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Green Bay Packers and Microsoft Win Domain Name Fight After Family Sought Cash, Tickets and Tablets (geekwire.com) 196

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.
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Green Bay Packers and Microsoft Win Domain Name Fight After Family Sought Cash, Tickets and Tablets

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  • by TFlan91 ( 2615727 ) on Friday September 28, 2018 @09:50AM (#57389746)

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

    • by Anonymous Coward on Friday September 28, 2018 @09:55AM (#57389768)
      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: (Score:2, Interesting)

      by 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: (Score:2, Insightful)

      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.

      • Greedy Indeed (Score:5, Insightful)

        by Kludge ( 13653 ) on Friday September 28, 2018 @10:21AM (#57389902)

        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.

        • They asked for 8 lifetime Packers season tickets!

          I think you may have forgotten to mention the $750k in cash, among other things.

          • by jbengt ( 874751 )
            I don't think you realize how valuable a lifetime season ticket to the Packers home games is.
      • 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.
        • by SlaveToTheGrind ( 546262 ) on Friday September 28, 2018 @11:19AM (#57390152)

          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.

          • 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.

            • There is a difference though between "insider trading," as happens in the stock market, and an "inside job" which is closer to this case.

          • by sabri ( 584428 ) on Friday September 28, 2018 @11:35AM (#57390262)

            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... [world-inte...zation.com]

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

            • I take it the ad hominem is in lieu of any specific disagreements with the facts and opinions laid out in the decision.

            • They would not make it to a trial, or even to discovery. They would only make it to a show cause hearing, where the judge would decide to punish their lawyer for filing the case, or just toss it out.

              You have to have cause to sue somebody. If they want to take to take this to a "real" court, they need a real claim that they think they're the trademark holder. They don't have that. All they have is an extortionate demand based on trademarks they cannot and have not disputed.

              This would be a different situation

            • Comment removed based on user account deletion
              • by TRRosen ( 720617 )

                All of them. WIPO is a private organization no different that any business. Their rulings are just their decision, they have no standing in a court of law.

                • Comment removed based on user account deletion
                  • by TRRosen ( 720617 )

                    WIPO isn't a treaty. its simply organized under one. and all the parties are under US law. Courts can and have reversed WIPO decisions.

                • Comment removed based on user account deletion
                  • by TRRosen ( 720617 )

                    The court doesn't need to concern itself with WIPO. Both parties are under US jurisdiction. a court can force the packers to return the domain or to compensate the owners.

                    A treaty in and of itself does not automatically create domestic law. In fact many "treaties" have no more authority than a gentleman's agreement. The Geneva Convention is a UN treaty and the courts have ruled it does not overrule state law.

                    The UN is not a government nor does it operate under any individual governmental authority. it exist

          • by dgatwood ( 11270 )

            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."

            Th

        • 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.

          If I have a Trademark, and you own the domain, and you don't turn it over to me, you're cybersquatting. That is the system in place.

          If you weren't cybersquatting, your use of the domain, by definition, would preempt my trademark application. If in fact I was using the name in trade before you, then I am the one with the claim to the name. That is true if you accidentally had the same name for a non-trade use before I engaged in trade, or if, as in this case, you heard about me doing trade under the name and

      • by Archtech ( 159117 ) on Friday September 28, 2018 @11:24AM (#57390180)

        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.

        • 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."

      • by llamalad ( 12917 )

        Wait, what?

        Help me understand this.

        So if I want a domain name for a business (I do) and that domain is currently owned by a squatter (it is) and that squatter wants $2k for it (he does)...

        I can just register trademark the name and force it to be transferred to me without compensating the troll?

        • It's more nuanced than that, of course. Here, GBP Inc. already had a trademark on "TITLETOWN," and the trademark-related analysis was based on that trademark and not the one on "TITLETOWNTECH," which as the opinion notes, hadn't yet been issued. The latter registration was important, though, to establishing proper diligence on GBP's part and lack of good faith of the squatter. Reading through the opinion probably would help clear up a lot of high-level questions like this -- I promise it won't bite.

      • Are they really cybersquatters? The story is unclear how long the family owned this. Did they have it before the NFL and Microsoft had plans with that goofy name.

    • My question I haven't yet found the answer to is this:

      Did they register the domain before word of Microsoft &the Green Bay Packers plans leaked?

      If so, it's a company using lawyers to steal something they want but aren't entitled to.
      If not, then it's probably a case of cybersquatters getting squashed like they deserve.
      • According to the decision, which is quoted in the comments, they registered the domain a month before the Packers announced the initiative. No evidence was presented to the 'panel' (which was one guy) that their business ever existed. So according to the arbitrator, technically they had it before the Titletown initiative was launched but it seemed like somebody leaked the initiative to to them and they were cybersquatting.

        Whether this was because Titletown Tech was a family business with no lawyers to show

  • so, then,... (Score:5, Insightful)

    by cellocgw ( 617879 ) <cellocgw&gmail,com> on Friday September 28, 2018 @09:54AM (#57389760) Journal

    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,... (Score:4, Informative)

      by Anonymous Coward on Friday September 28, 2018 @09:59AM (#57389790)

      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,... (Score:5, Informative)

        by olsmeister ( 1488789 ) on Friday September 28, 2018 @10:10AM (#57389852)
        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.
        • 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.
      • ^ This

        It's even linked in the article: https://web.archive.org/web/20... [archive.org]

        • Trademarks require actually conducting business activities, not just pretending to on the internet.

      • >"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."

        Well, not so much so. Their "site" was just a basic template, and it looks to me like it was registered around the press release time specifically as a domain squat. Doesn't matter how big or small the company was.

        I would love info to the contrary- like it having been their actual trade name for years prior (and with no other trade names), or their ph

        • 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.

      • 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.

        Of course they were. What kind of an amateur hour cybersquatter doesn't pretend to be a local family-run PC repair business that didn't exist before the announcement and popped up out of nowhere with a fancy domain.

      • Comment removed based on user account deletion
    • Don't forgot the Trolls that will contact the new company asking for services provided by the old company.
    • Everyone involved is an asshole.

      You're too modest - you left out yourself.

    • And the guy who calls cyber-squatters "cyber-sitters," too. Don't forget him.

      News flash: They were not hired to take care of the domain while its parents went out for the evening.

  • Seriously? (Score:5, Insightful)

    by argStyopa ( 232550 ) on Friday September 28, 2018 @09:56AM (#57389774) Journal

    "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.

    • What if, in spite of NDAs, the name mysteriously gets registered two weeks earlier?

      • by PPH ( 736903 )

        Registered by whom? Someone who signed the NDA or provably had a business/personal relationship with them? Stand by to get your ass sued off.

        If it was a lucky guess (or the first applicant was good at covering their tracks), that's the breaks.

    • by PPH ( 736903 )

      Seriously, in 2018, how does this happen?

      Because Microsoft.

      I seem to recall an incident back in the last century where they forgot to make a registration payment for microsoft.com. Name resolution failed, but within a few hours one of their admins noticed the mistake, called the registry and put the $35 dollar fee (or whatever it was back then) on his personal credit card to reactivate the name.

      • Worse than that was it wasn't the first incident that MS didn't renew their registration on time. I remember another story where a 3rd party developer saw it had lapsed and registered it but promptly gave it back to MS.
    • Seriously, in 2018, how does this happen?

      Easy. Decisions like this are not made in isolation. Contracts like this aren't a simple 30 second job + signature. There were likely a large number of people (especially legal people) involved in this project with a todo list that felled entire forests in order to get printed on paper.

      Things get missed all the time. The more people involved, the bigger the players, the more likely it is something gets missed.

  • Shakedown (Score:4, Insightful)

    by Anonymous Coward on Friday September 28, 2018 @09:57AM (#57389784)

    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.

    • Comment removed based on user account deletion
  • Looks like squatters (Score:5, Informative)

    by drew_kime ( 303965 ) on Friday September 28, 2018 @09:58AM (#57389786) Journal
    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.
  • Microsoft and the Green Bay Packers announced a $10 million partnership

    That's the last straw. It's not quite as bad as if they'd gone with New England, but it's plenty bad.

    • I hope the Pats try something like this, just so I can register the name first and earn the right to punch Tom Brady in his fat punchable face, I'll take that over $5k any day.

  • by dwillden ( 521345 ) on Friday September 28, 2018 @10:07AM (#57389836) Homepage
    That would be Pittsburgh! 6 Super bowls. Conference championships aren't titles.
    • Re: (Score:2, Informative)

      by Anonymous Coward

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

    • by Nidi62 ( 1525137 )

      That would be Pittsburgh! 6 Super bowls.

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

  • If I look at the website, it seems that they used the domain for a legitimate business before MS registered their company. Doesnt sound like a domain squatter to me, but then why are they forced to give the domain to MS? Is that legal in the US?

    • >"If I look at the website, it seems that they used the domain for a legitimate business before MS registered their company"

      They could be a legitimate business, but that doesn't make it not a domain squatting situation. Their "site" was just a basic template, and it looks to me like it was registered around the press release time specifically as a domain squat. Doesn't matter how big or small the company was.

      Here are some things that would REALLY make it not a domain squat- having been their actual trade

  • by BenBoy ( 615230 )

    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.

    And as for the domain name, the entitled wealthy with more dollars than any small business ultimately did what it has done for years -- take what they wanted without compensation. Honestly, the chutzpah, asking for a price that the rich entities didn't wish to pay ... I, too, am outraged at the small businessman.

  • by jtara ( 133429 ) on Friday September 28, 2018 @10:43AM (#57389994)

    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

    • by sootman ( 158191 )

      > live.com was the primary domain for the rebranding, live.net
      > was presumably "protective" to catch mis-types of TLD.

      $28k is a lot in that case, since no one in the history of the WWW has ever mis-typed '.net' when they meant '.com'. :-)

      • by jtara ( 133429 )

        >$28k is a lot in that case, since no one in the history of the WWW has ever mis-typed '.net' when they meant '.com'. :-)

        Actually, I was wrong, it was $36K. I split it 50/50 with Howard, so I got $18K, the 8 stuck in my mind...

        Presumably, Microsoft paid more than $36K a year later.

        It's certainly POSSIBLE that the buyer knew there were plans in the works. I was and still am baffled why they paid $36K to put ski cams on a domain that doesn't suggest ski cams. ;)

        Still, I think fair for all. I can't imagine

  • Way back in the paleolithic era of the World Wide Web, some wiseacre registered peta.org. People Eating Tasty Animals. The site was a compendium of links to meat companies, leather goods, animal testing laboratories ... basicially, if it ticked PeTA off, he'd have a link to it.

    Grumbling from those quarters for years. But they didn't have any web presence, other than news articles about their antics.

    Then, at some point "that" PeTA filed a complaint and stole the domain that had existed for several years.

  • I think fighting the domain owner and strip them of what they own is such bullshit!!! Besides the cash, the fact that they want season tickets and MS tablets is because they are fans of both MS and the football team.. what they ask may seem like lots of money to individuals but to MS and the team is breakfast change. Why did they spend way more than that in legal fees to rob something from someone who legitimately owns it?
  • It's supposed to be a "local" business website, but the contact us page has no phone number...

    They still registered it before any official announcement from the Packers or MS, so I'd say it's theirs to sell.
    I mean it's what 35 bucks to register a domain, and you wait a month or so beforehand to register the domain? If you have 5K to offer I think you could've registered a few maybes earlier on in the process.

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