Can Typosquatting Be Counterfeiting?

This seems to be media day. Brian Krebs quoted me in the Washingtonpost.com story Dell Takes Cybersquatters to Court.

The story there is about Dell bringing a very large and organized case against a bunch of domain tasters (people who register domain names for a very brief period then drop them, so they don't have to pay for them) who were apparently typosquatting on a grand scale.

What makes the story interesting is that Dell's lawyers threw in a counterfeiting claim into their complaint. It's artfully worded, but the essence of it is that the counterfeits are the domain names, and/or the act of putting up web sites at the domain names that have popups or pop-under ads.

Tactically, this assertion has great value for Dell: it got the judge to treat the complaint the way that courts treat claims that there's a warehouse of phony handbags somewhere; Dell got to file under seal, and to stage a raid before service to impound computers and other evidence. And the statutory damages for counterfeiting are higher than for cybersquatting.

But, and here's the rub, it seems pretty clear to me that the trademark laws don't contemplate this sort of cybersquatting/typosquatting, however heinous and massive, as being called counterfeiting. This isn't like affixing a false mark to some good to make consumers buy it. And even if one were to say that consumers “buy” web sites by “paying” their attention, I don't understand anyone to suggest that the defendants' sites looked like Dell's, just (some of) the domain names. Indeed some of the names, although they had “dell” in them, were so long and weird that you have to wonder how anyone could be confused, or how they could even be seen as diluting Dell's marks. Even so, though, if the complaint's facts are true, there were an awful lot of other names that were close enough to Dell's be actionable.

Overall, it's a very well-written complaint and makes the defendants sound very guilty of trademark infringement, cybersquatting, and various Florida state-law unfair competition claims and the like — but not of counterfeiting. The attempt to re-characterize typosquatting, even massive typosquatting, as counterfeiting seems to me to be an unusually far-fetched construction of the relevant law, but I'm open to correction from people who know counterfeiting law better than I do.

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One Response to Can Typosquatting Be Counterfeiting?

  1. Umm.. there’s no shortage of fake rolexes in Shanghai night markets, that don’t even look like a rolex.

    The night market hawkers have names for these .. “fake rolex” is any old watch with “Rolex” printed on it, correct spelling optional. A genuine fake is a fairly accurate (at least on the outside) knockoff of an actual rolex watch.

    Rolex treats even the “fake” ones as counterfeiting .. not just the “genuine fakes”.

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