NORMAN — Although University of Oklahoma officials occasionally come across websites that use their trademarks without authorization, cybersquatting lawsuits like the one the university is waging against a Dallas man are rare.
The university is suing Dallas resident Hugh Michael Glenn, 43, saying he violated federal cybersquatting laws when he registered the Internet domain name www.soonernetwork.com to sell it for a profit later. Officials also claim Glenn infringed on the university’s trademark by using the term “Sooner” without authorization.
But Anil Gollihalli, the university’s vice president and general counsel, said cases like this are unusual.
The university handles cases like this one in a number of ways, he said, but they’re almost always solved informally without going to court.
Generally, when the university comes across a website using a domain name that’s similar to one of OU’s trademarks, that site falls in one of three categories: a noncommercial site run by OU fans, a retail site selling OU-branded merchandise, or cybersquatters who are parking a domain name in the hopes of selling it at a profit.
In cases when a fan hosts a site, the university generally asks the fan to post a disclaimer on the site saying the site isn’t affiliated with the university.
“Most often, the university is appreciative of the owner’s interest and support, and the owner is happy to oblige the request for a disclaimer,” Gollihalli said.
In cases where the owner of the site is profiting, the university might ask for a similar disclaimer, he said, or it could license the trademarks used on the site or try to take control of the domain name. The avenue the university pursues depends on the site’s content and the cooperation of the owner, he said, but in almost every case, the situation is resolved without court action.
In the case of www.soonernetwork.com, OU filed the lawsuit in Oklahoma City federal court Feb. 6. The lawsuit alleges Glenn bought the domain name with the intent of selling it to OU at a profit, a process known as cybersquatting. The university is seeking an injunction barring Glenn from using any of OU’s trademarks in the future.
The university also is seeking $100,000 in damages, any profits Glenn has received from the website and rights to the www.soonernetwork.com domain name.
On Monday afternoon, the website at the address www.soonernetwork.com appeared to be a service that connects Oklahomans with eldercare providers. The site included a form where patients may enter their contact information, but doesn’t include contact information for the network.
By Tuesday afternoon, that website had been taken down and replaced by a placeholder site that includes a message saying the domain has been registered.
Glenn contends he bought the domain originally intending to use it to advertise the eldercare network. But OU officials say that business doesn’t exist, and Glenn only established the website to create the impression he was using the domain for a legitimate purpose.
The suit includes a screenshot from the site dated Sept. 17, 2012. At that time, the webpage included only a silhouette of a longhorn, similar to the logo used by the University of Texas Longhorns. The site included the words “Go Longhorns!!! This domain is for sale.” The site included Glenn’s phone number.
Activity has slowed
While it still presents a problem today, cybersquatting was a bigger issue for universities and other large institutions in the late 1990s and early 2000s, said Lance Venable, a Phoenix-based intellectual property attorney.
In the years when the Internet was first seeing widespread use, most major companies, universities and other institutions didn’t yet have a Web presence. In many cases, he said, squatters bought up domains with the same names as those institutions, and then offered to sell them at a profit.
“It was sort of like the gold rush for domain names,” he said.
More recently, he said, that activity has slowed. Part of that change may be due to the Anti-cybersquatting Consumer Protection Act, a 1999 law designed to prevent abusive or improper registration of domain name.
Under the act, a domain name owner may be held liable if the domain is a protected trademark held by another institution, or is “confusingly similar” to a trademark. Courts may consider any offers made to sell a domain name to the trademark owner or any third party.
Some gray area
There is some gray area in the law, Venable said, particularly in cases where the defendant uses the domain for a legitimate purpose. A court would also likely consider how extensive the use of the trademark is.
In OU’s case, he said, it’s commonly known that the university’s mascot is the Sooners. The university probably doesn’t have an outright monopoly on the use of that term, he said, since it has historical significance to the entire state.
But the university probably has the rights to the term in cases where it’s similar to a term they’re already using, he said. In this case, university officials have noted that Bob Barry Sr., longtime play-by-play announcer for OU football, referred to the university’s Oklahoma Sooner Radio Network simply as “the Sooner Network.”
“It looks like they’ve got a pretty good case against this guy,” Venable said. “I would probably rather take Oklahoma’s side on this case.”