Khan Academy Buys Cybersquatted Dot Com

from the common-law-trademarks... dept

Tue, Nov 9th 2010 9:55pm — Mike Masnick

Earlier this year, I wrote about the Khan Academy, the online operation run by an old housemate of mine, Sal Khan. At the time, he was getting more and more (well deserved) press attention for the project. Since then, that attention has only increased, with Bill Gates giving him a shout out and Google handing him $2 million. But one thing he didn't have, apparently, was the domain name khanacademy.com. He said he was about to get it, but someone beat him to it.

Dennis sent over an interesting story by a guy who helped Sal buy the dot com from the cybersquatter. It's an interesting story of how buying domains works (with a lot of questionable things happening in the background). In the end, they were able to purchase the domain for $2,988. They actually paid $5,000 initially, but the company running the auction later said it detected fraudulent bidding, and lowered the price.

That said, I wanted to point out an important mistake that the guy made -- which may have actually made this more costly. Here's what the guy wrote:

I checked to see if Sal had a trademark. If he had I would have suggested a WIPO action. It would have been a slam dunk. But Sal, busy teaching kids trigonometry for free, hadn't gotten one yet.

And here's the mistake: you don't need a registered trademark in such a situation. Would it help? Perhaps, but it's really not necessary. All you need is a common law trademark, and that would be quite easy for Sal to demonstrate. The UDRP process has regularly said that common law trademarks are sufficient. In fact, WIPO has explicitly stated that no registration is necessary, and has regularly ruled for those holding common law trademarks, so long as they can show evidence as to why they hold a common law trademark.

It's kind of unfortunate that Sal and the author of that article had to go through this other process, as it likely cost them more than a straight UDRP dispute and the money they spent went to whoever squatted the domain. Oh well, perhaps it's just an educational moment -- and one Sal can use in a future video teaching others about trademarks, common law trademarks and the domain dispute process...

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Filed Under: common law trademark, domain auctions, domain dispute, domains, trademark
Companies: khan academy

17 Comments

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Eric Goldman (profile), 9 Nov 2010 @ 10:13pm

Not Sure a UDRP Would Have Been Cheaper
Most Silicon Valley firms quote about $10k for a UDRP action, so purchasing the domain name for $3k may have been cheaper than the UDRP. Eric.
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Mike Masnick (profile), 9 Nov 2010 @ 11:11pm

Re: Not Sure a UDRP Would Have Been Cheaper
Most Silicon Valley firms quote about $10k for a UDRP action, so purchasing the domain name for $3k may have been cheaper than the UDRP. Eric.

Ah interesting. I had looked around briefly, and I saw a price of $1,500, but perhaps that was only for some aspect of the process?
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gojomo (profile), 9 Nov 2010 @ 11:14pm

Demand Media connection
Also interesting in the account you linked: the Demand Media connections. The first squatter/squatter-representative is AcquireThisName.com, which shares board members (at least) with Demand Media. The eventual auction was through NameJet, a 'partner' of Demand-owned eNom.

So perhaps that's part of the Demand Media secret sauce to take note of before its IPO: making money by holding domains hostage, even if they are clearly associated with others' trademarks.
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Tammy Ellefson (profile), 9 Nov 2010 @ 11:17pm

travel zoo stock
All I am trying to find out is if my travel zoo booking stock has any value tp me and what I have to do to redeem it!
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Tammy Ellefson (profile), 9 Nov 2010 @ 11:17pm

travel zoo stock
All I am trying to find out is if my travel zoo booking stock has any value tp me and what I have to do to redeem it!
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Phillip Vector (profile), 10 Nov 2010 @ 12:31am

Academy Name
Why is it when I hear the name of the academy, I keep on thinking of Captain Kirk shouting, "KKKHHHHHAAAANNNNNNNNN"? :)
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Michael Lockyear, 10 Nov 2010 @ 4:31am

Unlucky for all the "other" Khan academies:

1. The Aga Khan Academies
2. The Khan Academy in Pakistan (unrelated I think).
3. Gengis Khan University in Mongolia (spelled CHINGGIS KHAAN)
4. Academy of Gengis Khan.
5. ...and plenty more...after all the name "Khan" is fairly common.
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Berenerd (profile), 10 Nov 2010 @ 5:26am

Re: travel zoo stock
Umm...huh? Wha? I am so confused...
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Christopher (profile), 10 Nov 2010 @ 5:29am

Such is life, my friend.
First in, wins.

-C
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Shawn (profile), 10 Nov 2010 @ 6:00am

Re: travel zoo stock
Current market value of common travel zoo booking stock is 33.6 zoomblats to the plimpet. For redemption instructions please speak to the moose out front.
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Marcus Carab (profile), 10 Nov 2010 @ 6:00am

I didn't realize Khan was an old housemate of yours. Next time you see him, give him a pat on the back for me! Khan Academy is easily one of the best resources on the internet - it's been so gratifying seeing him get the recognition and support he deserves for the awesome work he is doing.

(and for anyone who isn't familiar with the academy, go check it out now and brush up on some physics or something!)
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Will Sizemore (profile), 10 Nov 2010 @ 6:37am

So this squatter, like many others, is doing something that I think should be illegal. He knew that by registering the domain, he had a chance to sell it to Khan at a later date. Many of us where I work joke that we wish we'd done this 'way back when' people were making money this way and corporations were paying large sums for them. But I think that if I had a manuscript of a book I wanted to publish and I sent it in to a publisher, but someone along the way liked my title and published a work using that same title, I could be in a world of hurt. I know its apples and oranges, but my point is that squatters KNOW that they are infringing, at least morally.
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Shawn (profile), 10 Nov 2010 @ 8:11am

Re:
speaking of apples and oranges...

If I see that the town I am living in is growing and spreading to the south, should it be illegal for me to buy a large piece of farmland and let it sit because I know I can sell it to someone else at a later date for profit?
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Paul Keating, 10 Nov 2010 @ 8:31am

There are several problems with the original post (besides the headline - and frankly given the nature of your site you should be ashamed at having used such terms): 1. Presumes that the domain was "squatted". If there is no registered tm how can that be the case - absent a famous unregistered mark? 2. UDRP with unregistered mark. One must not only prove that the name is distinctive (and thus a mark) but also that the registrant has no legitimate interest AND both registered and used the domain in bad faith. While I k now nothing of how the domain was used, it would seem that the words "Khan" and "Academy" are not so extricably linked to him as to render a UDRP a walk in the park. 3. Relative Cost. UDRP filing fee is $2,000, plus cost of preparing the complaint. In my firm we do this for a flat fee of 5K (including the filing fee). Respondent has the right to demand a 3-member panel which would increase the filing fee by another $500. Compared to these costs, the price paid is a steal. LESSON: If you are going to create a business do it properly and lock up both your tm and the domain. If you end up needing to purchase the domain, I have little sympathy for you.
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JustMe (profile), 10 Nov 2010 @ 8:41am

Actually
I purchased "The Calculus Diaries: How Math Can Help You Lose Weight, Win in Vegas, and Survive a Zombie Apocalypse" last month after hearing the author speak on NPR's Science Friday but quickly realized that my college math courses were several decades ago.

I just went in and watched two Khaaaan! videos and I'm smarter for it. This will really help me brush up so that I can read The Calculus Diaries.

I guess it really does take a village to survive a zombie apocalypse.
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Anonymous Coward, 10 Nov 2010 @ 8:58am

Hopefully Sal learned to keep his mouth shut about his future plans and stop his fingers from typing. If you want to protect an original idea don't publish it.
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Caitlin - BrandBucket, 12 Nov 2010 @ 11:09am

Oh thats an unfortunate story! My sister had her name domain bought from under neather when she released her business domain.
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