bother and
pester and send repeated notices and then file a lawsuit only to have the guy
surrender, and increasingly they're looking for, you know, considerable amounts
of money to, you know, simply to let you out because if they sense that they can
get a default judgment for $100,000, why shouldn't they say, "Well, we'll let you
go for 10, 15, 20 thousand dollars or more.
Craig:

It's a serious game, and the thing about is, you don't need to play that game. But
if you do or if you have and something comes up for ya, John is available. You
gotta get some legal advice. You just can't ignore the claim. Hey, thanks, John.

Berryhill:

Sure thing.

Craig:

For coming here and talking to them. We appreciate you.