US Judge finds cause of action for contributory cyber squatting

Most of you have accidentally misspelled a website name and journeyed into a forest of links, pop-up ads and webpages offering (admittedly complementary) pornography and Viagra, and would be fully aware of the existence of cyber squatting/typo squatting. 

 Until fairly recently, the only option for companies and individuals wishing to pursue domain name disputes with those who squat on iterations of their trade marks was via the dispute resolution processes set up for the various top level domains (such as the Uniform Domain Name Dispute Resolution Policy).  More recently, however, some jurisdictions have enacted specific anti-cyber squatting laws with the aim of discouraging cyber squatting/typo squatting behaviour.  One such jurisdiction is the United States where the Anti-Cyber squatting Consumer Protection Act (“ACPA”) has been enacted.

 In a recent US District Court decision in Seattle, US judge Ricardo Martinez recognised a new cause of action that may arise in such cases; the cause of action of contributory cyber squatting.  In this case, it was alleged that the defendants were not only registering domain names that incorporated the plaintiff (Microsoft)’s trade marks, but were also:

(1) providing instructions to misleadingly use Microsoft’s trade marks to increase website traffic; and

(2) selling a product that contained software to allow buyers to easily create websites incorporating Microsoft marks. 

 Judge Martinez noted that in his opinion, contributory liability for trade mark infringement under US trade mark law is found when a defendant:

(1) intentionally induces another to infringe a trademark; or

(2) continues to supply a product knowing that the recipient will ? use the product to engage in trademark infringement.

 Justice Martinez found that the defendant’s alleged conduct amounted to intentional inducement .  In making this finding, he considered it to be relevant that a finding of contributory liability would fall squarely within the ACPA’s goal of imposing liability on those who seek to profit in bad faith from registering, trafficking, or using domain names that contain identical or confusingly similar marks to a registered trade mark.  It will be interesting to see if this decision is followed by other courts as it could potentially be used against others (pop-up advertisers or domain name registrars) who induce or benefit from cyber squatting.

 The District Court’s decision can be found here.


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