Needless to say there is plenty of interest in the BitTorrent brand, and in some cases this demand is being exploited by third-party companies. Some of these companies use the BitTorrent name to trick people into downloading their software or buying their services.
Two years ago BitTorrent filed a lawsuit against one of these alleged “scammers,” the German-based company Bittorrent Marketing GMBH.
The German namesake owns the German and European trademarks for BitTorrent and previously registered several related domain names such as Bit-Torent.com, Bit-Torrent.com and Bitorrent.net. Some of these domains have been used to point people to paid products.
“BitTorrent filed this action to put an end to Defendant’s use of BitTorrent’s trademarks to promote what Defendant touts as an ‘advertising affiliate program’ used to ‘post ads and earn commissions..,” the company explained to the court.
In addition, it accused the company of other cybersquatting activities including the interception of confidential email. As the German company failed to respond, BitTorrent Inc. asked the court for a default judgment, which was granted this week.
United States District Judge Beth Freeman ruled that Bittorrent Marketing GMBH is guilty of trademark infringement and awarded $2,230,000 in damages to BitTorrent Inc. In addition, the German company has to sign the 54 disputed domain names over to the California company.
In her order the Judge notes that the use of the trademarks in the United States was “likely to cause confusion,” and considered to be infringing. The court acknowledges that Bittorrent Marketing GMBH offered download products, but concludes that it aimed to deceive BitTorrent users and ransom the domain names.
“Even when Defendant offered digital download products and services on the Infringing Domain Names, such offers were deceptive because paying customers would not actually receive the purchased services,” Judge Freeman writes.
“Such conduct evinces an intent to intentionally diminish the value of Plaintiff’s trademark through customer confusion and frustration and, in turn, force Plaintiff to eliminate such blemishes on its trademark by acquiring the Infringing Domain Names from Defendant,” Freeman adds.
The court order further mentions that the owner of Bittorrent Marketing GMBH repeatedly registered domain names “in an effort to extort money” from BitTorrent Inc.
The damages award is lower than the $100,000 per domain BitTorrent Inc. asked for as Judge Freeman tailored them to an amount she “considers just.” The Judge awarded $35,000 for 38 domain names that incorporate misspellings, $50,000 for 14 domains with the correct “bittorrent spelling” and $100,000 for two domains where it advertised download services.
In addition the German company is barred from using the BitTorrent trademark to advertise its services. The 54 domain names that were at the basis of the dispute will be signed over to BitTorrent Inc within two weeks.
Bittorrent Marketing GMBH’s owner Harald Hochmann has published several statements on Bittorrent.eu telling his side of the story. Talking to TorrentFreak, Hochmann denies many of the allegations.
“The key point is, and that is 100% true, that I have NEVER asked BitTorrent Inc. for millions as BitTorrent Inc’s former CFO and General Counsel Mitchell Edwards declared under oath,” he says.
In addition, Hochmann points out various other flaws and inaccuracies in the order. However, since the company initially failed to reply the company’s response in the U.S. case came too late.