MPAA extends Net crusade to domains

Threatening www.ratednc-17.com with $100,000 fine

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The Motion Picture Association of America has extended its heavy-handed approach in all things Internet-related to the matter of domains.

UK-based owner of www.ratednc-17.com, Laurence Skegg from York, has received a letter from no less than the charming Barbara Rosenfeld herself, informing him that the domain he purchased on 15 June 2000 infringes the MPAA's trademark.

"There appears to be no good faith reason for you to have registered this domain name," he is informed, "since you have no connection to the MPAA or its motion picture rating system."

If there can't be "good faith", then there must be "bad faith". "If you have registered the domain name in bad faith, your actions may subject you to the loss of your domain name as well as to civil penalties of up to $100,000 under the recently adopted Anticybersquatting Consumer Protection Act of 1999. If you actually operate a website which offers any goods, services, or information, your actions will constitute trademark infringement and/or dilution under the Trademark Act of 1946."

So, Mr Skegg has two choices: "You will either delete the domain name 'RatedNC-17.com' from the domain name registry or immediately transfer the name to MPAA. If we can have your agreement on these points, MPAA will be willing to consider this matter closed."

And if he doesn't? "If we do not have your agreement, we will commence an action against you either under the new ICANN dispute resolution procedures, or as a civil action in United States District Court, seeking injunctive relief, damages, and an award of our attorneys' fees."

All this has come as some surprise to Laurence Skegg, who uses the site to run a blog and offer free downloads of skins for the Linux Blackbox bit of software. He almost deleted the email at first, thinking it to be a virus.

A few days after receiving the letter, he posted his feelings to Politechbot.com. "I understand my problem is my motivation for the domain choice, and perhaps the fact that 'rated' is part of the name. If I went under www.nc-17.com I might be able to get away with it, as the previous links have, operating businesses under this trademark in a different industry." He rejects the bad faith accusation because 1) he is using it fairly, 2) he has used it for three years (Google has his site number three on a search of "nc-17") and 3) he isn't making any money nor is he pretending to be the MPAA or connected to it.

So why did he register the domain in the first place? "In the mid-90s, I was a Quake player. Players generally give themselves a 'handle' or name under which they are known and referred to. I thought I was violent, terribly so, and who doesn't like copious amounts of sex (bear with me), so I thought NC-17 would be perfectly appropriate. It's my nickname on any irc server or Instant Messaging network. I classed, indeed, rated myself, as NC-17. The lengthier version of my name is RatedNC-17. Hence, ratednc-17.com is I guess describing my persona (but not the content of the site)."

The MPAA isn't lying, it does have an "NC-17" trademark (registered 15 October 1991). It also has a "RATED NC-17" wordmark (registered 17 September 2002). It also has trademarks/wordmarks for every other film classification - G, PG, PG-13 and R.

The question is: Does it have the right to take over Ratednc-17.com? And, if Mr Skegg tells the MPAA where to stick it, will it go to WIPO? Or the American law courts?

We would say: No, Maybe and No in that order.

Yes, the MPAA does have the trademark "NC-17" and "RATED NC-17" but that does not mean it has the right to control everything that makes reference to it. Its tactics, as ever, are to scare and confuse easy targets into doing what it wants - for example its targeting of university students for MP3 files.

The MPAA already has the other domain combinations: rated-nc17.com, rated-nc-17.com and ratednc17.com, not to mention nc-17.com and nc-17.net. It does not, however own nc-17.org (run by the Classification and Rating Administration - hence kosher) or nc17.com - run by a company selling adult videos.

And while we're covering its "rights" over the classification being used within domain names. It does not own ratedg.com, rated-g.com, ratedpg.com, ratedr.com, rated-r.com, pg.com, pg13.com or pg-13.com (g.com and r.com do not exist). Incredibly, ratedpg-13.com is still available to register.

We do however smell previous heavy-handed legal threats from the MPAA in the fact that rated-g.com, pg13.com and pg-13.com are all owned by individuals but have absolutely no content on them.

There are also examples of nc-17 and pg-13 country-code domains, such as www.nc17.de, that the MPAA hasn't touched because it has no power over them. Plus nc17shop.com looks as though it is blatantly infringing the MPAA trademark, except it is owned by a company called NC-17 and so has been left alone.

Will the MPAA go to WIPO (or another ICANN arbitrator) if Mr Skegg refuses to do as it demands? Possibly. It has never used the UDRP rules before but this may well be because none of its soft targets has ever dared stand up to it. The MPAA doesn't like soft options and it can afford to go to court every time, so it does. Plus, going to WIPO may create a precedent for how it behaves in future. That doesn't mean it won't though.

There are also new UDRP rules currently going through discussion at ICANN. No one knows what the end result will be, but it may give the MPAA an edge and help set a precedent that WIPO is clammering for. At the moment however, the MPAA should lose any UDRP argument. For a domain to be handed over, it has to meet three criteria.

  1. The domain is identical or confusingly similar to a trademark that complainant has

  2. The current owner has no rights or legitimate interests in the domain

  3. The domain was registered and is being used in bad faith

The second and third criteria are clearly not true. Mr Skegg only has to prove he has gone by the name "NC-17" for years, and a legitimate interest is proven. He is also quite clearly not acting in bad faith. He could also point out that every domain in this arena owned by the MPAA doesn't actually have anything on it. How can the MPAA argue the site is important to it when it doesn't even intend to do anything with it once acquired?

However, WIPO does have a tendency of creatively reinterpreting the UDRP rules to please big and powerful companies, so the MPAA may decide the risk is worth it. If it does, Mr Skegg would have to cough up for a three-member panel or WIPO would choose someone that decides in the MPAA's favour no matter what.

So would the MPAA go to the law courts? It seems unlikely. Why? Because it would lose. The $100,000 fine is a red herring to scare Mr Skegg. Quite how it would force him to pay it when he is probably worth less than $20,000 and lives in the UK is something not covered in the MPAA's letter.

As for using the Anticybersquatting Act against him, this is clearly some joke. Just reviewing the dates of the domain's registration and the MPAA's delayed action is enough to make any judge scoff. However, again, the MPAA is a very wealthy, powerful and driven organisation and may well decide to throw the book at Mr Skegg if he decides to stand up to it.

It is safe to assume that he would not be foolish enough to play the lawyer game with the MPAA, but how would a judge come down if it were to make it to court? The US legal system is almost up to speed on this new aspect of law, so it would be a gamble for the MPAA - could it risk being branded a reverse domain hijacker?

And so, as is usual in these cases, it is a giant game of bluff. The MPAA would be unlikely to win if the case were ever to reach a formal judgement but it knows that Mr Skegg will almost certainly be intimidated enough to think a battle for a little domain is simply not worth it.

If he were to stand up to the MPAA, he can expect heavy legal threats, lots of lawyers' letters. If he continues to fight, the MPAA would probably not risk setting a precedent and offer him a paltry deal complete with non-disclosure agreement so he can never tell anyone else of their tactics or the final deal. If he were to push it further still, after months of stress and hassle and worry, the MPAA would drop the case and let him have the domain - probably again insisting on an NDA - and, of course, not allowing a legal precedent to be set.

So, Mr Skegg should decide now: Is the site worth months and months of trouble for an anti-climatic victory? If so, anything less than 100 per cent is a waste of time. If not, get it over and done with, send the MPAA a rude letter to feel better and get on with life. ®

Related links
Initial letter on Politechbot.com
Laurence Skegg's and others' thoughts

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