A Nesting Doll Of Stupidity: Rudy Giuliani's Twitter Typo Leads To Bogus Trademark Threat Letter

Another day, another crazy trademark story. As you may recall, back in December we wrote about how President Trump's personal lawyer, and former NYC mayor, Rudy Giuliani -- who considers himself a cybersecurity expert -- made an utter fool of himself. It started with him making a typo in a tweet, in which he left out a space after the period ending a sentence. The second sentence started with "In" but after a period it became ".in" which is the TLD for India. Someone then registered that domain and pointed it to a site critical of Trump. Rather than recognize he made a typo, Giuliani ridiculously tweeted that Twitter had "allowed someone to invade my text with a disgusting anti-President message." Except that didn't happen. Incredibly, months later, Giuliani's nonsense tweet is still up.

This resulted in people hunting through previous Giuliani tweets, and they discovered that Giuliani had made a similar typo with a similar autolink effect a few months earlier for the URL "collusion.so" specifically with this text:

#REALNEWS: Woodward says no evidence of collusion.So does Manafort's team. Mueller can investigate endlessly and he will find no evidence. The only conspiracy,using criminal means, is the campaign to stop and then remove President Trump.

Someone astutely registered collusion.so and pointed it to Lawfare's coverage of connections between Trump and Russia. It was all a good fun internet joke thing.

So what could this possibly have to do with crazy trademark claims? Well... clothing brand Asos apparently launched a clothing line called "Collusion" around the same time as Giuliani's original tweet, and its brain-dead clueless lawyers decided that the registration of collusion.so was clearly infringement, and sent a very silly cease and desist letter. Thankfully, whoever registered the domain asked EFF to represent them in responding, and EFF certainly responded:

As you will see, it would be difficult to imagine a set of circumstances furtherremoved from trademark infringement than our client's registration of the collusion.sodomain. The story begins with Rudy Giuliani, former New York mayor and currentattorney to President Donald Trump. Last year, some Twitter users noticed that Mr.Giuliani was making typographical errors in his tweets in a way that inadvertently createdwell-formed URLs. A September 15, 2018 tweet read, in part, as follows: "#REALNEWS:Woodward says no evidence of collusion.So does Manafort's team."

Our client noticed that Mr. Giuliani had inadvertently tweeted the URL"collusion.so" and decided to register the domain name. As a comment on U.S. politics,our client chose to direct the URL to the Lawfare blog's collection of articles regardingconnections between President Trump and Russia. Our client has no association with theLawfare blog.

The registration of collusion.so received some press coverage.

[....]

In your letter, you write that the COLLUSION mark is the "ultimate youth label"and explain that ASOS recently launched a clothing line under this brand. You claim thatour client is "taking unfair advantage of ASOS' reputation in the COLLUSION brand andthe COLLUSION trade mark by luring customers to your website for your own gain."These allegations are ludicrous.

Trademark infringement requires, "use in commerce [of a] copy, or colorableimitation of a registered mark in connection with the sale, offering for sale, distribution, oradvertising of any goods or services on or in connection with which such use is likely tocause confusion, or to cause mistake, or to deceive." 15 U.S.C. 1114(1)(a). Our client'sregistration of the collusion.so mark for an act of sardonic political commentary is not a"use in commerce" subject to trademark law. See Koch Indus., Inc. v. Does,2:10CV1275DAK, 2011 WL 1775765, a *7 (D. Utah May 9, 2011). Moreover, there is nopossible claim of confusion regarding your client's youth clothing line. Visitors to thecollusion.so domain are directed to a website that relates to the dictionary (andcontemporary political) meaning of "collusion." See Informa Business Information, Inc. v.Privacydotlink Customer 640040 / Domain Manager, Web D.G. Ltd., WIPO Case No.D2017-1756 (denying UDRP complaint where "disputed domain name [was registered]for its generic or descriptive value and has not used it in a manner that trades off theComplainant's trade mark rights").

While you might not have been expected to know the entire story behindcollusion.so, two facts would have been immediately apparent if your firm had performeda cursory investigation before sending its letter. First, a simple WHOIS search reveals thatour client registered collusion.so on September 16, 2018, which is before your clientlaunched the COLLUSION clothing line. As your own letter explains, ASOS launched itsCOLLUSION line on October 1, 2018. Second, if you had visited collusion.so you wouldhave seen that it directs visitors to a page about the alleged political collusion between theTrump campaign and Russia. From these facts, it should have been apparent that theregistration of collusion.so did not in any way relate to your client's business and was nottrademark infringement.

EFF senior staff attorney Daniel Nazer has no interest in letting Asos lawyer, Stobbs, off easy either:

I note with some concern that your law firm appears to have a history of abusivetrademark complaints and reverse domain hijacking. Reverse domain name hijackingmeans "using the [UDRP administrative process] in bad faith to attempt to deprive aregistered domain-name holder of a domain name." See Rules For Uniform Domain NameDispute Resolution Policy, Rule 1 definitions.

In Virgin Enterprises Limited v. Domain Admin/This Domain is for Sale,Hugedomains.com, WIPO Case No. D2017-1961, Stobbs IP represented the complainant.The Panel found that "the Complaint was made in bad faith as an attempt at ReverseDomain Name Hijacking, constituting an abuse of this administrative proceeding." Id. ThePanel further noted that "[t]he Complainant must have realized that the disputed domainname was one out of many combinations of descriptive words" that that it "cannotmonopolize all combinations of dictionary words with the term "virgin."" Id.; see alsoInforma Business Information, supra (Panel made finding of reverse domain namehijacking); The Chancellor, Masters and Scholars of the University of Cambridge v.Kirkland Holdings LLC, WIPO Case No. D2015-1278 (Panel found "[s]ufficient groundsfor a finding of abuse plainly exist").

It appears that your firm has not learned the lesson of these cases and is continuingto make abusive trademark threats. At a minimum, your firm should conduct aninvestigation before sending demand letters like the one sent to our client. We urge you tobe more responsible when sending trademark cease and desist letters in the future.

Not surprisingly, Asos backed down almost immediately:

Asos contacted EFF to apologize for the cease and desist letter. Asos said the letter should never have been sent and assured us that it would take no further action against our client. We welcome the apology and hope that this case serves as an example to others who might send careless or overbroad trademark threats.

This is, of course, a good end result, but the company should know better than to (a) hire a law firm known for abusing trademark law in such a manner, and (2) approve the original sending of the threat letter.