A few years back my attention was drawn to the domain name registration patterns of a Toronto based company called Globe Media International Corporation. According to a number of sources including this Industry Canada webpage the company was established in 2003 listing Stefano Venneri of Toronto as its president. The business of Globe Media International Corporation is described as

“providing Internet based advertising solutions.” and names the company as a "leader" in the field. 

The company claims to have established Canada’s first multi medium advertising system and that it enjoys trademark rights in several of the domain names it has registered. Strangely, the company does not appear to have a corporate website which details the services they offer. 

What I find even more interesting about Globe Media International is that since its incorporation in 2003 the company has been engaged in what can only be described as a disturbingly obvious pattern of registering domain names which correspond to famous trademarks. To illustrate, here are a few of the domain names they have registered:

Ducati.ca
Labatts.ca
Mentos.ca
Zantac.ca
Chaps.ca
Isuzu.ca
Kmart.ca
Longines.ca
Smirnoff.ca
Versace.ca
Lotto649.ca
Fendi.ca
Movado.ca

Having been in the domain business for a decade I am well aware of the fact that there is nothing inherently illegal in the mere act of registering a domain name. Determinations of “bad faith” and trademark “infringement” as they apply to domain names can only be reached after a diligent review of the facts and circumstances surrounding how the domain names at issue are used and neither should be assumed as a sole result of their registration. Having said that, when I saw the names being registered by Globe Media I knew immediately that this company was traveling the wrong way down a one way street! It seemed obvious to me at least, that it was only going to be a matter of time until one of the above noted companies called upon Globe Media to account for their domain name registration choices. I saw this as a when not if kind of proposition. 

Any self respecting domain name professional will tell you that there is absolutely no good reason to register these names unless you are the trademark holder. Their upside is so minimal that it is almost nonexistent, and their downside is absolutely humongous. They are virtually worthless in the sense that they are difficult if not impossible to monetize without infringing on the marks associated with them and the time and effort required to make that happen would likely not worth the revenue they would generate. Because of the incredibly famous nature of the brands involved and the strength of the marks associated with them these domain names can be wrought with liability for anyone silly enough to try and employ them in a pay-per-click advertising or other domain parking program which trades off of their notoriety or good will.

So what exactly was slash is Globe Media’s end game and how do they hope to recover their investment in these names?

In my estimation there are only two strategies one can employ when investing in trademark protected domain names, neither of which is particularly viable. You can throw caution to the wind and monetize them in a way which infringes on the associated trademark, or you can attempt to sell the domain to the trademark holder who in all likelihood is probably the only other party in the world that has any keen interest in the domain name. I mean who wants to buy potential legal problems?

In my opinion Globe Media’s goal all along was to sell these names back to their respective trademark holders. The reason I say this, is that to their credit I suppose, Globe Media appears to have taken deliberate measures in an attempt to avoid or mitigate any potential claims of trademark infringement by setting up landing pages which offer vanity email services at certain of the above noted addresses as opposed to setting up ad laden pay per click pages. This was done to insure that surfers landing on these pages would not be exposed or redirected to competitive products or services and as such by definition the domain names could not be infringing on anyones rights. 

While it is true that under certain circumstances the offering of vanity email addresses may well be construed as a "legitimate use", I simply can not imagine how a company that rents email addresses for $250 a year with only 250 MB of space could have even the slightest chance of being viable especially since companies like Yahoo, Google, Microsoft and others offer their users many times that amount of space for free; but this is the bed that Globe Media has made for themselves. 

When Johnson & Johnson, the producers of Zantac and the owners the trademark rights associated with it contacted Globe Media about their registration of the domain name Zantac.ca, Globe Media offered to sell Johnson & Johnson the domain name for the sum of $2,000. It is interesting to note here that the cost of filing a domain name dispute with the Canadian Internet Registration Authority (CIRA) under the Canadian Dispute Resolution Policy (CDRP) is approximately $2,000. Coincidence? Probably not. When Johnson & Johnson didn’t bite at $2,000, Globe Media reduced its demands to $1,500 for the domain but J&J was still not buying.

I can tell you this, when a company the size of Johnson & Johnson says no to you for $2,000.00, it isn’t the money! For obvious reasons trademark holders tend not to be to trusting in instances where they believe they are dealing with someone who is infringing on their intellectual property. I’ve brokered many domain deals for corporations in exactly this kind of situation simply because the mark holders wanted a 3rd party they trusted to control the domain transfer and handle the financial disbursements.

At any rate, rather than paying Globe Media for the domain name Johnson & Johnson elected to file a formal complain under the CDRP. One of the interesting things that came out in the complaint was Johnson & Johnson’s submission that Globe Media actually tried and failed to register the domain name zantac.ca as a trademark with the Candadian Intellectual Property Office. The domain dispute was adjudicated under the CDRP and decided in favor of the plaintiffs resulting in the transfer of the domain name to Johnson & Johnson.

The decision sets the stage for a rash of further complaints against Venneri and Global Media International and should serve as adequate notice that their cutting edge business model is at the very least flawed. In any event, for anyone who may be interested in some short term email space, as of todays date you can still get a vanity email address for yourself like yourname @ Versace or yourname @ Smirnoff.ca from Global Media for a mere $250 per year! Better hurry, this offer will likely only be available for a limited time.