November 06, 2006

posted by Daniel J. Solove

I agree with Dan that domain-name hijacking is an insidious practice. Might there be a tort theory here--intentional interference with prospective economic advantage?

I would guess ACPA (even unregistered marks which are famous or distinctive are entitled to protection against bad faith registration with intent to profit)- or barring that Lanham Act (unfair competition claim). Trademark-based theories are the best bet.

This is a fairly common situation (there's even a term for it when the buyer redirects the page to porn--it's called "porn napping"). As I discuss briefly in my co-blogging paper, some blog names lack the requisite use in commerce for trademark protection, in which case there may be few statutory or common law rights against the napper. It's easy to say, after the fact, that domain name holders should never let go of domain names they still want, but that's the only sure way to control one's fate. Eric.

I didn't notice the lack of advertising - which obviously makes pretty tough any TM-based claims.

On a related note, it's odd how many law bloggers suffer similar fate -- check out althouse.com and howappealing.com. Those are two popular law blogs.

Interesting story. Dan, I think you're right about copyright claims against the content that's still up at the old site. A few comments have already mentioned trademark claims. To respond, an ACPA claim can indeed be made based on a common law TM. So the question of whether a blog name/address is a TM arises. That depends on whether the name has come to indicate a service for its readers. The service must be "in commerce," which may be satisfied by any commercial transactions. I noticed that Crescat Sententia has Amazon recommendations, which I assume translate into revenues. I know its preverse that blogs that have advertisements should better protected than ad-free blogs. Has Concurring Opinions a TM strategy?

Christine, I'm arguing in a forthcoming paper that the mere presence of ad links, without more, should not constitute a use in commerce, at least with respect to infringement. Otherwise, we get goofy cases like Bucci and PETA where the courts engage in a link-counting witchhunt against gripers and other providers of socially beneficial content. Eric.

I have updated the post with an email from the owner of the company that bought up the domain name. It's definitely worth reading.

That email contains a lot of silliness (like the nonsense about the content not being copyrighted) but the owner does have a point about registration. Every domain name registrar I've used has sent countless emails telling me to renew my domains when the expiration date approaches, and many have auto-renew functions where the domain automatically renews itself before it expires. Given that, I find it somewhat hard to sympathize with Will, unless there is some other information here that I'm missing.

If it's a copyright infringement problem, then the new domain name owner would seem to have an obligation to delete the entire backup of the blog.

I demand no sympathy, but for what it may be worth, our domain did automatically renew several years in a row before failing to renew this time, and we received zero emails about the problem.

In that case, I apologize. That must be horrible.

Though it also raises the question of whether the domain registrar should have any liability here, since it sounds like this whole thing was their fault (e.g. should it reimburse you for the costs of buying back the domain).

I'd be curious to know if the company is local. If so, I'm sure Will can find someone to take this on pro bono.

Copyright is a tough sell here. The content is probably not registered, precluding statutory damages. So you would have to register, then file suit in federal court, to ask for damages with respect to content that was freely provided in the first place. (You maybe able to show damages from bad affiliation - gambling, etc. and I'm not sure if copyright damages figures this in.) Either way, statutory damages is out, since any possible infringement started prior to registration. (Even infringement is tough to show.)

What a bummer!

Often registrars have policies where you can step in and stop a transfer-sort of a 30 day grace period:

http://www.mikeindustries.com/blog/archive/2005/03/how-to-snatch-an-expiring-domain

Jeez, there's a lot of issues here. Maybe I should use this in my Internet Law class.

A) How did the domain name registrant get the content? It's missing from the main CS page as well. I'm confused -- is there misappropriation of the hosting services here as well as registration of the domain name? That would raise additional issues that mere registration of the DN does not.

B) The content is copyrighted, despite what the new DN registrant thinks. It's fixed and probably contains enough original protectable expression. It's either a collective work or perhaps joint authored, but that's not going to help the infringer. It's probably not registered, which means Will Baude et al. can't get statutory damages, but they could go register it and then seek an injunction.

C) On the DN -- it's important to distinguish, I think, between (a) Hijacking a registration OUTSIDE of the registration renewal, e.g., what happened with sex.com; (b) grabbing a domain name in use when the owner forgets to renew; (c) grabbing a domain name not in use which the owner allows to lapse; and (d) registering a new, but confusingly similar, domain name. It looks like we have (b) here, and even if the current owner is correct and past registration and recent use gives no rights to current registration, the rules applicable to (d) still apply. I.e., if "Crescat Sententia" is a trademark, it's owners could sue under the ACPA, or arbitrate under the UDRP if it's registered. Under the ACPA, use in commerce by the infringer doesn't matter, although bona fide noncommercial use might; all that needs be shown is "bad faith intent to profit." But aside from such trademark issues, I think (b) just gives Will et al. a moral right to the DN, and (c) doesn't even give that.

Filing a U.S. court action is $350, and there may be several court appearances in even getting a default judgement; an arbitration runs around $1,500 in filing fees. Of course, good luck suing the new registrant. The registration was done by one of these new proxy services, illustrating in this example the harm of anonymity. Even if you manage to crack through the proxy service, it's likely a registrant of this sort provided false contact information. An alternative route would be to subpoena the (new) web host -- but that requires an emergency motion, which doesn't come cheap, even if we're just talking about pro bono time.

Naturally, none of this is legal advice that anyone can rely on.

As for a market solution--if it is indeed the case that this was automatically re-registered several times, and then suddenly the company in charge failed to do so, that is certainly a company to avoid!

Bruce's point in B) raises the issue of registering copyrights in blog--the key question is, would one have to copyright every post to get effective protection? or could someone register the copyright of "the whole blog"?

Bruce has a great point. I can understand the old content still being on the old domain if the Nameservers haven't been changed, but and why can't Will post on the old site? Will losing the domain should have no impact on Will's ability to add/remove content on the old site, since he owns the hosting account.

Also, it seems like crescatsententia.net had GoDaddy as its registrar -- presumably .org also used GoDaddy? If so, GoDaddy has a 45-60 day grace period in which GoDaddy holds on to the domain name for you after it expires, and doesn't allow others to register it unless you don't claim it during that grace period (and if a domain enters the grace period, you should be getting several emails from GoDaddy about it). So, for this new guy to get the domain, presumably the 45-60 day grace period already expired. Maybe the email address Will had on file with GoDaddy stopped working, so he never got all those emails about the domain nearing renewal / entering the grace period / expiring?

This whole thing just seems very odd, for a multitude of reasons. Regardless of what happened with the domain, I can't see how none of the CS co-bloggers can post on the old blog (unless the "new" blog is the old blog, and the domain hijacker used some "copy your old blog and upload it to your new blog" tool to recreate the old content on a blog that only he controls?).

We were able to keep posting at www.crescatsententia.org for over a month after the new owner bought it-- which is part of how none of us noticed that the domain had failed to renew, and we were blogging on somebody else's site.

A few days ago, we lost the ability to post at the site. I believe that the owner changed the nameservers and then posted an old cache of the content that had been there earlier. (At one point I posted several posts at dot-org explaining the problem, and our forthcoming move; those posts were removed by the owner of dot-org when he decided to put up the old cache.)

Anyway, Bruce Boyden is right that this is a case of (b).

If the domain had not been purchased it would have been deleted and all work lost.

Really, now, Mr. Domain Squatter?

If you lose your DNS name, you lose all your content? Because the disk drive erases itself automatically when you lose your name registration?

What a quaint notion - one wonders if he actually believes it.

(And the domain needs to show a return on our considerable investment.?

Considerable investment? Who does he think he's kidding?)

Bruce: I think it'd be great if, for US law purposes, a domain name "ownership" would be delcared invalid (and the name un-owned, with right of first refusal, so to speak, to whoever previously legitimately owned it) if the contact information was significantly invalid.

(By significantly invalid, I mean having a patently false phone number and/or name, such that contacting the owner was made impossible with any reasonable amount of effort.

Typographical errors or errors at the registry end shouldn't trigger such a thing, but simple lying ought to.

This would make contacting owners for purposes of abused computers easier, too, and I'm not sure there's any downside to any legitimate persons, though someone might come up with one.)

This comment seems to have been swallowed by the void, but here it is again:

I'm still confused. A website is a cell phone and the domain name is the phone number. Under this analogy, someone can change the registration of your cell phone number over to themselves when your account expires; which gives them the right to make the number point to their own phone and answer calls intended for you. But they don't thereby gain access to your old voice mails or intercept new calls that you in fact answer. In order to do THAT, they have to have access to your phone somehow -- i.e., the web host where the CS posts were posted. And to do that, they would have to do more than just register an expired domain name in their own account; they would have to figure out the user ID and password of your existing web host account. And THAT would lead to all sorts of unauthorized access claims.

Frank, I believe the answer to your question starts with the idea that blogs are "daily newsletters." You can register daily newsletters in groups using form G/DN. But Circular 62a on daily newsletters does not look blog-friendly; for one thing, it says the work must be a collective work made for hire, which I don't know that many blogs are. And then there's the question of what's an "issue" for purposes of the registration. Circular 62a says that each issue "must be an essentially all-new collective work or all-new issue that has not been published before." Each *post* is all-new, but each separate post is clearly not a "collective work" made for hire.

Also, newsletters must have limited audiences; if it's a general purpose news blog, it's a "newspaper," meaning you have to submit the deposit copies on *microfilm.*

Perhaps a different route to go down would be for each poster to separately register their contributions to a collective work.

Does anyone know if the Copyright Office has taken a position on how (or if) you can register a blog? Has anyone ever tried it?

Several folks have mentioned the trade mark issue. I went to the trouble some years ago of registering ProfessorBainbridge.com as a trademark (or was it a service mark, I forget). Since my domain name thus is a registered trade mark, why wouldn't I have a viable cause of action against the "hijacker"?

Tell the blog owner to review 18 U.S.C.1030, the Computer Fraud and Abuse Act. Subsection (a)(5). Then go look at subsection (g). Then see if he has any recoverable losses.

I don't know if this will appear because my comments are being held in a queue somewhere. I posted a long comment on registering a blog with the Copyright Office that has yet to show up.

But Steve, I think you would have a cause of action. I also agree with Jonst that the CFAA may apply if there's anything more than domain name renewal going on here, such as access to the web hosting account. I'm still a bit confused on the facts, but it sounds like that might have happened.

Ah, many thanks to Bruce for those clarifications! It does get into some very interesting issues. One would tend to think that a collective blog would permit each blogger to own copyright in their contributions. Perhaps an easy answer would be for each blogger to, on an annual basis, collect all of the posts she'd written, compile them as a book, and then register the book. In that case, even if someone copied just a post, it could still be infringemetn of the book. In fact, this might be the best solution from a fair use angle--for it would seem strange, say, to allow for an infringement action on just one post, but if bad actors post the whole blog (or a whole series of post) these can be sued as unauthorized derivative works (infringements of the registered "blog book").

Just to clarify--my point in the post above is that the inadvertent or innocent infringer of "just one post" is likely to be better treated under fair use law than the person who copied a whole series of posts.

Just a clarification of Bruce's post: the UDRP does not require a trademark registration. Common-law rights will more than suffice; there's no use in commerce requirement as there is (arguably) in trademark law -- and the communications from the new owner here, as well as the deceptive conduct with respect to letting the original owner post for over a month, then deleting the updated contact information when he tried to post it, suggest a high degree of bad faith, which is the other necessary element in the UDRP. (The registrant must also lack rights in the domain name.) Most UDRP panels will treat a suggestion that "maybe you [or your fans] could buy it back" as a bad-faith attempt to profit from the domain name. Many people think that UDRP proceedings are too trademark-owner-friendly, but they often go with what seems fair.

I forgot -- my favorite UDRP decision, SlashCity, involved not entirely dissimilar circumstances, though in that case bad faith diversion was found when the new owner replaced the women-oriented written erotica with male-oriented sexually explicit pictures. The relevant points: the original site wasn't profit-seeking and lacked a registered mark, but was well-known in its niche, and the new owner attempted to profit from that popularity.

http://www.arbforum.com/domains/decisions/98823.htm

Frank, that's exactly what I suggested in my missing comment -- that ideally blogs could be registered as a "daily newsletter," see Circular 62a, but it looks more convenient under existing procedures for each author to submit registrations for submissions to a collective work, Factsheet FL-104. I'd provide links but that seems to result in comments being blocked.

Rebecca, thanks for the correction. I had it in my head that registration was a requirement, and I think I saw that somewhere in a WIPO case or two (the ones I did involved registered marks so it was not an issue), but the rule now is fairly clear at least for WIPO panels. See, e.g.:

http://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-1052.html

I agree that CS's chances under the UDRP seem pretty good, assuming common law rights can be established, plus you don't have to go through the hassle of service or getting the registrar on notice of the suit and the outcome or appearing in court etc., but there's that $1,500 filing fee... NAF last time I checked was slightly cheaper but still 4 figures.

$1500 for filing an action under UDRP seems quite reasonable considering the terrible precedent this sets, and the value of more domain-owner-friendly precendents. Since many Crescat readers also have their own websites and domains, it doesn't seem like a stretch that the filing fees and such could be easily covered by reader contributions. I, for one, am in for $50 if Will sets up a Paypal link or other method of contribution for the purposes of defending his claims.

As mentioned, the US provides for common law trademarks - which means you don't need a Federal registration to establish rights to a name. Trademarks are granted by classification, so you might have a case against anyone using the domain for a site that overlaps your established usage - however, I don't think you have a legal option for recovering the domain given the circumstances you have posted (unless the new owner uses the domain for similar usage). You can research the madonna.com domain case for more detailed information.

Any original content has an automatic copyright, so the new owner was certainly guilty of infringement - but you should seek legal advice for an opinion on damages you might recover.

Your old domain is being offered for sale based on traffic, and more importantly, it's google page rank. Page rank is 100% determined by links to the site. If you can get the sites that link to the old domain to change the link to the .net, it will considerably devalue the worth of the .org and likely prevent a sale at anything close to what they are currently asking (as it will cause the page rank to drop considerably).

Your old domain is being offered for sale based on traffic, and more importantly, it's google page rank. Page rank is 100% determined by links to the site. If you can get the sites that link to the old domain to change the link to the .net, it will considerably devalue the worth of the .org and likely prevent a sale at anything close to what they are currently asking (as it will cause the page rank to drop considerably).

Right. Which is precisely why I am trying to get everybody to change their links.

Sorry,
Just noticed the pagerank comment. Google is currently updating pagerank. As a result any drop in google toolbar pr would not occur for around 3 months. By this time the domain will probably have been sold on or there will have been enough work carried out to maintain pr. Given the size of the domain this would not be a huge undertaking.
Also the .orgs placement in serps possibly will not be adversely affected for at least a month.

Although I'm not enthusiastic about porn sites taking the names of substantive blawgs, it seems well known that domain names expire, and it is pretty clear when you sign up for a name that it won't be yours in a year or two unless you renew it...