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From: jimevans@ix.netcom.com (James Evans)
Subject: Domain names and trademark
To: staff@sierra.net

I wrote this article for the San Francisco Daily Journal, published in the yesterday's edition (July 26). It won't give you legal cites with authority, but it may help get you started.

by James Evans
It's being called the Internet domain-name goldrush, but it's shaping up to being a trademark headache.

At stake are the monikers of companies large and small on the Internet, the world's largest computer network, and what those same businesses are called outside of cyberspace. Often they are the same, as in the case of IBM or the San Francisco Examiner. Yet frequently they are not, as in the case of the San Francisco Chronicle.

The mad dash to register Internet domain names has the trademark bar debating law that seemed solid only a few years ago. With the Internet emerging as the communications medium of the future, and with companies scrambling to establish a digital presence, the principal question is what power do businesses have to preserve their trademarked names as their Internet addresses.. "I think current trademark law prevents people from registering [a well-known corporate name, such as IBM] as a domain name," said Andrew Bridges, head of the trademark practice at Palo Alto's Wilson, Sonsini, Goodrich & Rosati.

"A lot of people believe new law is required to govern domain names," he said. "But I believe current laws are sufficient. Tribunals aren't having a hard time making decisions [in cases involving trademarked names and Internet addresses]."

However, Bridges added that while the outcome would be obvious in situations where someone registers a brand name simply to sell the address to the company normally associated with the name, there is much less certainty when there's potentially a recognizable claim to the domain name.

"Trademark law addresses situations in which companies are in competition, or are behaving unfairly," he said. "In situations where the dispute is between people who each have legitimate claims on the domain name, then trademark law doesn't provide an answer. Nor should it."

As few as two years ago, most companies had never heard of the Internet, much less something as arcane as a domain name. But that has changed.

Internic, a non-profit organization responsible for registering Internet addresses, is handing out about 10,000 names a month, and that number is expected to soar as companies, including law firms, realize the value of having the business name as their Internet address.

Domain names essentially tell Internet users where an individual or company is located in cyberspace. There are two methods for categorizing the addresses - one by geography, and the other by organization.

The latter are the ones in demand, because they are shorter, which means easier to remember and faster to type into a computer. Those names generally are a combination of the owner's business designation, such as IBM or Apple, followed by a period (called dot in Internet parlance) and three letters.

The three letters signal what kind of organization it is - com for commercial entities, gov for government, edu for educational institutions, mil for military, org for non-profit organizations and net for special Internet groups.

Com is where the trademark battle is being waged. A domain name there, for example, would be ibm.com or apple.com. (Usually addresses are in lower case.)

Both IBM and Apple were prescient enough to grab their own domain names, but you can understand the consternation they might have suffered had they been slow, like McDonalds Corp., which first had to deal with a New York journalist who had registered mcdonalds.com as part of an article he wrote for Wired magazine. Sprint Communications Corp. last year tried to pull a fast one on arch-competitor MCI Telecommunications by registering mci.com. While Internic tries to block obvious attempts to register a rival's name, it took a week for the mistake to be discovered and the registration rescinded. MCI now owns mci.com.

On July 14 Internic gave homeimprovement.com to a man in Minnesota who has nothing to do with the Emmy winning television program titled "Home Improvement." The producers of the show have not yet responded publicly.

While McDonalds and MCI got their names back without judicial interference, two similar cases were fought, and then settled last year in U.S. District Court for the Southern District of New York. In MTV v. Curry, 94 Civ. 3271 (LMM), Music Television (MTV) sued former employee Adam Curry for trademark infringement, for registering and using the domain name mtv.com. Details of the settlement weren't divulged, but MTV now owns mtv.com. In Kaplan Educational Centers v. The Princeton Review, XXXXXXXXXXX, Kaplan sued John Katz, president of rival bar study course, The Princeton Review, for trademark infringement after Katz registered kaplan.com as a domain name. Details of the settlement weren't divulged, but Kaplan now owns kaplan.com.

Bruce P. Keller, counsel for the International Trademark Association and a partner in New York's Debevoise & Plimpton, said that a company that sold apples could have been the first to register apple.com as a domain name with confidence that the courts would have dismissed a challenge by Apple Computer Corp.

But you couldn't have registered apple.com, he added, merely for the thrill of it. "The law has been tested. The commercial use of somebody's name on the Internet can cause dilution and confusion of that name.

"The interesting question is if the name isn't being used in a commercial sense," Keller said. "That makes the factual matter more intriguing, but theoretically it still creates a problem for the trademark owner.

"I think that as the Internet becomes more and more commercial, and that's happening rapidly, it will be easier and easier for trademark owners to prove dilution and infringement, and those are the bedrock of trademark infringement in the U.S." But David Kovanen, vice president of Corporate Intelligence Corp. in Browns Point, Washington near Seattle, has a different perspective. "The law is so excruciatingly well-trod in that area.

"If you register ibm.com and you market white mice, or do nothing with it, then there's no violation," he said. "Ivan B. Martin probably can get along with ibm.com, so long as he walks the street very narrowly.

"But if he decided to open a computer sales company, that would be infringement. With companies like IBM and Coca-Cola, they are so well known there's little that can be done that doesn't infringe."

Kovanen, who is not a lawyer, said his company encountered a situation in which somebody registered a domain name that should have been owned by Corporate Intelligence, but little could be done about it..
"It's interesting law, and hungry lawyers make it more interesting," he said. "But from a businessman's perspective it's not so interesting. New trails wind up getting cut through the same old precedents."

One of those new trails potentially is the trademarking of the domain name itself, but the Patent and Trademark Office stands in the way of anyone attempting to blaze through the wilderness. According to Lynne Beresford, the PTO's trademark legal administrator, the PTO is recommending a policy of denying the granting of marks to Internet domain names, unless those names already function as trademarks.

The recommended guidelines haven't been released to the public yet, but presumably will generate heated discussion once the trademark bar and business community understand the inherent irony of the policy.

Yet all of that may be academic to companies that fail to act now by registering a suitable domain name, said Carl Oppedahl, a patent and trademark specialist in New York who believes that law firms especially will have a tough time arguing trademark infringement, given a distinct lack of name recognition. Calls for Internic to become an Internet policing agency by doing an expensive trademark search on every domain name application would be wasteful and unnecessary, he said. "It's a transitionary problem. All the big companies eventually will have their own names."

But they may not be the names they wanted. Some of the biggest firms in the country have acted successfully, like Brobeck, Phleger & Harrison with brobeck.com and Cooley Godward Castro Huddleson & Tatum with cooley.com.

But others either risk missing their name or already have seen their opportunity pass. Keller's own New York firm, Debevoise & Plimpton could still get debevoise.com, but already has lost out on dp.com.

Closer to home, Morrison & Foerster can't have either morrison.com or mf.com, and Pillsbury Madison & Sutro will have to settle for something other than pillsbury.com or pms.com. "The early bird gets the worm," said Oppedahl.

This copyrighted article is included here by kind permission of the author.

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