On Wednesday, Domain Name Wire broke news of another interesting cybersquatting case: Automattic successfully defended their right to use Thesis.com, despite opposition from the Thesis framework developer, Chris Pearson.
Although Automattic is a separate legal entity, this case certainly draws parallels to the WordPress Foundation’s legal wrangle with TheWordPressHelpers.com.
Automattic vs. Pearson
According to the legal documents, both Automattic and Pearson were approached by a third-party regarding the purchase of Thesis.com. Automattic won the ensuing bidding process with a bid of $100,000, and the domain was transferred into their ownership.
In response, Pearson filed a domain dispute with the National Arbitration Forum, seeking ownership of the domain for himself.
In June, a three-person panel was assigned to the case.
The Case for Pearson
All details of the case are available for public consumption.
Allow me to paraphrase Pearson’s main contentions:
- Pearson has legal right to the THESIS trademark, having filed with the US Patent and Trademark Office in 2011.
- The domain name, Thesis.com, is identical to Pearson’s THESIS trademark.
- Automattic does not offer any products or services using the THESIS name.
- Automattic aims to use the Thesis.com domain to sell competing products (WordPress themes).
- Automattic is using Thesis.com to deliberately confuse customers–Thesis.com currently points to ThemeShaper, Automattic’s theme division.
The Case for Automattic
In response, Automattic raised their own contentions:
- Thesis is a generic term.
- Automattic is not using Thesis.com to sell themes. They are using it as a blog.
- The website invites users to debate topical issues. Bearing in mind the dictionary definition of the word “thesis,” this constitutes reasonable use.
- Automattic was the legitimate high bidder for the Thesis.com domain.
- Pearson has not provided enough supporting evidence of bad faith in his opposition of Automattic.
- On the redirected Thesis.com website, Automattic never alludes to any connection with Pearson’s Thesis framework.
It’s worth pointing out that the Automattic defense was not submitted within the required timeframe. Although no exceptional circumstances are known, the panel controversially accepted Automattic’s contentions.
In the end, the panel sided with Automattic, which means the Thesis.com domain will remain in their ownership.
Despite Automattic having no rights to the THESIS trademark and having no legitimate interest in the Thesis.com domain, the panel determined that Pearson failed to provide enough supporting evidence that the domain was used in bad faith—in other words, to deliberately confuse potential customers.
In the notes, the panel points out that Pearson did not provide an exhibit proving that Thesis.com is redirected to Automattic’s theme division. They even noted that had the evidence been submitted, the outcome may have been different.
By failing to satisfy the criteria of bad faith, the Thesis.com domain remains in Automattic’s hands.
As I’ve already mentioned, Automattic and the WordPress Foundation are completely separate legal entities. As any knowledgeable WordPress user will tell you, however, the two are strongly connected. Therefore it’s quite the coincidence that both are embroiled in their own cybersquatting battles.
In the WordPress Foundation versus TheWordPressHelpers.com case, the Foundation received the majority of community support. In this case, however, the community is mostly against Automattic. Because of the similarities in the cases, it’s surprising that the WordPress Foundation and Automattic find themselves on opposing sides of the community’s support.
In particular, this point made in Automattic’s defense stuck out to me:
The resolving site [Automattic] does not claim to be Complainant [Chris Pearson] or an agent of Complainant, and therefore does not create confusion as to the source, sponsorship, affiliation, or endorsement of the <thesis.com> domain name with Complainant.
This is the same defense used by Jeff Yablon in TheWordPressHelpers.com’s dispute, and one that was rejected by the WordPress Foundation. Now it’s being used to support Automattic’s case.
In my opinion, although seemingly legal, Automattic have misjudged this one. Again, this is perhaps more of a moral issue than a legal one, and morally-speaking, Automattic got this wrong.
Although THESIS is a generic term, in the WordPress community, we all know it to mean the Thesis framework. With this in mind, and considering that Automattic operates in this same industry, Thesis is not just a generic term—it’s associated with a trademarked product.
Automattic has no products/services named Thesis, and so it had no reasonable justification for bidding for the Thesis.com domain, other than to deprive the domain from a competitor—and possibly to antagonize a competitor for which there’s been previous bad blood.
If you side with the WordPress Foundation in the other cybersquatting battle, you have to oppose Automattic here.
What are your thoughts on Automattic’s cybersquatting case against Chris Pearson? Share your thoughts in the comments below!