Tag Archives: Cybersquatting

Not very colorful, not very inspired: PPG sues Sherwin-Williams over THE COLOR OF INSPIRATION

The groundhog may have seen is shadow in Pennsylvania earlier this week, but chemical and paint company PPG did not crawl back into its litigation burrow, instead filing suit against competitor Sherwin-Williams for SW’s use of COLOR OF INSPIRATION on a new SW website that allows custom color matching.
The Complaint (here, pdf) and attachments (a, b-1, b-2, c, d, and e, pdf) allege that PPG has been using the mark COLORS OF INSPIRATION in conjunction with a “color selection system” (i.e. paint chip displays and books), and Sherwin-Williams has subsequently begun to use THE COLOR OF INSPIRATION in connection with a [pretty darn cool–ed.] website where consumers can match a Sherwin-Williams paint color with an “inspiration” from nature or another source, from a photograph.

A screenshot from the Sherwin-Williams webpage. Colorful? Inspired? Or a trademark infringement?

A screenshot from the Sherwin-Williams webpage. Colorful? Inspired? Or a trademark infringement?

PPG has sued for unfair competition under the Lanham Act, cybersquatting protection under the ACPA, and unfair business practices and trademark infringement under Pennsylvania law.

These are two very large chemical companies, and this could be an interesting, although probably not pioneering, lawsuit.  If PPG has trademark rights to COLORS OF INSPIRATION, it will be hard for SW to be victorious.  (However, proving SW’s “bad faith intent to profit”  from the registration of the colorofinspiration.com domain name as required by the ACPA.)

What really surprises me is that this looks like a dispute that could be settled before the initiation of a lawsuit, unless SW really believes that PPG doesn’t have legitimate rights to their mark.  It’s also interesting to see, in these times of economic peril for so many American companies, whether they’re willing to spend $1 million or more to fully litigate  trademark lawsuit on a secondary trademark that may or may not be a large part of their portfolio or brand strategy going forward.

(Hat tip to the Pittsburgh Business Times, reporting on the lawsuit.)

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A new (.tel) TLD, a new day for cybersquatters.

Based upon this press release (pdf), Telnic, a British company, is offering a new top-level domain (TLD) “.tel”.

“.tel” is a slightly different domain– According to the Telnic website, “The value of a .tel domain lies with the ability to host personal (or corporate) contact information directly in the DNS, which can then be universally accessible. This stands in contrast to the typical use of the DNS for other TLDs, in which the DNS only provides a mapping between domain names and IP addresses.” For individuals, Telnic can host a page that if accessed, provides contact information for a multitude of devices.  For companies, Telnic provides specialized pages for contacting the business, creating an on-line voting system, etc.

“.tel” domains are supposed to be There is a very limited “sunrise” period, where businesses with registered trademarks get first shot at new domains in the “.tel” TLD. Anyone who applied for a trademark by May 30, 2008, and who has achieved a registration at the time the entity applies for the domain, may apply for domains in the new TLD.  So, trademark owners, if you want to protect yourself in yet another TLD, you have until February 2, 2009 to do so. In addition, trademark owners may also challenge another entity’s registration in the Sunrise period.

A couple of thoughts: (1) Because this top level domain is not maintained by a U.S. company, it may be more difficult to bring cybersquatting actions under U.S. law against a cybersquatter.  In other words, it will be more difficult later to challenge someone who wrongfully acquires a confusing domain name. That’s an extra incentive to register the domain now.  (2) During the “sunrise” period, Telnic uses a “verification agent” to verify that the domain applied for, and the domain name must be “identical” to the registered trademark (excepting spaces, punctuation and diacriticals).  I wonder if the trademark owner could include the “.tel” suffix as part of the claim of being “identical.”  In other words, can Microtel (the hotel chain) register “Micro.tel”? or “Microtel.tel”? or both?  This is certainly not uncommon– look at the “famous” bookmark site del.icio.us (which now redirects to delicious.com).  With my search, I found 2888 records in the USPTO’s TESS database for trademarks that end in “tel” and are currently “live” (meaning that they are valid registrations or in the process of being approved). I’m sure a number of those trademark owners would like to have a snazzy domain like ams.tel or sofi.tel, even if the point of the domain is for communicating.

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Selling knock-off Rolexes is illegal? But everybody else is doing it!

This watch is for sale online.  A real Rolex or a $99 fake?

This watch is for sale online. A real Rolex or a $99 fake?

The Wisconsin State Journal brings us this story of Vincent Konicek, the owner and developer of toprolexreplica.com, who has surprisingly been sued for–can you believe it–selling knock-off Rolex watches over the Internet and cybersquatting.  His reply?  Essentially admit the conduct, assert the “everybody’s-doing-it” and “ignorance-of-the-law” excuses, and then admit that you need a lawyer:

Konicek said Wednesday that he started selling the fake Rolexes after a trip to China, where they were being sold on the street for $10. Konicek sells his own Chinese-made Rolexes for $99.

The lawsuit states that Rolex found out about the site in October and wrote to Konicek. He faxed back a letter five days later, saying that when they finish “suing all of the following merchants listed on Google search pages, call me and let me know you are going after me next.”

He attached two pages of a Google search that used the terms “Rolex replica.” Rolex concluded that Konicek is “fully aware” that what he is doing is illegal and willful, the lawsuit states.

But Konicek didn’t sound all that certain.

“I didn’t know I was going to run into copyright infringement,” he said. “I guess I’ll have to talk to an attorney and see what I can do.”

Here’s the Complaint (pdf). Among the surprising allegations:

  • Konicek registered the domain name in his own name, and left the whois record active. (Maybe he really didn’t know it was illegal?)
  • Rolex sent a cease and desist letter based only on the domain name before the site was active. (Isn’t this the time to at least consult a lawyer on the legalities of your enterprise?)
  • Konicek responded to the cease and desist with a Google printout of other replica sites and a message of ““[w]hen you finish suing all of the following merchants listed on Google search pages, call me and let me know you are going after me next” and went ahead with the site.

I’m slightly sympathetic to Vince.  It always amazes me that so many businesses can sell direct knock-offs of products and seemingly get away with it.  IP owners can register their marks with the Customs and Border Patrol to intercept shipments of counterfeit goods, but that only works when there’s actually an inspection.  There are also administrative procedures with the International Trade Commission to prevent import of products, but that doesn’t stop the piece-by-piece shipment of goods to the U.S. by mail from some foreign company selling on an anonymous website. And raiding mom-and-pop stores in Chinatown isn’t a way to build up goodwill.

I was fortunate enough to work for a company that marketed jewelry and watches in the United States that never sold fakes and was careful to ensure that its products were not likely to infringe any intellectual property rights of others.  And I would guess that the owners of that business would have shared Vince’s frustration that, just because he was an American who was trying to run a transparent business, he gets sued for hundreds of thousands of dollars and dozens of other websites just keep on counterfeiting.  Still, if all of your friends copy music on BitTorrent and get away with it, you can’t cry foul when the RIAA comes after you.  When you sell knock-offs, you can’t be surprised that the original IP owners will be upset.  But what really gets me is why Vince didn’t just go to a lawyer and figure out his options when he got the cease and desist letter. If he was lookin’ for a fight, he got one, and with all of his admissions, he’s in serious trouble.

But who knows–maybe he can become a successful merchant of Obama thongs. (Then again, that may get him into trouble, too.)

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Filed under Counterfeiting, Law, Trademarks, Uncategorized