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Green Bay Packers and Microsoft Win Domain Name Fight After Family Sought Cash, Tickets and Tablets (geekwire.com)
theodp writes: Last fall, Microsoft and the Green Bay Packers announced a $10 million partnership to build TitletownTech, "an innovation center focused on developing and advancing scalable, technology-enabled ventures," which aims to bring an economic boost to the area near Lambeau Field (Microsoft President Brad Smith hails from the region). Unfortunately for them, they failed to secure their venture's namesake domain name ahead of time. GeekWire reports on the fate of a Wisconsin family that was sitting on the coveted titletowntech.com domain name and offered to give it up in exchange for $750,000 cash, 8 lifetime Packers season tickets, 2 parking passes, and 8 Microsoft Surface Pro tablets (with lifetime MS-Office licenses). The family said the admittedly-ridiculous demand wasn't meant to be taken seriously but was intended to send a message after they received a suspicious $5,000 buyout offer from an anonymous "service" that the Packers engaged to try to recover the fumbled domain. Not amused, Green Bay Packers, Inc. flexed its legal muscle, filing a domain dispute complaint with the World Intellectual Property Organization (WIPO), which ordered the disputed domain name to be transferred to the team shortly after the USPTO issued a Notice of Allowance to the NFL team for a trademark on TitletownTech, leaving the Wisconsin family with zilch. And so the old titletowntech.com ("TitleTown Tech Solutions") was just a bad memory by the time Microsoft returned to Green Bay last week to give an update on the joint venture, including the news that Microsoft will play a key role in the leadership team at TitletownTech, which will also house its TEALS program employees. [...] And as for the domain name, the NFL franchise with more titles than any other team ultimately did what it has done for years -- win.
According to the Wayback link, they put up a really basic template site last fall. When I say "basic template" I mean they didn't even update the button text from "Call to action". They saw the press release and jumped on it to try to get a payout. They should have taken the $5k and called it a win.
Nope, no sig
Except, they weren't domain squatters... it was a local, family-run PC repair and Small Business IT support company that had their legit domain stolen.
That would be Pittsburgh! 6 Super bowls. Conference championships aren't titles.
I'm too lazy to compose a creative sig.
Na, they registered the domain 2 weeks before Microsoft tried to, they claim they were thinking about starting a business but my guess is they had some inside information from the Packers organization about what was going on and tried to take advantage. There is no actual 'local, family-run PC repair and Small Business IT support company' that used that domain name.
How is it cyber squatting? If they registered "GreenBayPackersTech" they might have an argument but "Titletown" does not belong exclusive to Green Bay. Many different sports teams can claim that nickname.
The WIPO panel decision goes into this in great length. TL;DR: GBP Inc. filed a trademark registration for "TitletownTech" the day before they announced the expansion initiative. The domain name was created about a month before that. The timing in combination with the attempted shakedown suggests they registered in response to a leak.
As an initial matter, the Panel finds of no relevance Respondent's reference to other businesses that use "TITLETOWN" in their names, given that it is unclear from the record whether any of these businesses use the TITLETOWN Trademark as a trademark and whether any of these businesses have a license from Complainant to use the TITLETOWN Trademark. Further, even if some of these businesses use the TITLETOWN Trademark as a trademark without a license from Complainant to do so, third-party uses of a trademark are no defense to bad faith under the Policy. See, e.g., The Vanguard Group, Inc. v. John Zuccarini, WIPO Case No. D2002-0834; and Custom Bilt Metals v. Conquest Consulting, WIPO Case No. D2004-0023.
The Panel is struck by at least two important facts, each of which is an indicator of bad faith: First, the Disputed Domain Name was registered on September 18, 2017, only one month before Complainant announced the TitletownTech technology and innovation center and filed its application to register the TITLETOWNTECH Trademark. Although it is unclear whether Respondent had advance knowledge of this application, the timing is suspicious. See, e.g., Amazon.com, Inc., Amazon Technology, Inc. v. Paul James, WIPO Case No. D2014-1847 ("a close time correlation" between the registration date of disputed domain names and a related announcement by a complainant "cannot reasonably be considered to be coincidental or serendipitous); and Bancolombia S.A. v. Elpidia Finance Corporation, WIPO Case No. D2000-0545 ("[a]bsent 'miraculous coincidences', the Panel considers that the Respondent moved fast to register a domain name identical of confusingly similar to the service mark of the Complainant, after the Respondent acquired notice of the fact that the Complainant would be using the trade- and corporate name in which the Complainant had rights").
Second, Respondent's offer to sell the Disputed Domain Name to Complainant for USD 750,000 plus, among other things, eight lifetime Green Bay Packers box seats, is clearly "for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name," which is evidence of bad faith under paragraph 4(b)(i) of the Policy – a paragraph that includes no exception for an offer that a respondent, as here, later claims "was not meant as a serious counteroffer." Allowing a respondent to excuse such an offer in this manner would undermine the relevance of this paragraph of the Policy.
In any event, "[p]anels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith." WIPO Overview 3.0, section 3.1.4. Here, the Panel finds that the TITLETOWN Trademark is famous or widely known given Complainant's use of the trademark for more than 50 years and its protection by at least eight federal trademark registrations.
My last post (and the WIPO panel opinion, if you could bother yourself to read it), lays out the timeline. There's not a shred of evidence such a "business" ever existed beyond the shell website parked at the disputed domain name, and they registered it barely a month before the GBP announcement.
Maybe try swapping the invective for some intellectual curiosity next time.