Popular microblogging social network Twitter operates from a single Web address, but has to be constantly aware of imitators or competitors using its trade marks to confuse or misdirect users. A man from Cessnock in New South Wales, who bought the Twitter.com.au domain just after Twitter’s online debut, has lost the right to hold the URL he offered to sell to any interested party for $500,000.
Twitter.com was originally registered on January 21, 2000, but remained effectively unused until July of 2006, when the Twitter social network launched publicly; the first tweet was actually on March 21, 2006, when co-founder and current returned CEO Jack Dorsey posted “just setting up my twttr”. Unsurprisingly, Twitter has become pretty big since, with 320 million monthly active users and 4300 staff worldwide.
Twitter dot com dot au was owned — until today, at least — by Jason Boyce of Cessnock, NSW. Back in April 2006, a few weeks after @jack’s first tweet, Boyce registered the Australian domain name through Digital Pacific, and has held it tightly since. It was first put to use in March of 2007 to host the NSW V8 Holden Club on a subdomain, while various affiliate and pay-per-click links started appearing in mid-2008.
Those continued until mid-2012 when it was relaunched as the home page of “Tyas Wittermann Creative” on July 31, 2012, around the same time as Boyce created that company name through the Australian Business Register. At the end of 2013, an Expression of Interest page was created, offering the Twitter.com.au domain and “online business”, as well as tyas.com.au and tyaswittermann.com.au domains, for sale — for an “expected valuation… from $500,000 [to] $800,000 AU open to negotiation”.
The World Intellectual Property Organisation received a complaint from Twitter, Inc. on September 24, alleging that the Twitter.com.au domain was confusingly similar to its own Australian trade marks — it holds two — and that Boyce held no right to use them. Claims of legitimate business use by Boyce, it said, were “unsupported by evidence” and an “intentional attempt to attract for commercial gain”.
The Complainant makes the following contentions: (i) that the Domain Name is identical or confusingly similar to the Complainant’s TWITTER Mark; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and/or is subsequently being used in bad faith.
Boyce’s 15-part response was that Twitter was attempting to smear him and his legitimate Tyas Wittermann Creative business, and that the WIPO proceeding was an attempt to harass him. His ownership of Twitter.com.au, he said in his response, was in context as a legitimate business name for a legitimate tax-paying business, and the he has “not engaged in any cyberflight or cybersquatting” (emphasis ours). Twitter’s claim that a $500,000 price tag on the “broader package of business assets” was outrageous, Boyce said, was itself unreasonable because Twitter did not have any record of his expenses.
The Respondent makes the following contentions: … (x) The Respondent, as a legitimate tax-paying business, is making fair use of the Domain Name. (xi) The Respondent registered the Domain Name in 2006 in good faith, as the Complainant’s service was unknown at the time. (xii) The Respondent has not engaged in any cyberflight or cybersquatting …
The response also said that Twitter’s complaint contained “numerous” factual errors, that his small business’s slow growth was only a result of limited financial resources, and that Boyce was entitled to offer the domain for sale at any time.
WIPO’s findings, though, were straightforward. Boyce’s use of the Twitter.com.au domain name, it said, was confusingly similar to Twitter’s Australian trade marks. Boyce’s use of Twitter.com.au as an email and small business hosting service was not a bona fide and fair use of the domain. Boyce’s use of Twitter.com.au, in linking to pay-per-click advertisements and being in competition with Twitter dot com (the website), was in bad faith. Subsequently, Twitter.com.au has been moved to the ownership of Twitter.
Tyas.com.au and Tyaswitterman.com.au remain the property of Jason Boyce, and his Tyas Wittermann Creative ABN is still registered and active. That $500,000, though — that’s staying in Twitter’s pockets.