Notorious ‘cybersquatter’ advises brands: ‘know your target and adapt your approach’ 15 Sep 15
A parody artist who has been entangled in a number of high-profile cybersquatting cases has told World Trademark Review that the “scare tactics” utilised by brand owners against alleged domain-squatters should not be the default option, noting that he has responded more positively to ‘polite’ approaches.
US resident Paul Horner labels himself as an “internet news satirist and writer”. He was the lead writer for the National Report, a site described as both “satirical” and “a fake news site making profits from duping gullible internet users with deceptively newsy headlines". During his time there, he was responsible for a number of well-publicised fake news stories, including inaccurate reports on Banksy being arrested, Facebook introducing a monthly fee and President Obama offering to personally pay for a Museum of Muslim Culture, all of which were shared millions of times on social media.
Hoax news articles have caused a stir in recent months after Twitter’s share price soared following a phony news article hosted on a fake Bloomberg website. Explaining his own approach to fake stories, Horner tells World Trademark Review: “I like to think they have a purpose - I don’t try and manipulate the stock market, post fake death notices or do anything morally wrong. None of the stories I write hurt anybody. I like to try and find evils in this world and point out hypocrisy in different ways - through either political satire or in more subtle ways.”
Horner left the National Report last year to set up a new network of fake news websites. He launched News Examiner at the start of 2015, and also purchased ‘foxnews.com.de’, ‘usatoday.com.co’ and ‘nbc.com.co’ to post fake news articles (the latter is currently picked up as a news source on Google News). Unsurprisingly, Fox’s legal team sent a cease and desist letter (which, along with his response, can be read here). Considering this approach, Horner feels that “the legal team think I’m an idiot and they therefore use scare tactics to try and stop me”, but adds that this approach will not always work – particularly with those that have UDRP experience. “The key thing trademark lawyers should be doing is a little research. If lawyers do a Google search for my name, they would see that the scare tactic is not the way to go, and realise I’m a guy that will mess with them if they try and play hard-ball. So it’s simple, research the recipient before sending a cease-and-desist letter - know who your target is.”
Horner does have quite a history with domain disputes. In 2002, for example, he lost the domain ‘microsoftsite.com’ after a UDRP decision in which the examiner stated that he was practising “cybersquatting”. He also has a history of messing with those who have taken action - when Horner lost the ‘amazonbooks.net’ domain to Amazon, he noticed that ‘amazonbooks.org’ was available and told us: “I dropped $10 on the domain and then contacted Amazon by email, congratulating them on the win and adding that they can contact me on my new ‘amazonbooks.org’ email address. They did not like that, and knew they would have to spend new court fees and lawyer costs to obtain the domain.”
So what is a targeted brand to do, particularly when faced with a respondent who seemingly relishes sparring with targeted companies? For Horner, when approaching those with experience in the domain world, the key is to not instantly go on the offensive. Instead, he argues, a softer approach can reap rewards. Providing an anecdote that highlights this, he explains: “There’s a popular Canadian TV show called the Trailer Park Boys, and as a fan, I purchased the domain ‘trailerparkboys.com’ and used it to post video clips from YouTube. A lawyer associated with the show contacted me, was really polite and explained Canadian trademark law and why they wanted the domain. I told the lawyer about my previous history and how I was familiar with WIPO panels, and I said ‘let’s skip all that - I’ll give you the domain name, and in return I want a wooden-framed photograph of the three main characters from the show, with their autographs’. The lawyer agreed, and within a week my request was delivered - I have it on my wall right now.”
Expecting trademark counsel to research every alleged cybersquatter – particularly in the expanded new gTLDs era - is a tough ask. In fact, it may be impossible for most major brands. But as the example of Horner demonstrates, where the target has experience with the UDRP process and appears to enjoy a tussle with lawyers, in some instances a more tailored approach could prove an effective strategy.
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