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Contents | Special
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AJAX.ORG
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In September 1998, Colgate-Palmolive
sent a cease and desist letter to the co-founder of
AJAX.ORG,
claiming that the site diluted the corporation's
famous brand. The developer of the site began using
the name of an ancient Greek warrior in high school
ten years earlier. Within weeks of Colgate's
demand, another
site posted a
petition with 1,368 signatures protesting the
multinational's threats to shut down the small
non-commercial operation. The corporation backed
down in October, explaining that the site's content
did not lead to customer confusion over its
source.
|
Domain
name "little guys" fight back,
by Dan Goodin (C/Net - January 20, 1999)
Colgate
Hit by a White Tornado, by Heidi
Kriz (Wired - October 20, 1998)
AJAX.ORG
wins trademark fight, by Paul
Festa (C/Net - October 20, 1998)
Ajax'
Colgate-Palmolive Victory Story
Cease
and desist letter (September
24, 1998)
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ALTAVISTA.COM
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|
A long and complex battle for the
ALTAVISTA.COM
domain name was settled in July 1998 when
Compaq
Computer Corp, owner of
the popular Alta
Vista search engine, reportedly
agreed to pay a record-breaking $3.35 million to
Alta Vista Technology, a California software
startup, for the Internet address. Alta Vista
Technology registered the domain name in 1994, more
than a year before the search engine was launched.
In March 1997, a federal judge ordered Alta Vista
Technology to change its logo and add a disclaimer
on the site, which attracts nearly a million
visitors a day looking for the search engine.
Compaq inherited the search engine when it bought
Digital Equipment Corp. in January 1998.
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Compaq
buys ALTAVISTA.COM, by Tom
Diederich (Computerworld - August 12, 1998)
Compaq
buys AltaVista domain, by Janet
Kornblum (C/Net - August 11, 1998)
AltaVista
domain name deal due soon, by Tom
Diederich (Computerworld - July 31, 1998)
Compaq
Says No Deal On AltaVista Domain,
by John Borland (TechWeb - July 28, 1998)
San
Jose Man Hits Gold: $3.3 Million Web
Name, by Julia
Agwin (SF Chronicle - July 28, 1998)
Digital
defends its turf, by
Christine MacDonald (C/Net - October 31,
1996)
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AOLSEARCH.COM,
AOL-CASINO.COM
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|
In June 1999, NSI revoked a woman's
AOLSEARCH.COM domain name when she failed to
respond to its 30-day warning that a trademark
claim had been initiated by America Online. The
site was a clearinghouse for links about
African-American issues and cultures. The
registrant claimed she never received the
notification, but NSI said the contact information
was incomplete and deleted the name from its
database.
In June 1998, America Online
obtained a cease and desist order against a German
on-line casino operating at AOL-CASINO.COM for
violation of its trademark rights.
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AOL
beats Netizen in domain spat,
by Jim Hu (C/Net - June 25, 1999)
AOL
Accused of Stealing Web Address for New Search
Site, by Brian
McWilliams (InternetNews - June 23, 1999)
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APPLEIMAC.COM
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A Canadian teen who registered
APPLEIMAC.COM to advertise his web hosting company
received a cease and desist letter on February 18,
1999 from Apple
Computer Co. The
17-year old student countered with a demand that
Apple donate 30 iMacs to a local school. In
mid-April 1999, he agreed to surrender the domain
name to the computer company.
|
Student
surrenders APPLEIMAC.COM domain,
by Reuters (C/Net - April 26, 1999)
Teen
in dispute with Apple over domain,
by Beth Lipton (C/Net - February 19, 1999)
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AVERY.NET,
DENNISON.NET
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- 999 F. Supp. 1337 (C.D. Cal.
3/19/98): A
federal judge in Los Angeles ruled that
FreeView
Listings, of
Canada must relinquish AVERY.NET and
DENNISON.NET to the trademark owner,
Avery
Dennison. Jerry
Sumpton, founder of FreeView, was ordered to
convey the domain names to Avery Dennison for
$300 apiece. Sumpton has registered thousands of
domain names, which he leases for an annual fee
to people seeking e-mail addresses that match
their surnames. The judge said Sumpton's use
lessened Avery's ability to identify its
products on the Internet, even though the
company registered and uses the domain names
AVERY.COM and AVERYDENISON.COM. The judge
dismissed claims against NSI, which was named as
a co-defendant in the litigation. Sumpton filed
an appeal on the ruling in favor of
Avery.
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Taking
Thy Name in Vain, by David M. Kelly and
Marjorie Goux (IP Magazine - July 1998)
Speculator
in Vanity Domain Names Loses to Big-Name
Business (NYT - April 26,
1998)
Ruling
on Internet names opens a can of
worms (NANDO.NET - April 21,
1998)
Vancouver
company appeals order restricting use of Internet
domains (Boston Globe - April 20,
1998)
Avery
Dennison Corp. v. Jerry Sumpton, et. al.,
Order
Granting Plaintiff's Motion, U.S. Central
District of California - March 19, 1998)
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BARBIEBENSON.COM,
BARBIESPLACE.COM, BADBARBIES.COM
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(N.D. Cal 2/99):
Mattel,
manufacturer of the popular Barbie dolls, filed a
lawsuit in the U.S. District of Los Angeles against
Internet Host, an ISP that registered
BARBIESPLACE.COM and BADBARBIES.COM. The suit
alleges that Oregon-based Internet Host intended to
trade on dollmaker's goodwill and to extort payment
to transfer the domain names to the trademark
owner.
Mattel also complained to Barbie
Doll Benson that her steamy website infringes on
its well-known trademark. The exotic dancer
received a letter demanding that she transfer her
BARBIEBENSON.COM
domain name to the toy manufacturer. Benson, who
established the site in 1997 to break away from her
stripping career, told Mattel to keep its hands off
her domain.
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Barbie
is a monogamous domain (TechWeek -
February 8, 1999)
Mattel
sues ISP over Barbie domains,
by Bloomberg News (C/Net - February 4, 1999)
Barbie
website leads to lawsuit (Toronto
Sun - December 21, 1998)
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BARRYDILLER.COM
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- Media mogul Barry Diller and his
company, USA
Networks, sued
three men, who do business as Thoughts
and Cybermultimedia, for
hawking BARRYDILLER.COM for $10 million. The
suit was filed in New York State Supreme Court
on June 23, 1999. The defendants pooled about
$40,000 to purchase domain names of famous
people for resale.
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Diller
sues cybersquatters, by
Bloomberg News (C/Net - June 23, 1999)
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BEANIEBABY.COM,
BEANIECOLLECTIBLES.COM
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- No. 99C 0692 (N.D. Ill -
2/3/99):
Ty,
Inc.,
manufacturer of the popular Beanie Babies
stuffed toys, filed suit against a Missouri
woman who registered the domain name
BEANIEBABY.COM. Ty charged that the woman used
the company's trademark as her website address
to profit from Ty's name recognition. Her
complaint for declaratory judgment and motion
for dismissal were dismissed by the U.S.
District Court of Missouri. Ty registered
BEANIEBABIES.COM and reportedly was offered the
BEANIEBABY.COM site for $1.25 million. The site
posts a disclaimer that it is not affiliated
with Ty. In April, Ty brought suit against an
Arizona woman who registered
BEANIECOLLECTIBLES.COM, which leads to
information about an adult retirement
community.
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Woman
accused of Beanie trademark breach,
by Bloomberg News (C/Net - April 29, 1999)
Beanie
Baby maker sues woman over Web
site, by Judith
Vandewater (PostDispatch - February 6, 1999)
Woman
sued over Beanie Baby site,
by Bloomberg News (C/Net - February 5, 1999)
Ty, Inc. v. Mickey Collett, dba
Professional Promotions and CoolBeans, Complaint,
No. 99C 0692, N.D. Ill (February 3, 1999)
Mickey Collett v. Ty, Inc.,
Complaint
for Declaratory Judgment, No.
4:99CV00144CDP (January 28, 1999)
Gardner, Carton & Douglas,
Cease
and Desist Letter (January 19, 1999)
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BEWITCHED.COM
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BEWITCHED.COM is the domain name
Martin Wattenberg and his wife registered in May
1996 to market their Java applets. Two-and-a-half
years later, they received a call from Columbia
TriStar Interactive, demanding they relinquish the
name which matched a popular TV show produced by
TriStar in the 1960s. Columbia TriStar is a part of
Sony, which owns two design marks for the show. The
Wattenberg's sought help from the World Wide Web
Artists Consortium (WWWAC) mailing list, with 3,000
subscribers. No lawsuits havbeen filed and
Wattenberg is optimistic about reaching a
settlement with the company.
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One
Couple's Struggle - Silicon
Alley Reporter (November 17, 1998)
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CDS.COM
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|
Civil No. 97-793-HA (D.Or.
4/22/98):
CD
Solutions, Inc., a
replicator of compact disks, registered the domain
name CDS.COM in February of 1996. Fifteen months
later, CDS Networks, one of twelve owners of U.S.
trademarks for "CDS", lodged a challenge for the
domain name. On May 19, 1998, CD Solutions received
a final judgment from the U.S. District Court for
the District of Oregon that its CDS.COM domain name
does not infringe the trademark registered to CDS
Networks for printing and desktop publishing
services. The court concluded that the mark itself
now denotes a term in common usage and is not
entitled to protection as a strong mark.
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CD Solutions, Inc. Press
Release re: Final Judgment
(May 19, 1998)
CD Solutions, Inc. v. CDS Networks,
et.al., #97-CV-793, Pacer
Record (U.S.
District of Oregon, - May 22, 1998)
CD Solutions, Inc. v. John Cleven
Tooker, Commercial Printing Co., CDS Networks,
et.al., #97-CV-793-HA, Opinion
and Order (U.S.
District of Oregon, - April 22, 1998)
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CLAREMONTMCKENNA.COM
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The Assistant Vice President for
Marketing and Public Relations at Claremont
McKenna College in Southern
California demanded that the students who
established a website at CLAREMONTMCKENNA.COM
relinquish the domain name to the admistration for
a nominal fee. Although the college official
praised the site, saying that it "showcases the
entrepeneurial spirit of CMC," he claimed that the
domain name infringes on the trademark rights of
the college. The site includes a disclaimer of
affiliation with CMC with a link to the official
website at MCKENNA.EDU
|
CMC
Administration Attacks
CLAREMONTMCKENNA.COM
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CREDIT.COM
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|
Ater receiving a letter in March
1999 from Creditcomm, of Virginia, demanding that
CREDIT.COM
change its name, the California company fought back
by filing a million dollar lawsuit in federal
court. The suit accuses Creditcomm of unfair trade
practices. CREDIT.COM has been online since 1994
and provides credit reports, loan information and
other services to 300,000 website visitors each
month.
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Trademarks
scuttle plans for web names,
by Joseph Menn (Denver Post - May 10, 1999)
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EARTH.COM
|
- In November 1998, Massachusetts
clothing company sued the operator of a small
hobbyist website at EARTH.COM, alleging unfair competition of
Mondial Trading Company's trademark to market a
line of shoes. EARTH.COM was established in 1994
and is not used for any commercial activiities.
Mondial acquired the "earth" and "earth shoe"
trademarks, which were registered in 1985.
Mondial asked the court to transfer all interest
in EARTH.COM to the trademark owner but
dismissed (without prejudice) its litigation
against the domain registrant in March
1999.
|
Mondial Trading Co. v. Tony
Sanders, dba EARTH.COM, Notice
of Dismissal, U.S.
District Court of Massachusetts, 98 Civ 12376 WGY,
(March 5, 1999)
Domain
dispute hits earth, by Dan
Goodin (CNet- February 12, 1999)
Mondial Trading Co. v. Tony
Sanders, dba EARTH.COM, Complaint,
U.S. District Court of Massachusetts, 98 Civ 12376
WGY, (November 19, 1998)
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GWBUSH.COM
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- A satirical website at
GWBUSH.COM caused the Texas governor and likely
presidential candidate to call for "limits to
freedom" and issue a cease and desist letter
citing misappropriation of text and images from
GEORGEWBUSH.COM. The politician also filed a
complaint on May 3, 1999 with the Federal
Elections Commission. The brouhaha drew media
attention worldwide.
Documents and links to press
reports at http://www.rtmark.com/
|
Benjamin L. Ginsberg, Esq. to Zack
Exley, Cease and Desist Letter (April 14,
1999)
Complaint
to Federal ElectionCommission
(May 3, 1999)
Press Release: George W. Bush
Lashes Out at Parody Website (May 20, 1999)
Bush
criticizes web site as malicious,
by Wayne Slater(Dallas News - May 22, 1999)
Press Release: Bush Requests
"Limits to Freedom" (May 26, 1999)
Bush
shows how not to handle the
Internet, by Rebecca
Fairley Raney (NYT - June 6, 1999)
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|
JEWSFORJESUS.ORG
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|
993 F.Supp 282 (D.N.J.
3/6/98): The
missionary organization, Jews
for Jesus, filed a
federal lawsuit in New Jersey against Stephen
Brodsky, who registered the domain name
JEWSFORJESUS.ORG. The suit charged Brodsky with
unauthorized use of the group's trademark and
alleged that he is a "self proclaimed antagonist"
of the organization. Plaintiffs' claims for
trademark dilution and infringement as well as
unfair competition and false designation of origin
were upheld. By Summary Order (2d. Cir. Feb. 9,
1998), the court enjoined defendant's unauthorized
operation of the website, which was highly critical
of the Jews for Jesus organization.
|
A-TCPIP/DNRC
Amicus Curiae Brief (DNRC - May
1, 1998)
Jews
for Jesus Critic Appeals to Higher
Court (LJX -April
24, 1998)
Brief
of Appellant Steven C. Brodsky
(LJX - April 22, 1998)
Ruling
Draws a Line on Trademarks and the
Web (NYT -
March 13, 1998)
Jews
for Jesus antagonist ordered to change Web
address (Reuters -
March 7, 1998)
Religion
group in domain dispute (NEWS.COM -
January 23, 1998)
Jews
for Jesus Bulletin Briefing - Counter Missionaries
on the Internet Charged as Fradulent and
Deceptive (LJX -
December 24, 1997)
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LINUX.COM
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|
Not a dispute but a bidding war for
rights to the LINUX.COM domain name. Offers were
submitted by Microsoft, Red Hat, Compaq, and
Hewlett-Packard. The new owner, VA
Research, paid
substantially less than the top bid of $5.5
million.
|
The
bidding war for LINUX.COM, by Stephen Shankland
(C/Net - March 2, 1999)
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LIVE.COM
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|
A year after Live
Networks, Inc. registered
LIVE.COM (December 1994), the domain name was
challenged by Live
Entertainment, a
corporation with a registered trademark for a
stylized logo that contains the word "live". Live
Entertainment asserted no trademark infringement,
but Network Solutions, Inc. placed the domain name
on hold in early 1996 according to a dispute policy
introduced after the domain name was registered. No
litigation was filed. The dispute was resolved in
July 1998 when Live Entertainment changed its name
to Artisan Entertainment and was persuaded to drop
the dispute.
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MARKSANDSPENCER.COM,
BT.ORG, VIRGIN.ORG, SAINSBURYS.COM
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|
High Court of Justice - 11/28/97;
Court of Appeal - 7/23/98):
Five companies in the United Kingdom -- BT, Marks
& Spencer, Ladbroke, J. Sainsbury, and Virgin
-- sued entrepreneurs Richard Conway and Julian
Nicholson, who registered the famous British
company names as domains for resale. In November,
1997, the U.K. High Court granted injunctions
against the One
in a Million for the
threat of "passing off" and trademark infringement
and ordered the two Brits to surrender the domain
names and pay 65,000 pounds to the trademark
owners. While the pair denied any intent to
deceive, the appellate judges affirmed that the
threat of "passing off" had been demonstrated and
that the domain name registrations were
"instruments of fraud". The appeal was dismissed
on July 23, 1998 and that judgment cannot be
appealed to the House of Lords.
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UK
Stands Firm on Domains, by Mike
Bracken (Wired - July 28, 1998)
British
"Cybersquatters" Lose Appeal,
by Andrew Craig (TechWeb - July 27, 1998)
UK
court outlaws domain name "pirates"
(Internet Magazine - July 24, 1998)
Judges
uphold Net names ban (BBC - July
23, 1998)
Court
Whacks Domain Name Dealers,
by Reuters (Wired - July 23, 1998)
Marks
& Spencer PLC, British Telecounications PLC,
Virgin Enterprises, LTD, J.Sainsbury PLC, Ladbroke
Group PLC v. One in a Million, et.
al.,
Judgment (On Appeal
in the High Court of Justice, Supreme Court of
Judicature Chani, 98/0025/B - July 23, 1998)
Appeal
against Internet ban (BBC - June
30, 1998)
Interview
with Richard Conway, by John
Borland (TechWeb)
Marks
& Spencer PLC v. One in a Million, et. al.,
Judgment (High Court
of Justice, Chancery Division, CH1997 M.5403, 5404,
5402, 5401, 5421 - November 28, 1997)
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MICROSOFTOFFICE.COM,
MICROSOFTWINDOWS.COM, MISROSOFT.COM and
MNSBC.COM
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|
No. 98-04245 (S. D. Tex -
12/21/98): Software
titan Microsoft
filed suit against two Texans who registered
MICROSOFTWINDOWS.COM and MICROSOFTOFFICE.COM,
MICROSOFTKIDS.COM, MICROSOFTPRESS.COM,
WINDOWSFILES, and 5 other domain names, alleging
infringement of the company's trademarks and
misleading the public. The lawsuit sought
preliminary and permanent injuctions, undisclosed
damages, rights to the domain names, and any
profits derived from them. Defendants TEXASRGV.COM
and TRADEMARKDOMAINS.COM allegedly have registered
a long list of commercial names with the intent to
sell them to the trademark owners. The Texas judge
ruled for the plaintiff and ordered the domain
names to be relinquished to Microsoft. No punitive
damages were awarded.
(C.D. Cal -
4/13/99): Microsoft
and MSNBC sued three Los Angeles County residents
who registered domain names similar to their
own--MISROSOFT.COM and MNSBC.COM--to lead those who
misspelled the names to their own pornographic
sites.
|
Microsoft
sues over misleading domains
(C/Net - April 14, 1999)
Domain
decisions favor plaintiffs
(C/Net - February 24, 1999)
MS
sues men over domain names
(USA Today - January 7, 1999)
Microsoft
files suit against Texans (NYT -
January 1, 1999)
Microsoft
takes on "domain squatting
(C/Net - December 31, 1998)
Microsoft
files suit against domain pirates,
by Matt Hines (Newsbytes - December 30, 1998)
MS
declares war on 'cyber-squatters',
by Margaret Kane (ZDNet - December 30, 1998)
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MOVIEBUFF.COM
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|
California-based Brookfield
Communications, operator
of MOVIEBUFFONLINE.COM,
filed suit against West Coast Entertainment Corp.
to prevent its planned launch of a website at
MOVIEBUFF.COM.
The complaint alleged trademark dilution and unfair
competition of a common law mark in use since 1993.
Because Brookfield did not have a federal trademark
for the disputed domain name at the time it was
registered, MOVIEBUFF.COM was not placed on hold by
NSI. The District Court denied plaintiff's motion
for a preliminary injunction until the case was
resolved. The Ninth Circuit Court of Appeals
reversed on April 22, 1999 holding that domain
registration does not in itself constitute 'use'
for purposes of acquiring trademark priority, and
that the senior user of a mark used to identify
goods or services in commerce is the legitimate
owner of the mark. The defendant was enjoined from
using plaintiff's "moviebuff" trademark in either a
domain name or meta tags on defendant's web
site.
|
Court
Rules Registered Domain Name Is Not
Trademark, by
Elizabeth Clampet (IW - April 26, 1999)
Brookfield Communications Inc. v.
West Coast Entertainment Corp., Opinion,
No. 98-56918, U.S. Court of Appeals, Ninth Circuit,
D.C. No. CV-98-09074-CRM, Argued and Submitted
March 10, 1999 - San Francisco, California (Filed
April 22, 1999)
Domain
ownership isn't a trademark,
by Dan Goodin (C/Net - April 23, 1999)
Ninth
Circuit Rules on Net Trademark
(Law News - April 23, 1999)
Brookfield Communications Inc. v.
West Coast Entertainment Corp., Complaint, 98-9074,
C.D. Cal., (November 10, 1998)
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NINA.COM
|
|
Actress Nina
Hartley, who
registered NINA.COM in 1995 to establish an adult
entertainment website, filed suit on January 28,
1999, against Nina Footwear, a New York shoe
company, to prevent NSI from suspending her use of
the domain name. The manufacturer trademarked the
"Nina" name in 1969 for shoes and 1987 for
handbags, and filed a challenge with NSI against
the erotic star's domain name registration.
|
I
Need Your HELP, by Nina
Hartley (NINA.COM - January 28, 1999)
|
|
OGGI.CO.NZ
|
|
Oggi Advertising filed suit against
a domain registrant pf OGGI.CO.NZ, joining the
Internet
Society of New Zealand (ISOCNZ)
and alleging that New Zealand's domain registry
conspired to "passing off" (using the advertiser's
intellectual property in a deceptive manner). Oggi
Advertising does not have a registered trademark
for the Oggi name. This was the first litigation
filed against ISOCNZ or its domain name company,
Domainz.
The Auckland (NZ) High Court granted an interim
injunction and ordered the domain registrant to
relinquish the name but did not rule on the
liability of the registrar. Domainz sued the
litigant for reimbursement of costs and was awarded
a near maximum of $10,000 in November, 1998.
|
High
Court endorses Domainz processes
(Domainz - November 13, 1998)
Domainz
seeks costs from Oggi Advertising
(Domainz - June 30, 1998)
Letter
to IDG Editor in reply to June 22
article (Domainz -
June 29, 1998)
Domainz
to reclaim thousands spent defending Oggi
case
(Computerworld - June 22, 1998)
Oggi
case proves ISOCNZ and Domainz
approach (Domainz -
June 11, 1998)
Ad
Agency Sues in Domain Dispute
(Aardvark Daily - May 12, 1998)
ISOCNZ
to defend lawsuit (Domainz -
May 7, 1998)
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|
OREOS.COM
|
|
The developer of an adult site at
OREOS.COM received a cease and desist letter from
Nabisco
Corp., makers of
the famous sandwich cookies of the same name. A
threatened lawsuit was avoided when the registrant
surrendered the domain name.
|
Oreos
domain in dispute (NEWS.COM -
January 29, 1998)
|
|
PANAVISION.COM
(update)
|
|
141 F.3d 1316 (9th Cir.
4/17/98): On April
30, 1998, the 9th U.S. Circuit Court of Appeals
upheld a summary judgment motion [945 F. Supp. 1296
(C.D. Cal 11/1/96)] against Dennis Toeppen, who had
registered the domain name PANAVISION.COM and
offered to release it to the trademark owner for
$13,000. The court found that Toeppen's actions
violated California and federal trademark dilution
laws and that his use on the website diluted the
distinctive quality of the trademark.
|
Cybersquatter
Rebuffed on Domain Name - Ruling and two others
help set 'Net address standards (LJX - May 4,
1998)
Domain
squatters losing out (C/Net - April 21,
1998)
Tribunal
Torpedoes 'Cyber-Pirate' (Wired -
April 17, 1998)
Panavision
International, L.P. v. Dennis Toeppen; Network
Solutions, Inc., Opinion on Appeal,
No. 97-55467, U.S. 9th Circuit Court of Appeals,
D.C. No. CV-96-03284-DDP-JRx (April 17, 1998)
|
|
PAPALVISIT.COM
|
|
1999 U.S. Dist. Lexis 2877 (D.Utah
3/9/99): The
Internet Entertainment Group, a supplier of
sexually explicit material online was sued by the
Archdiocese of St. Louis and Papal Visit 1999 St.
Louis for registration of PAPALVISIT.COM and
PAPALVISIT1999.COM. The sites provided limited
information on the St. Louis papal visit, off-color
jokes about the Pope and the Roman Catholic Church,
and advertising for IEG's adult entertainment
websites. Although IEG raised a First Amendment
defense, the court ruled that such protection is
not available when the marks are used to identify
the websites as belonging to or being sponsored by
the plaintiffs. The court issued injunctive relief
to the plaintiffs, finding that the marks are
famous and distinctiive and that plaintiffs were
likely to prevail on their Federal trademark claim
of dilution by tarnishment.
|
Archdiocese of St. Louis and
Papal Visit 1999 St. Louis vs. Internet
Entertainment Group, 99CV27SNL, U.S. District Court
for the Eastern District of Missouri (Feb. 12,
1999) 1999 U.S. Dist. LEXIS 1508
Case
Summary, by Martin H. Samson (March
1999)
|
|
POKEY.ORG
|
- A 12-year old boy name
Christopher "Pokey" Van Allen, who developed a
personal website at POKEY.ORG, was challenged by Prema Toy
Company. Prema is owner of trademark rights to
the character Pokey, equine sidekick of the
better-known toy, Gumby. The trademark owner offered to
let Van Allen use the name under royalty-free
license. The dispute over the innocent PokeyWeb
site generated more than 4,500 e-mail messages
and comments sent to the child. TONIC, the
registry for Tonga, and the Australian
Root Server Confederation each offered Van Allen his own
"pokey" domains. Eventually, the court of public
opinion and reason prevailed, and Prema Toys
withdrew its claims for the domain name (April
21, 1998).
|
Gumby
creator comes to the rescue of website
host (NandoNet -
April 27, 1998)
Press
Release: Pokey the Boy and Pokey® the Horse
coexist in harmony (April 21,
1998)
Might
makes right in domain fight
(CNN Interactive - April 20, 1998)
Letter
from trademark owner withdrawing
demand (April 15,
1998)
Letter to POKEY.ORG registrant from
NSI (NSI - April 1, 1998)
An Open Letter to the Internet
Community from the creator of Gumby, Art Clokey
(March 31, 1998)
Pokey
causes Net trademark uproar
(C/Net - Mcarh 23, 1998)
Lawyers
on Pokey spat: horsefeathers!
(ZDNET.COM - March 20, 1998)
POKEY.ORG
attorneys' response to Prema Toy
Co. (December
17, 1997)
Certified
letter from Prema Toy Co., Inc. to Christopher Van
Allen (December
5, 1997)
|
|
PORSCHE*.* x
129 names
|
|
Civ. No. 99-0006-A (E.D. Va 1/6/99)
and 1999 WL 378360 (E.D.Va 6/8/99):
Automaker Porsche
Cars North America alleged in
rem jurisdiction in a trademark infringement suit
filed on January 13, 1999, against 129 domain names
related to the famous brand that "capitalize on
the goodwill and reputation of Porsche in
establishing their presence on the Internet." The
suit was filed in US District Court in the Eastern
District of Virginia, home of Network
Solutions. Porsche
announced two months later that 48 of the
defendants agreed to cancel their domain name
registrations. The court ruled that the company had
to sue individual registrants. and it dismissed the
lawsuit on June 8, 1999.
|
Court
drops Porsche cybersquatter suit,
by Bloomberg News (C/Net - June 15, 1999)
Porsche
Dealt Court Defeat Over Domain
Names, by Brian
McWilliams (InternetNews - June 10, 1999)
Porsche Cars North America v.
Porsche*.*, Memorandum
Opinion, 1999 WL
378360 E.D.Va (June 8, 1999)
Court
Case Could Stop Cybersquatters,
by Jon Swartz (S.F. Chronicle - May 27,
1999)
Porsche Cars North America v.
*Porsche*.*, et. al., Verified
Complaint for In Rem Transfer and/or Forfeitture
Based upon Trademark Dilution,
Eastern District of Virginia (January 13,
1999)
Porsche
sues online poachers, by Polly
Sprenger (Wired - January 13, 1999)
Porsche Cars North America v.
Porsche*.*, et. al, Complaint,
E.D. VA (January 6, 1999)
|
|
REACTION.COM
|
|
The U.S. District Court for the
Southern District of New York granted defendant's
motion to dismiss for lack of personal
jurisdiction. The defendant, William Cary Nash, had
offered to sell the domain name REACTION.COM to
Kenneth Cole Reaction, the owner of the "Reaction"
trademark. The Court held that Nash, a California
resident, had not transacted business within New
York as required for jurisdiction under that
state's long arm statute. The Court distinguished
this case from Panavision v. Toeppen because the
facts alleged did not support a finding that
defendant Nash was a cybersquatter.
|
K.C.P.L.
Inc., v. William Cary Nash, Memorandum and
Order, No. 98
Civ. 3773 (LMM) S.D.N.Y. (November 24, 1998)
|
|
RINGLINGBROTHERS.COM
|
|
Ringling
Brothers-Barnum & Bailey, Inc.,
has filed a "deceptive trademark" lawsuit against
People
for the Ethical Treatment of
Animals (PETA) for
registering and using the domain name RINGLINGBROTHERS.COM
to protest the circus' use of animals. (April 24,
1998). The suit was settled in May 1998. PETA
surrendered the domain name to Ringling Bros. and
moved its protest to CIRCUSES.COM.
In 1996, PETA filed its own challenge against a
parody website at PETA.ORG, established by
People
Eating Tasty Animals. That site
remains on hold.
|
Ringling
Bros. Wins Domain Skimrish
(Wired - May 14, 1998)
PETA
agrees to turn over domain name to
circus (NANDO.NET
- May 14, 1998)
DNRC
Warns that Free Speech Rights are being Eroded by
Recent Court Cases (DNRC -
April 25, 1998)
Circus
Sues Animal-Rights Group in Domain
Dispute (CMPnet -
April 24, 1998)
Circus
in domain trademark flap (NEWS.COM -
April 24, 1998)
|
|
SEX.COM
|
|
No. 98-20718800 (N.D. Cal
10/16/98): San
Francisco entrepreneur Gary Kremen filed a lawsuit
in the summer of 1998, claiming that Net porn king
Steve Cohen stole his registration for SEX.COM
by sending a a cleverly forged letter to Network
Solutions. Kremen registered the domain name on May
9, 1994 but it was transferred to Cohen on October
17, 1995. NSI has disavowed any contractual
relationship existed before it began collecting
registration fees in September of 1995.
|
The
Sordid Saga of SEX.COM, by Craig Bicknell (Wired -
April 15, 1999)
|
|
SHITAKEMUSHROOMS.COM
|
|
Confusion over domain names and
profanity is mushrooming. A domain name applicant
who tried to register SHITAKEMUSHROOMS.COM was told
by InterNIC that it is unavailable because it
contains four letters the registry considers
obscene. NSI was looking into ways to accommodate
Japanese-language domains containing the string,
but said the ban on it is still in effect.
|
NSI
lets a bad word slip (C/Net -
February 23, 1999)
Food
domain found "obscene" (C/Net -
April 27, 1998)
|
|
[name]STINKS.COM,
[name]SUCKS.COM
|
|
Legal counsel wrote to Dan Parisi,
who also operates WHITEHOUSE.COM,
demanding him to rename or remove his
anti-Netscape
site at NETSCAPESUCKS.COM.
Netscape claimed that the domain inappropriately
used its corporate trademark without prior
consent,
Some major corporations are
registering "anti-domains" to protect themselves
from the ridicule of rivals. To keep derogatory
domain names out of enemy hands, these companies
have staged a pre-emptive strike by registering the
names first. Chase
Manhattan Bank, Charles
Schwab, WalMart, Vail Resorts,and Volvo Cars of
North America have all registered anti-domain
variations. Given all the possible alternatives
that can be registered, this may be a futile
endeavor.
|
.COM
and .GOV spurs fight (TechWeek -
January 11, 1999)
Netscapesucks.com
ordered to cease and desist,
by Jim Hu (C/Net - December 1, 1998)
Who's
owner of CHASESUCKS. and CHASESTINKS.COM? Three
Guesses (Internet
World - June 15, 1998)
|
|
TOYSRGUS.COM
|
|
On January 26, 1999, lawyers for
retailer Toys
R Us sent a
cease and desist letter to Gus Lopez, a Star Wars
toy collector who operates the TOYSRGUS.COM
website. The trademark owner claimed the 5-year-old
site violates the Federal Dilution Act, but Lopez
insists it would be "inappropriate and
unreasonable" to shut down his non-commercial site.
Toys R Us has also registered KIDSRUS.COM,
BOYSRUS.COM, DOLLSRUS.COM, GALSRUS.COM,
GIRLSRUS.COM, SPORTSRUS.COM, MATHEMATICSRUS, COM,
MOVIESRUS.COM and PARTIESRUS.COM.
See also 26 F. Supp. 2d 639, 998
U.S. Dist. Lexis 17217 (S.D.N.Y. 10/28/98)
Toys
'R' Us Loses Bid to Block Gun Merchant's
Web (NY Law
Journal - November 3, 1998) -and- Toys
R Us and Geoffrey, Inc. v. Mohamad Ahmad Akkaoui,
dba. Adults R Us, Order Granting Plaintiffs'
Motion, U.S.
Northern District of CA, #C-96-3381 CW (October 29,
1996)
|
Site
reopens despite Toys 'R Us flap,
by Corey Grice (C/Net - February 1, 1999)
Legal
Threat from Toys 'R Us, Inc,,
by Gus Lopez (January 30, 1999)
The
Star Wars Collector's Archive is Now
Closed, by Gus
Lopez (January 28, 1999)
Toy
retailer takes on TOYSRGUS.COM,
by Corey Grice (C/Net - January 29, 1999)
Cease
and desist letter (Darby
& Darby - January 26, 1999) page
2, page
3
|
|
UMBRO.COM
|
|
No. 174388 (Va. Cir. Ct, Fairfax
City - 2/3/99): On
February 3, 1999, the Circuit Court of Fairfax
County, Virginia, held that domain names are
"property" and subject to judicial sale to satisfy
a monetary judgment against a domain registrant.
The decision was based on a default judgment in
favor of Umbro,
Inc., a
manufacturer of soccer equipment. The Court ordered
UMBRO.COM to be relinquished to the trademark owner
and the defendant's 27 domain sites to be garnished
to force judicial sale to satisfy $25,000
attorney''s fees and costs awarded to the
plaintiff. The defendant had no other U.S. assets
to attach.
|
Ruling
Against Domain Name Speculator Could Set
Precedent, by Carl S.
Kaplan (NYT - April 9, 1999)
Domain
names are property, court rules,
by Courtney Macavinta (C/Net - March 26,
1999)
Court
Rules Domain Names Are Property,
by Brian McWilliams (InternetWeek - March 24,
1999)
Umbro International, Inc., Judgment
Creditor v. 3263851 Canada, Inc Judgment Debtor,
and Network Solutions, Inc, Garnishee, At Law No.
174388, Letter
Opinion, 9th
Judicial District of Virginia (February 3,
1999)
A
New Sword to Combat Domain Name
Piracy (Alston
& Bird - February 1, 1999)
|
|
VARSITYBLUES.COM
|
|
After Paramount Pictures turned
down an offer to purchase the domain name of its
upcoming
comedy, Internet
speculator Jon Langley redirected VARSITYBLUES.COM
to an anti-abortion site. The movie studio sent a
cease and desist letter to Langley's company, Cyber
Movie Locations, which has also acquired several
other movie-related domain name registrations. On
January 15, 1999, Paramount filed a lawsuit in
California seeking a temporary restraining order
against Langley.
|
Dallas
man becomes a focal point in domain name
battles, by Melinda
Rice (Dallas Morning News - January 26,
1999)
An
Abortion for "Dawson" Fans,
by Malcolm Maclachlan (Wired - January 8,
1999)
|
|
VERONICA.ORG
|
|
Archie
Comic Publications is the trademark owner of
"Veronica", the name of one of its cartoon
characters, and registrant of VERONICA.COM. The publishing
company sent a cease and desist letter to David
Sams, who set up a non-commercial site at
VERONICA.ORG in honor of his
one-year-old daughter. Archie quickly dropped its
threat of a lawsuit. This case is reminiscent of
trademark challenges for POKEY.ORG and TY.COM, two
domain names registered by parents for their
children.
|
Archie
drops Veronica domain dispute,
by Reuters(C/Net - January 20, 1999)
Radio interview: Why
Veronica's dad is hopping mad at
Artchie (January
15, 1999)
Archie
Comics fights parent for domain,
by Beth Lipton (C/Net - January 15, 1999)
Sams
letter to Archie Comics (October
20, 1998)
|
|
VIAGRAFALLS.COM
and VIAGRA.CO.NZ
|
|
Pfizer,
Inc., trademark
owner and pharmaceutical manufacturer of the high
profile impotence wonder-drug Viagra, won a court
order to shut down VIAGRAFALLS.COM.
The domain address led to a sexually explitsite at
Wetlands,
which receives upwards of 165,000 visitors a day.
Pfizer is also seeking damages for injury to the
Viagra name. Earlier, a New
Zealand pharmacist who
registered the domain name VIAGRA.CO.NZ, says he
would relinquish it if requested to do so by
Pfizer. This domain name registration came under
the spotlight in the wake of the dispute over
OGGI.CO.NZ
(see above).
|
Viagra
Falls to Pfizer, by
Jennifer Sullivan and Craig Bicknell (Wired -
December 12, 1998)
Viagra
and Sex Sites Don't Mix, by
Jennifer Sullivan (Wired - December 4, 1998)
Local
man won't hold firm on Viagra
(Computerworld - June 18, 1998)
|
|
VW-BUG.COM,
VW.NET
|
|
Virtual
Works of Virginia
received a cease and desist letter from the makers
of the popular Volkswagen automobile. The Internet
Service Provider registered VW.NET in October 1996,
but Volkswagen claims the use constitutes
infringement and dilution of its mark. Virtual
Works will be forced to file civil litigation to
prevent NSI from placing the domain name on hold.
The VW trademark, registered in 1956, is
specifically International Class 12, for autos,
trucks and related parts and accessories. .NET
is designated for networking operations.
(D. Mich 5/98):
A year earlier, Volkswagen sued Amalgamated
Diversities of Utah, in federal court for
registering the domain names VW-BUG.COM,
VW-BEETLE.COM, VOLKSWAGENBUG.COM, and others.The
automaker
claims it is the only one entitled to use the
trademarked names Bug, Beetle and Volkswagen.
Amalgamated, a domain name speculator, offered to
rent the names to Volkswagen for $50 a day or sell
them for $25,000.
|
Car
makers fight for domains, by Kim
Girard (C/Net - June 17, 1999)
Volkswagen
attempts shutdown of VW.NET
(VirtualWorks - June 8, 1999)
VW
tells Internet firm to bug off
(Detroit News - June 7, 1998)
|
|
WALLSTREETSEX.COM
|
|
THESTREET.COM
filed a $5 million trademark infringement lawsuit
against WALLSTREETSEX.COM,
which it claims resembles a pornographic copy of
the financial site by reproducing its "look and
feel". The adult site provides financial
information along with steamy photos, sex videos,
erotic chat rooms and an online sex shop. The
lawsuit was filed on October 2, 1998 in the
District Court of New York. The adult site's web
access provider, Alphabit
Media of San
Francisco, was named as a co-defendent.
THESTREET.COM provides financial news and
commentary to 20,000 individual subscribers.
|
Porn
site bids $250,000 for
WALLSTREET.COM, by Reuters
(C/Net - April 8, 1999)
The Street.Com v. Wall Street
Interactive Media and Alphabit Media,
Complaint, 98 Civ,
S.D.N.Y. October 2, 1998)
TheStreet.com
sues adult site (C/Net -
October 5, 1998)
TheStreet.com
fighting sex site (C/Net -
September 29, 1998)
TheStreet.com:
Sex-stocks site is foul (C/Net -
September 10, 1998)
Net
firms mix sex, stock quotes
(C/Net - August 31, 1998)
|
|
WASHINGTONSPEAKERS.COM
and .NET
|
|
1999 U.S Dist. Lexis 980 (E.D.Va
2/2/98): In March
1998, Leading
Authorities registered
the domain names WASHINGTONSPEAKERS.COM and .NET
and WASHINGTON-SPEAKERS.COM and .NET, along with
other names incorporating the word SPEAKERS. The
Washington Speakers Bureau, which has represented
many well-know speakers for nearly two decades,
sued its rival for infringement and dilution of its
common law mark. The court found a likelihood that
consumers would be confused by defendant's use of a
"colorable imitation" of the mark and that Leading
Authorities registered the domain names in a bad
faith effort to attract its competitor's business.
Leading Authorities was directed to relinquish
rights to those names.
|
Domain
decisions favor plaintiffs
(C/Net - February 24, 1999)
Washington Speakers Bureau, Inc. v.
Leading Authorities, Inc., C.A. No. 98-634-A, 1999
U.S. Dist Lexis 980 (E.D. Va., February 2,
1999)
Case
summary, by Martin
H. Samson (February 1999)
|
|
WHITEHOUSE.COM
|
|
Counsel to President Clinton sent a
letter
to Dan Parisi, the registrant and developer of a
racy x-rated website at WHITEHOUSE.COM, challenging
his unauthorized use of likenesses of the U.S.
President and First Lady as a "marketing device"
(December 8, 1997). The site's home page showed
President Clinton in bondage, led by Hillary
brandishing a whip. The famous U.S. White House is
located online at WHITEHOUSE.GOV.
|
Government
Parasites: "Stealth" Web pages feed off
addresses (SF
Chronicle - June 3, 1998)
Deceptive
Domain Names (NPR -
March 9,1998)
Domain
name abuse a global problem
(NZ Daily Aardvark - February 5,1998)
White
House in porn domain dispute
(C/Net - February 3, 1998)
Hits
are Way Up Dept (AM News
Abuse - March 10, 1998)
When
a typo leads to porn (C/Net -
July 14, 1997)
|
|
WHOSWHOINTHEWORLD.COM
|
|
Arnold Beverly registered
WHOSWHOINTHEWORLD.COM on March 28, 1997.
Six-and-a-half months later, NSI informed Beverly
that a trademark owner had challenged the name
registration. Beverly refused any of the options
set forth in NSI's domain dispute policy and filed
suit against the registrar on December 23, 1997 in
Alameda Superior Court. NSI removed the action to
federal court on diversity jurisdiction grounds and
filed a motion to dismiss. NSI's motion was granted
on July 28, 1998 and all pending actions were
terminated. The court also noted that NSI is immune
to antitrust liability while acting in compliance
with a government program (NSF/NSI Cooperative
Agreement).
|
Arnold Beverly v. NSI and Does
1-50, Order
(Northern District of California) C-98-0337-VRW,
July 28, 1998
|
|
WORKINGWOMAN.COM
|
- MacDonald Communications
Corporation, publisher of Working Woman, Working
Mother and
Ms.
magazines, filed suit against the owner of the
Women's
Business Network (WBN),
alleging trademark infringement arising from
WBN's use of the domain name, WORKINGWOMAN.COM.
WBN publishes a woman's resource directory for
the Sacramento, California area, and registered
the domain name for a related online service in
May, 1996. A year earlier, MacDonald
Communications' predecessor, Lang
Communications, chose the domain name WOMWEB.COM
to promote Working
Woman and
other magazines for the women's market. In
February 1998, when MacDonald attempted to
register WORKINGWOMAN.COM, it learned that the
name was already registered by WBN. This case
settled in February 1999, with the operator of
the WORKINGWOMAN.COM website transferring the
domain name to MacDonald Communications
Corporation for an undisclosed sum.
|
Working
Woman Magazine in Lawsuit Over Domain
Name (August 1998)
MacDonald
Communications Corporation v. Sacramento Area
Women, Lisa Kohl and Women's Business Network
(S.D.N.Y.) 98-CIV-4873 (MBM) August 6, 1998.
|
|
WORLDSPORTS.COM
|
- No. 99-CV-616
(D.C.E.Pa): In
Worldsport Networks Ltd. v. Artinternet S.A.,
Worldsport, based in Ireland, complained that
the public would be confused by Artinternet's
use since it had simply added an S to the
trademarked owner's domain name WORLDSPORT.COM. A U.S. District Judge ordered
NSI to deregister WORLDSPORTS.COM and barred NSI
from ever permitting "the registration as a
domain name of any similar word, name or term by
any party other than plaintiff." NSI appealed,
arguing that the order effectively imposed a
duty on NSI to police the plaintiff's mark. A
federal judge reversed the earlier ruling on
April 28, 1999 but ordered NSI to review any
requests by defendant Artinternet.
|
NSI's
liability in trademark disputes, by Dan Goodin
(C/Net - April 29, 1999)
NSI
Not Domain Name Police, Lawyers
Argue, by Shannon P. Duffy (Law
News Network - March 31, 1999)
|
|
WWWCITIBANK.COM
|
- Citibank, the international financial
services firm, filed a lawsuit alleging that a
pornographic Web site at WWWCITIBANK.COM has
been wrongfully using its trademarked name to
direct users to X-rated advertisements. The suit
was filed on April 17, 1999 in Manhattan federal
court against the Internet
Entertainment Group (IEG).
Rafael Fortuny, an IEG franchisee who registered
the domain name, was named as a
co-defendant.
|
Citibank
sues porn site for trademark abuse, by (C/Net -
April 20, 1999)
|
|
WWWPAINEWEBBER.COM
|
- A U.S. District Court judge in
Virginia ruled on April 9, 1999 that the domain
name WWWPAINEWEBBER.COM be stripped from the
owner of a pornographic website. Striking a blow
to Internet bandits who capitalize on
typographical errors to lure people to their own
sites, the federal judge said, "PaineWebber is a famous mark that will be
diluted . . . by being linked with pornography."
He also ordered NSI to freeze the domain name
for registration by any other parties.
|
Judge
Strips Look-Alike Web Name, by Ianthe Jeanne
Dugan (Washington Post - April 19, 1999)
PaineWebber
wins ruling against porn link, by Bloomberg
News (C/Net - April 16, 1999)
|
|
YAHOOKA.COM,
YAHOO.COM.CN
|
|
Yahoo,
a popular Internet search engine, sent a letter
eary in January 1999 to the registrants of
YAHOOKA.COM
and YAHOOKA.NET, created as a directory to
marijuana sites on the Internet. The letter claimed
the close variation of the Yahoo mark may lead the
public to believe the site is connected with, or
sponsored by Yahoo, which would make it actionable
under the Federal Dilution Act.
In September 1998, Yahoo acquired a
domain name in the tightly regulated .CN registry.
YAHOO.COM.CN was registered to several unaffiliated
Beijing companies. Through the firms NetNames
USA, and
International
Communications Beijing
division, ChinaConnect,
Yahoo negotiated a deal to secure the Chinese
Internet address. China has since prohibited
companies from registering names that are not their
own.
On July 1, 1998, a District Court
in Tel Aviv ordered the domain name YAHOO.CO.IL to
be transferred to the domain name to the trademark
owner.
|
Yahoo
Threatens Marijuana Site With
Lawsuit (TechWeb -
January 13, 1999)
Don't
Bogart That Domain, by Steve
Silberman (Wired - January 11, 1998)
Yahoo
not amused by pot parody site,
by Beth Lipton (C/Net - January 11, 1999)
Yahoo
secures Chinese domain, by Paul
Festa (C/Net - September 1, 1998)
Yahoo!
Inc. v. Yahoo-Israel, by Adv.
Haim Ravia (July 1, 1998)
|
|
ZAP.COM
|
|
ZAP
Futures, an online
brokerage, filed a complaint for injunctive relief
against Zapata and its Internet subsidiary,
Zap,
which registered the ZAP.COM domain name. The
August 17, 1998 lawsuit was filed in the U.S.
District Court for the Northern District of
Illinois. Zapata is a fish-processing company that
has developed a portal site to compete with the
leading Net directories. Zap Futures claims the
services it offers are identical to those of Zap
and that the names are confusingly similar.
|
Zapata
in legal battle over name, by Corey
Grice (C/Net - August 18, 1998)
Zap
continues Net buying spree
(C/Net - July 16, 1998)
Zapata's
next shot at the Net (C/Net -
July 6, 1998)
Excite
rejects Zapata's bid (C/Net -
May 21, 1998)
|
|
ZELDA.COM
|
|
A
different spin. A 12-year old boy received a school
reprimand for accessing an x-rated site from a
computer in the school library. The 7th grade
student at Walnut Creek Intermediate School in
California went online to collect codes for a
popular new Nintendo 64 game, the
Legend of Zelda. But guessing ZELDA.COM as the domain
name landed him on a site offering
sexually-explicit material. School Internet access
privileges were denied the student for two months.
The family is seeking an apology from the school 's
administrators.
|
|
Contents | Special
Features |
News | Order | Glossary | Opinions | Acknowledgments | Contacts
The Domain
Name Handbook: High Stakes and Strategies in Cyberspace
Copyright © 1998, 1999 Ellen Rony and Peter Rony. All
rights reserved.
http://www.domainhandbook.com/dd-1.html
|
