Open Letter to Tucows on Trademark Infringement
(Editor’s note: There is an update to this discussion on a more recent blog post).
As many in the teaching community are already aware, ClassHelper.org has grown to become a respected online provider of educational resources for teachers and parents. We enjoy traffic from over 40,000 visitors per month, which translates into roughly 200,000 pageviews. Our resources are used in school and homes throughout the United States, and we have a growing following in the U.K. and various EU nations.
We claim trademark rights to “ClassHelper.org” in the context of providing educational resources over the Internet. Under United States trademark law, we are afforded both strong legal protections against the unauthorized use of our mark for similar purposes, as well as use of a confusingly similar mark in trade by unauthorized parties. Although it is not necessary to formally register a trademark to enjoy such legal protections, the federal trademark registration application has been filed and is under review for ClassHelper.org.
Over the last few months, we’ve been attempting to work out ongoing issues related to trademark infringement by Tucows, Inc (1) with respect to the domain “classhelper.com”. The core issue is violation of trademark law under the doctrine of using a very close match to a trademarked term in the areas of trade under which the legitimate trademark holder operates. For several months (and as of this writing), navigating to “classhelper.com” results in the following typo-squatted page (or a similarly constructed page):
Typo-squatted domain landing page.
Astute observers will note that the links on this landing page reflect major content categories on ClassHelper.org. These are links for which Tucows is paid advertising revenue, a clear example of leveraging a visitors intention to visit ClassHelper.org unfairly and in violation of trademark law. This landing page didn’t exist before we began building up large volumes on content on ClassHelper.org, and is plainly generated from search results for our site. This serves to illustrate the fact that regardless of when Tucows “acquired” the domain (the previous owner let it expire), they have not made any legitimate use of it since that time, and the ongoing manner in which it is used infringes on our rights.
With respect to this landing page’s traffic, I’m betting I could count on one hand the number of visitors who intentionally naviate to “classhelper.com” instead of ClassHelper.org each month. Incidentally, over the last thirty days 37.7% of the visitors to ClassHelper.org have been direct traffic (according to Google Analytics (2) statistics). That’s over 15,000 visitors.
We’ve asked Tucows to abstain from hosting pages on “classhelper.com” that violate our rights. They’ve declined. We’ve attempted to engage in respectful dialouge with Bill Sweetman, general manager of Tucows’ domain portfolio, to negotiate the purchase of “classhelper.com” for a reasonable price. He’s declined. Throughout this process, Tucows (as represented by Bill Sweetman) has refused to address the core issue of the manner in which they are violating our trademark rights, choosing instead to adopt a policy of hand-waving (see some recent email messages) over details completely unrelated to the assertions we’ve made regarding infringement. This is unfortunate, and clearly not the kind of behavior one would expect of a company that claims to respect copyright and trademark law. (Editor’s note: a reference to Bill Sweetman’s blog has been removed after clarification from him that the post in question referenced an entirely different situation.)
Tucows valuation of their domain is, frankly, ridiculous. I personally own the domains classhelper.org, classhelper.net, and classhelper.info. The domain “classhelper.com” shows zero inbound links in a Google query, has a PageRank of zero, and is completely devoid of any original content. It’s reasonable to assume that the only traffic this page receives is from persons erroneously typing “.com” instead of “.org” for the TLD. Anyone interested in the domain for the commercial promotion of educational resources would have an extremely hard time justifying such a purchase in light of the fact that ClassHelper.org is already a firmly established venue for this market, protected under United States trademark law.
At this stage, it appears that we’ve been left no option but to pursue the matter in the courts. We had hoped for an amicable resolution of the matter whereby Tucows would receive some compensation for the domain, instead of involving attorneys and related expenses. At this stage, and until the legal process is brought to bear on the matter, we are still open to purchasing the domain for the price we offered in prior communications. We sincerely hope that Tucows will re-evaluate their position and “do the right thing” by either removing the infringing content on “classhelper.com” or accepting our offer of purchase.
Sincerely,
Philip C. Paradis
(1) “Tucows” is a registered trademark of Tucows, Inc.
(2) “Google Anayltics” is a registered trademark of Google, Inc.
(3) “SweetMantra” is a trademark of Bill Sweetman.
Tucows is simply the Registrar, not the owner of the Domain.
You really should have bought this domain earlier if you were serious about your business.
Your best bet now would be to file a WIPO Copyright Infringement claim. Be warned though, its a long and complicated procedure.
A potential problem is that your claim can be negated if the actual Registrant of the Domain removed it from parking and start posting actual content. Good Luck!
William
8 Jun 09 at 00:26
In this case, Tucows is actually the owner of the domain. After the original owner let it expire, they added it to their “domain portfolio.” I attempted to purchase it as soon as it expired in the first place, but Tucows retained it for their own purposes.
Tucows operates their domain portfolio as “yummynames.com”, which is billed as a domain marketplace. While I don’t object to their sale of the domain for non-infringing purposes, I strongly believe its current use infringes on my existing trademark. Thanks for your thoughts!
Phil
8 Jun 09 at 05:32
[...] Open Letter to Tucows on Trademark Infringement at Codepad – The … [...]
VeriSign Shares Fall After Appeals Court Remands Case - Wall Street Journal | Internet Domain Name Money Marketing
8 Jun 09 at 14:25
While I agree the typo DNS snagging practice is scummy, I think you fail to understand the concept of domain extensions. In light of the fact that the US government failed to stop whitehouse.com from being a porn site for over a decade I cannot see you having any luck. Prior legal decisions over domain extensions have contraindicated you having any success.
Jacob Smith
24 Jun 09 at 10:33
Legal review of prior caselaw was done on this issue, and there’s plenty of weight on our side. Tucows has actually complied with our request for modification of the content on classhelper.com; we never demanded transfer of the domain to us. Our objective was to put a stop to the abuse of our trademark under the doctrine of confusing similarity, which we accomplished. Thanks for the feedback!
Phil
24 Jun 09 at 12:42