December 2011 / January 2012 Issue
Weather Underground, Inc. v. Navigation Catalyst Sys., Inc.,
100 U.S.P.Q.2d 1778 (E.D. Mich. Nov. 9, 2011)
Defendants registered domain names in bulk and made money from pay-per-click advertising on the corresponding websites. Plaintiff alleged that defendants engaged in cybersquatting by registering over 200 domain names containing misspellings of plaintiff’s trademarks. The court denied plaintiff’s motion for summary judgment because plaintiff could not show as a matter of law that defendants had a bad-faith intent to profit from plaintiff’s trademarks.
Plaintiff Weather Underground, Inc. (“WUI”) operated a weather website under the mark WEATHER UNDERGROUND and other marks. Defendants Navigation Catalyst Systems, Inc., Connexus Corp., and Firstlook, Inc. (collectively “Defendants”) registered domain names in bulk and made money from posting pay-per-click advertising links on websites associated with these domains. Plaintiff alleged that Defendants violated the Anticybersquatting Consumer Protection Act (“ACPA”) by registering 288 domain names consisting of common misspellings of WUI’s trademarks, i.e., typosquatting. WUI filed a UDRP complaint against forty-one of these domain names, and the UDRP panel held for WUI, finding that Defendants “intentionally us[ed] the disputed domain names for commercial gain through a likelihood of confusion” and registered and used the disputed domain names in bad faith. WUI then filed this lawsuit and the parties cross-moved for summary judgment as to whether WUI could, as a matter of law, show that Defendant’s had a bad-faith intent to profit from WUI’s marks.
Regarding WUI’s motion for summary judgment, WUI failed to show as a matter of law that all of Defendants’ disputed domain names were confusingly similar to WUI’s marks. Plaintiff asked the court to defer the analysis of whether the marks were confusingly similar until after the statutory damages phase of the case. The court declined this request and held that the confusing similarity analysis was an essential element to proving the cybersquatting claim.
WUI also failed to show as a matter of law Defendants’ bad-faith intent to profit from WUI’s marks. Defendants claimed they did not know about WUI’s marks before registering the domain names, but WUI argued that Defendants should have known and acted “willfully blind” with respect to WUI’s ownership of the WEATHER UNDERGROUND marks. The court disagreed, holding that a “willful blindness” standard should not be applied to the ACPA’s bad-faith requirement. It noted that WUI’s “argument has no support in case law” and that it appeared “no court has applied a willful blindness standard to a cybersquatting case.”
WUI also claimed that Defendants attempted to sell the domain name by including an “inquiry option” on their website that Defendants used to “solicit the sale of their sites.” The court, however, held that a question of fact existed, especially because Defendants included a disclaimer that “the existence of this [inquiry option] form does not constitute an offer to sell this domain.” WUI also attempted to show bad faith by pointing to Defendants’ registration of multiple domain names containing other third-party trademarks and their involvement in other cybersquatting litigation. The court, however, held that while this was “the strongest evidence” of bad faith presented by WUI and created an inference of bad faith, it could not “be assessed in a vacuum” and that other unspecified evidence “plays into the analysis.”
The court found no evidence of Defendants’ “good faith” and thus denied Defendants’ motion for summary judgment. Even though Defendants testified that they did not know about WUI’s mark before the UDRP proceeding, the court held that such evidence did not show an absence of bad faith as a matter of law. Instead, it simply created a question of fact as to the credibility of Defendants’ testimony.
This decision is of interest because of WUI’s reliance on a “willful blindness” standard to attempt to establish WUI’s bad-faith intent. This argument ultimately has a better chance of success against a party that, like the Defendants here, registers massive quantities of domain names for profit, especially if the trademark owner has previously put the registrant on notice of its trademark rights.