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.

Comments

Eminent Domain for Private Businesses

[TFlan91]

They received 0 compensation? Really? Did they get their domain registration fees back at least?

Re:Eminent Domain for Private Businesses

[Anonymous Coward]

No. They are not corporations, they're just people. They should be happy they were allowed to continue to live after a stunt like that.

Re:Eminent Domain for Private Businesses

[Anonymous Coward]

I had something similar happen years back, essentially they throw their $500/hr attorneys at you because an hour or two of billable "cease and desist" orders is nothing to take what they want and its not worth it for you to fight.

The family should have taken the $5K.

Re:Eminent Domain for Private Businesses

[SlaveToTheGrind]

Did they get their domain registration fees back at least?

They got an offer far in excess of their domain registration fees.

They got greedy and threw the dice.

If a cybersquatter can just take a free roll at the big bucks and still get a guaranteed minimum if they lose, economically rational cybersquatters will do exactly that and the overall cybersquatting "tax" will go up.

Your feelings about that outcome will doubtless vary depending on your feelings about cybersquatting in general.

Re: Eminent Domain for Private Businesses

[UnknowingFool]

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.

Re: Eminent Domain for Private Businesses

[SlaveToTheGrind]

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.

Re:Eminent Domain for Private Businesses

[Archtech]

They got an offer far in excess of their domain registration fees.

Apparently you don't believe in capitalism or the free market, do you? In a free market, sellers charge what the market will bear. The price asked bears no relationship to what the product cost to make - just ask Apple.

So if you had bought Apple stock when it was first issued, you would now be content to accept the same price for it, would you?

Thought not.

Re:Eminent Domain for Private Businesses

[SlaveToTheGrind]

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.

Re: Eminent Domain for Private Businesses

[Archtech]

The timing in combination with the attempted shakedown suggests they registered in response to a leak.

My God! You mean they engaged in ***insider trading***? How frightful!

As we know, if any regular person takes advantage of inside information to make money, they are wicked criminals and must be sent to prison. It's only banks and other corporations that routinely make billions out of insider trading.

Re:Eminent Domain for Private Businesses

[SlaveToTheGrind]

Apparently you don't believe in capitalism or the free market, do you?

I think the more apt corollary here is "never try to extort someone for more than the cost to have you killed."

Re: Eminent Domain for Private Businesses

[sabri]

The WIPO panel

Except, that if you actually read it, it says:

Douglas M. Isenberg
Sole Panelist

And interestingly, this same "judge" also "prosecutes" at the same "court": http://world-intellectual-prop...

So yeah, sure this is independent. If I would that family, I'd sue in a regular court. WIPO is a farce.

Re: Eminent Domain for Private Businesses

[psm321]

If the government wants to use eminent domain, they can do that for their own purposes, but I don't think they can do it for corporate purposes.

True, according to the Constitution. Unfortunately, the Supreme Court believes otherwise.

so, then,...

[cellocgw]

Everyone involved is an asshole.
Domain sitters -- assholes.
Absurd compensation request -- assholes.
GBPackers going for a clearly non-football business -- assholes
Microsoft -- say no more.
Federal Trademark Law which allows someone to trademark a phrase already in use by others - assholes.

Re: so, then,...

[Anonymous Coward]

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.

Re: so, then,...

[olsmeister]

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.

Re: so, then,...

[UnknowingFool]

It doesn't matter. The problem with Green Bay's claim is that they should own the name "Titletown". Many sports teams can claim that name.

Re: so, then,...

[Comrade Ogilvy]

Thanks for the link. Yes, I agree. It sure looks like a template with no real details filled out. I have never seen such a generic looking and uninformative website by an actual business ever.

Re:so, then,...

[Archtech]

Why are the Domain "Sitters" A-holes? If I go out and buy 100 acres of land next to a farmer and don't use the land, that's my business and no one else's. If the farmer wants to expand his farm and doesn't want to pay me, that's theft.

Apparently you don't understand private property.

Ah, but he does understand ***business***. Money talks, and enough of it can buy you absolutely anything in the good ol' USA. Senators and Presidents included.

Seriously?

[argStyopa]

"Unfortunately for them, they failed to secure their venture's namesake domain name ahead of time."

Seriously, in 2018, how does this happen? What sort of a dumbshit in 2018 for any business (to say nothing of a tech-specific venture between two NATIONAL corporations) doesn't check if the domain name is available?

Whoever said "hey let's use this name" and didn't check should be fired yesterday.

Shakedown

[Anonymous Coward]

I actually RTFA (I know, I know), and it makes clear that the family agreed to the initial $5k purchase price, only to renege upon finding out that the purchasers have deep pockets. They're not the little guys doing business in good faith; they're trying to take advantage of happening to register a domain two weeks before MSFT/GBPC. Thatâ(TM)s not worth $750k.

They deserve nothing. Probably got the name from overhearing something at a coffee/cheese shop, too.

Re:Shakedown

[squiggleslash]

Probably got the name from overhearing something at a coffee/cheese shop, too.

No, it's the domain they'd been using for years for their own business.

I'm also entirely happy with the notion that they held out because the purchasers had deep pockets. I think that's entirely reasonable when you're talking about what's essentially a luxury item - get a domain name that matches your preferred branding. The proposed buyers could easily have backed out, said the proposed price was too high, and picked a different name. There was literally NOTHING about that domain name and branding that meant they had to use it or that it would have created massive barriers to what they wanted to do to choose a different one.

This is legally sanctioned thievery.

Re:Shakedown

[Hognoxious]

Your logic means someone can come take whatever from whoever as long as they are bigger. I'm not sure I'm down with that.

Why do you hate America?

Re:Shakedown

[Areyoukiddingme]

No, they owned the domain *SEVEN YEARS* before it was expropriated.

Liar.

Looks like squatters

[drew_kime]

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.

Re:Looks like squatters

[JaredOfEuropa]

The domain wasn’t worth more than $5000, they only thought it was because the Packers intended to use it.

And no, this won’t happen to any domain. It happens if you are obviously engaging in cybersquatting.

Greenbay isn't Titletown

[dwillden]

That would be Pittsburgh! 6 Super bowls. Conference championships aren't titles.

Re:Greenbay isn't Titletown

[Anonymous Coward]

Green Bay has 13 NFL titles. Pittsburgh has 6. There were titles before the Super Bowl ya know.

Re:Greenbay isn't Titletown

[Nidi62]

That would be Pittsburgh! 6 Super bowls.

Can't claim "titletown" when you can't even beat Cleveland.

Greedy Indeed

[Kludge]

They got an offer far in excess of their domain registration fees.
They got greedy and threw the dice.

Greedy indeed! They asked for 8 lifetime Packers season tickets! They may as well have asked for Bill Gate's liver.

My live.net experience

[jtara]

I have some experience with this.

I was the original registrant of live.net. Original registration cost: $0. It was registered by email. (I later had to start paying $35/year to maintain the registration.) Sadly, live.com had been taken a few months prior, but live.net would do, and I wrote a convincing argument for the use of the .net. (At the time, .net domains had to justify some use related to "network infrastructure".)

At the time, I was operating the San Diego Baycam as a hobby. It was hosted at a local ISP gratis and was just using a subdomain of the ISP. It ran on a spare Spark 5 that they had.

At some point, I was contacted by a nice guy named Howard. Howard had backed some early satellite broadcasting venture that didn't make it. Howard had lots of ideas, which tended to be a just bit too early for the times or technology. He now had an idea to create a network of outdoor cams world wide. We talked, we met, we shook hands.

I registered live.net under a gentleman's agreement on behalf of a business to-be-formed with Howard, and moved the Baycam to live.net. The gentleman's agreement was vague. We would do some exploration, and set up a company at some time in the future with some kind of equity split. In the mean time, I would continue to develop the feeder and server software I'd written for the Baycam. (I thought it pretty clever at the time - the server used a circular shared memory buffer, so that multiple viewers were just pulling frames from the buffer. The "video" was motion JPEG using now-obsolete "server push". But no thoughts of how it might scale beyond one server, LOL.)

I registered the domain myself, since the business hadn't been formed. Of course, this is where a LOT of domain registrations go bad! Become a ticking time-bomb, actually. My advice to anyone who needs to register a domain has always been: 1. Don't let anybody register a domain for you - do it yourself. 2. Registrar, DNS, and hosting have to be with separate companies.

The business-to-be never happened. Howard went on to do other things (vegas.com). The Baycam hummed along.

One day, I got an offer out of the blue to buy the domain live.net for $28,000. No idea where they got that figure from - you'd think a buyer would start lower than that... The buyer had a bunch of ski-related travel sites, all registered under disparate domain names. He said he wanted to integrate his ski cams and ski sites under a single domain. It seemed odd to me, because the name live.net had nothing to do with skiing, but whatever....

So, I contacted Howard and asked if he was interested in selling the domain, and splitting the profit. (I'm a nice guy, he's a nice guy...)

We did, escrowing it through escrow.com flawlessly. escrow.com disbursed equal checks to myself and Howard. So, so far, I'm a nice guy, Howard's a nice guy, escrow.com are nice guys.

The buyer put up his ski sites and ski cams, and as part of our agreement, I continued to operate the San Diego Baycam on a subdomain.

Fast forward a year, and I was checking the site. My browser was redirected to Microsoft. I sent off a panicked email to the buyer that his domain had somehow been "hijacked", and the hijacker was forwarding to Microsoft! The domain registration had been changed, and it had private registration.

The buyer emailed me back, no there was no hijacking! He's sold the domain to Microsoft. For how much, I know not.

Shortly thereafter, Microsoft announced their Live rebranding...

Had the buyer known a year in advance of the Live rebranding? I've often wondered. It was a year, and they actually had a network of ski sites and ski cams. It wasn't the best name for a network of ski sites and ski cams. I imagine he did not know. live.com was the primary domain for the rebranding, live.net was presumably "protective" to catch mis-types of TLD. The big question mark has always been the generosity of the unsolicited offer. (This was long enough ago that $28,000 was a lot for