Domain Name Handbook
DNS NewsDomain DisputesU.S. PolicyICANNMailing ListsArchives

SALTLAKECITY
GAMES.COM

The Salt Lake Organizing Committee for the 2002 Winter Olympics filed suit in the U.S. District Court in Delaware on October 15, 99 to bar others from using domain names that include the committee's title. Accused of cybersquatting four domain names with intent to resell them to SLOC or the highest bidder are Branjack Incorporated, Brandon Walker, Regina Cephas, and Afro-American Inner City Youth. The names include SALTLAKECITYGAMES.COM. SLOC seeks a court order forcing the defendants to assign their domain names to it and to pay unspecified damages.

SATURNUSEDPARTS.COM

Saturn Corp. v. Saturn Service Inc. (S.D. Fla.) - A used car parts dealer's unauthorized use of the Internet domain name saturnusedparts.com infringed the carmaker Saturn Corp.'s famous SATURN trademark, a federal district court in Florida rules. The court analogizes domain names to billboards or indexed listings in telephone directories and concluded that the use of the domain name saturnusedparts.com by an unauthorized auto service company was likely to cause confusion in the marketplace.

SAVINCOPIER.COM,
SAVINCOPIERS.COM,
SAVINFAX.COM GESTETNERCOPIER.COM,
GESTETNERCOPIERS

U.S. District Judge Patti Saris granted a preliminary judgment in late March 2001 against Michael Rayne, proprietor of Main Street Copier & Fax Repair of Hudson, Mass., preventing him from using five domain names he registered incorporating the name of Savin or Gestetner, a copier company Savin Corporation acquired in 1998. Savin is a subsidiary of Ricoh Co, Ltd., a worldwide supplier of copiers, fax machines and other office equipment. The motion was heard in Boston under the Anti-cybersquatting Consumer Protection Act. Rayne registered the domain names in January 2000, along with more than 20 others using the trade names of Cannon, Fujitsu, Hewlett-Packard, Hitachi, Konica, Lanier, Okidata, Panasonic, Ricoh and Xerox. These companies have not filed objections to the registrations. Rayne claimed the registrations were used as a public service to the community, to provide chat rooms for business machine users who could exchange information about their use and repair. The judge ruled that Rayne's registrations indicated an intent to profit from the trademarks of the copier companies.

SCHMIDHEINEY.COM

Stefan Schmidheiny v. Steven Weber. Weber registered SCHMIDHEINEY.COM on February 28, 1999. In June 2000, Stefan Schmidheiny inquired about the domain name. Weber claimed he had already received a $1M offer which he would accept unless someone offered $1.1M. Schmidheiny, instead, filed suit alleging that Weber had violated the ACPA. Weber sought dismissal, arguing that Schmidheiny, a Swiss national, was not protected by the ACPA. The court disagreed, finding that the ACPAextended standing to foreign nationals to sue in the United States for alleged violations of the act's protection afforded to personal names. Weber then moved for summary judgment, claiming that the ACPA does not cover the defendant's initial registration and subsequent reregistration of the domain name. The court agreed. The initial registration of SCHMIDNEINY occurred before the ACPA was effective. "While the domain name was re-registered several times thereafter... the statute references only 'registrations,' not 're-registrations.' " The court also found that if Congress chose to treat re-registrations as registrations, it could have used words appropriate to impart that definition." The 3rd Circuit overturned the lower court and held that a the re-registration of an Internet domain name brings the site within the law's reach. 3rd Circuit Judge Richard L. Nygaard wrote, "The language of the statute does not limit the word 'registration' to the narrow concept of 'creation registration.'"

SCOOBYDOO.CO.UK

Hanna-Barbara Productions complained that the August 18, 1999 registration of SCOOBYDOO.CO.UK is identical or similar to its trade mark SCOOBY-DOO and representsan Abusive Registration within the meaning of the Nominet Dispute Resolution. An appellate panel for Nominet .UK dispute resolution reversed the initial decision and ruled that the name, used for a fan site, should be transferred to the trademark owner. who owns the right to trade trade goodwill in the name and others that appear in the metatags of the associated website, Scoobydoo, Shaggy, Velma, Daphne, Fred, Scoobygang and Hanna Barbara. The Panel noted that "fair use may include sites operated solely in tribute .." but "trade through the site, albeit modest, has clearly been of importance to the Respondent.": and that, on the balance of probabilities, there was an advantage to the Respondent in taking a name identical to the person to whom he wishes to pay tribute.

SEASIDE.COM

Seaside Community Development v. Richard Clayton, Northern District of FL, 98-CV-442 (Nov. 12, 1998) - Richard Clayton registered SEASIDE.COM on January 17, 1995, and established a website to display his digital artwork of seascapes and share his musical compositions. Seaside Community Development Corporation, owner of the Seaside resort, filed a complaint for declaratory judgment, service mark infringement and breach of contract. The judge granted Clayton's motion to dismiss, but plaintiff filed a motion for reconsideration. which was denied. Seaside then filed a motion for relief order to dismiss, which ws also denied. After other legl maneuvers, the Federal District Court in Florida sanctioned Seaside Community Development for its conduct in the case and directed the corporation to pay pay $9,472.75 for Clayton's attorney's fee. The Seaside Community Development Corporation appealed the sanction to the Court of Appeals, and the Court of Appeals ruled in Clayton's favor. He asked the lawf irm of Oppedahl & Larson LLP, who represented him against Seasinde Community Develpment, to take over the domain name and web site, with the hope that some day the domain name might be sold to some good owner, with the proceeds to go the Leukemia & Lymphoma Society. Richard I. Clayton died on July 25, 2001 after a long illness.

SEX.COM

No. 98-20718800 (N.D. Cal 10/16/98): San Francisco entrepreneur Gary Kremen filed a lawsuit in the summer of 1998 against Net porn king Steve Cohen, who acquired the registration for SEX.COM through a forged letter submitted by Cohen to NSI. Kremen registered the domain name on May 9, 1994 but it was transferred without his authorization or knowledge to Cohen on October 17, 1995 solely on the basis of fradulent request Cohen sent to the registrar. NSI has disavowed any contractual relationship existed before it began collecting registration fees in September of 1995. In May, 2000, the court accepted NSI's explanation and granted the registrar's motion for summary judgment, based in part on the ruling that domains are not property and are therefore not subject to property law. Kremen plans to appeal, and the litigation against Cohen remains pending. On November 26, 2000,, the court granted Plaintiff Kremen's Motion for Summary Judgment, ruling from the bench that as a matter of law, the domain SEX.COM was stolen by Defendant Cohen. The Judge ordered NSI to immediately return the domain registration of SEX.COM to Kremen. In addition, Judge Ware granted a permanent injunction against further transfers of money to overseas banks, ordered deposit of $25 million dollars to the court against damages, and ordered Cohen to provide a full accounting of all profits from 1995 to the present. Cohen filed an appeal with the Ninth Circuit Court, The lower court rejected Cohen's plea for a stay of the judgment during the appeals process. On April 3, 2001, Judge Ware ordered $40 million in compensatory damages and $25 million in punitive damages to Kremen. A bench warrant for Cohen's arrest was issued until he surrenders all of his property to the court. Cohen's attorney said that the defendant was incarcerated in a Mexico jail on an unrelated matter. Kremen offered a $50K reward for the capture of the man who co-opted SEX.COM for five years. Unrelated to this case, Kremen filed a motion for a declaratory judgment against Yahoo after receiving a cease and desist letter from the portal accusing him of trademark infringement and dilution. Yahoo backed down after learning that the adult site uses Wildcard DNS. In January 2002, the Electronic Frontier Foundation filed an amicus brief asking the federal appeals court to hold VeriSign, which now owns NSI, responsible for the transfer of SEX.COM to Cohen. An amicus was also filed by AIRA. On August 30, 2002, a three-judge panel of the Ninth Circuit Court in San Francisco dismissed appeals by Cohen and Montano Properties, thus affirming the lower court's $65M judgment for Kremen. An attorney on the case has written the SEX.COM Chronicles which tracks this complex litigation. Court documents filed by Kremen are posted at http://www.sex.com/corporate/lawsuits/case15899.html. The 9th Circuit panel of judges asked the California Supreme Court to consider the question of whether traditional property conversion laws should apply to Internet domain names but the issue was remanded back to the 9th Circut. On July 25, 2003, the 9th Circuit held that courts should treat domain names, despite their virtual nature, exactly as a plot of land and ruled that NSI could be liable for conversion of the domain name when it transfered SEX.COM to Cohen without informing Kremen.

SHELL.DE

A German court ruled on Friday oil giant Deutsche Shell GmbH, the German unit of Royal Dutch/Shell, had more right to the SHELL.DE domain name than an individual named Andreas Shell who had already registered the name.The German federal court in Karlsruhe said in its ruling the use of web addresses should be decided by determining which party had the overriding interest in owning the name, even if someone else had already registered it.

SHITAKE
MUSHROOMS.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.

SHOPSATWILLOWBEND.COM,
TAUBMANSUCKS.COM

The Taubman Company v. Webfeats and Henry Mishkoff, Eastern District of Michigan at Detroit - Henry Mishkoff registered SHOPSATWILLOWBEND.COM and created an unofficial "fan" website with information about the new mall. Taubman, developer of the mall, claimed that Mishkoff's use of the domain name infringed on its registered mark . He filed a complaint for trademark infringement on August 7, 2001 asking for a preliminary injunction, and demanding surrender of Mishkoff's domain name. Mishkoff responded by registering five cybergriping names, e.g., WILLOWBENDMALLSUCKS.COM, TAUBMANSUCKS.COM. The court granting Plaintiff's original motion and its amended motion for preliminary injunction, enjoining Mishkoff against using any of the domain names, includihg the five complaint names. Finding that Mishkoff had no commercial intent in either of his sites and that allowing the injunctions to remain would curtail free speech rights, the U.S. 6th Circuit Court of Appeals reversed the lower court's order and dissolved both preliminary injunctions. The American Civil Liberties Union filed a brief as amicus curiae in support of the decision on appeal.

SKUNKWORKS.COM (appeal)

Lockheed Martin Corp. v. Network Solutions, Inc. --- F.3d ----, 1999 WL 965618 (9th Cir.(Cal.), Oct 25, 1999) (NO. 97-56734) In October 1999, the Ninth Circuit held that NSI can't be sued for contributory infringement because provision of a domain name is a "service" not a "product" and hence outside Lanham Act.

"The case at bench involves a fact pattern squarely on the 'service' side of the product/service distinction suggested by Inwood Lab and its offspring. All evidence in the record indicates that NSI's role differs little from that of the United States Postal Service: when an Internet user enters a domain-name combination, NSI translates the domain-name combination to the registrant's IP Address and routes the information or command to the corresponding computer. Although NSI's routing service is only available to a registrant who has paid NSI's fee, NSI does not supply the domain-name combination any more than the Postal Service supplies a street address by performing the routine service of routing mail."

"Where domain names are used to infringe, the infringement does not result from NSI's publication of the domain name list, but from the registrant's use of the name on a web site or other Internet form of communication in connection with goods or services.... NSI's involvement with the use of domain names does not extend beyond registration".

  • Lockheed Martin Corp. v. Network Solutions, Inc., Opinion, 9th Cir., 97-56734 (October 25, 1999)

SNAP.COM

Snap Technologies, Inc., filed suit against C/Net to prevent the online news agency from using the word "Snap" and SNAP.COM for its popular portal site. Snap Technologies was granted a trademark registration for the word in 1997. The company claims its SNAPWEB.COM domain and services are being comfused as a subsidiary of C/Net. In 1997, C/Net prevailed in a lawsuit filed by Snap-On-Tools, also over the "Snap" name.

SONYBANK.COM

Justice Chang Sang-ik of Seoul District Court reaffirmed a UDRP decision that that a man named Lee, 34, had no rights to the domain name SONYBANK.COM, which he registered in March 2000. Lee registered the domain name after Sony announced it would set up online financial services. He later offered Sony the domain name for $2,500. The court wrote, "`Since the general public would easily recognize the site as a Sony-related homepage, it can be seen that Sony's trademark rights have been violated as a result of Lee's act."

SOUTHAFRICA.COM,
SOUTHAFRICAN
TOURISM.COM

Seattle-based Web company, Virtual Countries, filed a pre-emptive suit in New York federal court on November 13, 2000, seeking to block an arbitration proceeding over SOUTHAFRICA.COM initiated by the African country's government. Many governments avoid the .COM top-level domain in favor of country codes, which has left the field open to entrepreneurs to register country and city names for tourism and enternment services and portals. Geographical names cannot be trademarked, and Virtual Countries asserts it acted legally when it registered the domain along with names of other 33 other countries such as SWEDEN.COM, RUSSIA.COM and SWITZERLAND.COM . In June 2001, a New York judge ruled that the dispute must be settled by WIPO, saying that ithe court lacked jurisdiction to hear a case involving a foreign sovereign state. Virtual Countries has been using the domain name for more than five years. In August 2002, the 2nd Circuit Court upheld the lower court decision which dismissed a suit by Virtual Countries. In May 2003, the South African government began negotiations to purchase the domain name from the registrant, who originally demanded $10M.

Further, the South AfricanTourism authority claimes that it should control SOUTHAFRICANTOURISM.COM, which was registgered in 1999 by Atlantic Internet Services, one of the country's largest private internet access providers.

SPACENEWS.ORG

SPACENEWS.ORG received a cease and desist letter in October 1999 alleging trademark infringement of the "Space News" trademark held by Gannett Co., owners of SPACENEWS.COM. SPACENEWS.ORG posted a disclaimer of afffiliation with the Gannet publication and argued its non-commercial use of the generic words to post astronomy news did not constitute infringement. The two disputants worked out an amicable agreement in March 2000 for a peaceful domain name coexistence by the latest astronomy news summary posted on SPACENEWS.ORG was in May of that year.

SPORTYS.COM

Sporty's Farm v. Sportsman's Market Inc., 98-7452 (Feb 2000): The 2nd U.S. Circuit Court of Appeals found that a Christmas tree company's Internet domain name was registered in bad faith, to take advantage of another company's well-known mark. Sportsman's Market sells catalog products to pilots and has been using the "Sportys" trademark since the 1960s. In 1994-95, Omega Engineering Inc. formed a subsidiary called Pilot's Depot and Sporty's Farm. and registered SPORTYS.COM. Sportsman's Market demanded the name, and Sportys Farm sought a declaratory judgment to continue using the name. The district court granted Sportsman's counterclaim for trademark dilution claim but ruled the company was only entitled to injunctive relief and not punitive damages or lost profits. On appeal, the court applied the new Trademark Cybersquatting Act and affirmed the lower court decision to award Sportsman's Market the domain name but no punitive damages. The court noted establishment of the Christmas tree farm was merely a smoke screen intended to deny Sportsman's Market use of the domain name. The court described the defendant's reason for use of the name as a tribute to a childhood dog called Spotty as "more amusing than credible".

[name]STINKS.COM,
[name]SUCKS.COM

Complaint sites skewering large companies are neither new nor uncommon. Here are a few samples. A man in a tussle with the corporate owner of a mall he promoted online (SHOPSATWILLOWBEND.COM) registered WILLOWBENDSUCKS.COM and TAUBMANSUCKS.COM to describe the legal battle in complete detail. 6th Circuit Judge Lawrence P. Zatkoff granted a montion to expand the preliminary injunction to include the "sucks" domains and denied the registrant's motions for dismissal of the complaint and change of venue.

  • Cyber Tussle, by Sven Gustafson (Metro Times Detroit - December 19, 2001)

Philip Kaplan's FUCKEDCOMPANY.COM is a forum where employees publicly trash employers &emdash; or former employers&emdash; and submit confidential memos, usually announcing mass layoffs. He receives a cease and desist letter almost every day but so far has not been sued.

Rulings from WIPO arbitrator ordered that five domain names incorporating (NAME)SUCKS.COM be taken away from a UK-based company called Purge I.T., Ltd. The addresses all refer to companies with a presence in Britain: no-cost Internet service provider Freeserve (FREESERVESUCKS.COM); retailer Dixon's (DIXONSSUCKS.COM); banks NatWest (NATWESTSUCKS.COM) and Standard Chartered (STANDARDCHARTEREDSUCKS.COM; and insurance and financial services firm Direct Line (DIRECTLINESUCKS.COM. Earlier, another WIPO arbitrator ruled against a Canadian man who had snapped up such disparaging monikers as, WAL-MARTCANADASUCKS.COM, WALMARTCANADASUCKS.COM WALMARTUKSUCKS.COM and WALMARTPUERTORICOSUCKS.COM. The latter registrant argued his domains were fair comment regarding the retailing giant, while Purge I.T. took a different approach and said it had reserved the derogatory domains in order to spare the companies the embarrassment of having someone wield them in protest. UDRP panels stronly tend to favor trademark owners over registrants in disputes over [name]SUCKS.COM domain registrations.
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. Parisi has created SUCKS500.COM, where he posts panel decisions in the court cases he has endured against Lockheed Martin and financial news guru Michael Bloomberg.
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.

STARTRIBUNE-FAEGRE.ORG

A federal judge in Minneapolis issued a TRO and permanent injunction against William Purdy of South St. Paul to prevent him from using the names of the law firm, Faegre & Benson and the Star Tribune newspaper as domain names . The law firm has represented several of the companies whose trademarks Purdy used in earlier cybersquatting cases.

STRICK.COM

Strick Corporation v. James B. Strickland, E.D. PA, Civ No. 00-3343 (
August 27, 2001)- Defendant registered his nickname as a domain, STRICK.COM, in 1995. Strick Corporation, the manufacturer of transportation equipment and wood flooring bearing the "Strick" trademark, invoked NSI's Domain Dispute Policy and the domain name was placed on hold on January 10, 1997. The corporation filed a UDRP proceeding in May 2000 and a 3-member panel said that the registrant is commonly known by the domain name and has legitimate interest in the name. The corporation also filed suit in federal court and the registrant counterclaimed. In August 2001, the court granted a summary judgment for James Strickland. although it noted that the UDRP decision was not dispositive. . From the opinion: "It is clear that nothing in trademark law requires that title to domain names that incorporate trademarks or portions of trademarks be provided to trademark holders. To hold otherwise would create an immediate and indefinite monopoly to all famous mark holders on the Internet, by which they could lay claim to all .com domain names which are arguably 'the same' as their mark. The Court may not create such property rights-in-gross as a matter of dilution law. ... Trademark law does not support such a monopoly."

TATOOINE.COM

Attorneys for Lucasfilm sent a cease and desist letter to Steve Mount, a 31-year-old web designer and programmer, requesting that he relinquish the domain name TATOOINE.COM to the film production company, Tatooine was the fictional desert planet where "Star Wars" character Luke Skywalker was raised. Mount registered the domain in 1997 and uses it to post photographs and advertisements for his web design services. He said he has no Star Wars related material on his site.

TECHNODOME.COM

Heathmount A.E. Corporation v. Technodome.com, 106 F.Supp.2d 860 (E.D. Va. 2000),

A Canadian resident registered TECHNODOME.COM to use for theater workers in Canada. Subsequently, a Canadian company, Heathmount A.E. Corporation, wanting to use the name for a planned amusement park in Canada ,brought suit in Virginia under the ACPA against the domain name itself.. Heathmount later abandoned its case, but on July 25, 2001, NSI filed an amicus brief supporting Heathmount's position that .COM registrants should be forced to defend their domain names in Virginia because the registry is located there. CyberBrief PLC and the EFF argue that the court lacks jurisdiction and this dispute &endash; which is among Canadians and involves alleged Canadian trademarks &endash; does not belong in the United States. The Appellant's Brief also notes that in rem jurisdiction is only available when the registrant cannot be located in personam.

TEENMAGAZINE.COM

The 42 year-old youth publication, Teen Magazine, was granted a temporary restraining order against Blue Gravity Communications of Pittsgrove, N.J., barring them from operating a website of hard-core pornography at TEENMAGAZINE.COM. Teen Magazine, which operates its own website at TEENMAG.COM, invoked the new Trademark Cyberpiracy Prevention Act which became law on November 29, 1999. The lawsuit seeks an unspecified amount in damages plus a permanent court order forbidding Blue Gravity from using the domain name.

THEWOODLANDS.BIZ

James Nelson registered THEWOODLANDS.BIZ in November 2001 to use for the Woodlands Business Directory website. The Woodlands Land Development Co, LLP initiated a UDRP proceeding against the registrant but the WIPO panel alowed him to keep the domain name. In June of 2003, attorneys for the company filed a lawsuit in Houston's District court, alleging that the registrant is a cybersquatter. who registered the name in bad faith. Documents show that the company offered Nelson $30K for the name in January 2003. The registrant is a $6/hour pizza delivery man. Woodlands Land Development who says he doesn't have the financial resources to fight the lawsuit. Nelson's website has 194 members.

TNN.COM

The Network Network brought suit on Frbruary 5, 1998 seeking a declaratory judgment that its use of TNN.COM does not infringe on any rights of CBS. CBS responded with a motion for summary judgment, alleging infringement and dilution of its mark. TNN claimed it has been using the common law mark since 1986, before it was registered as a service mark for TV production and program distribution. It registered the domain name on January 7, 1994, The court noted that the the defendant waited four years to bring a dilution allegation and that the mark was not famous when The Network Network began using it. Regarding the claim of confusion, the court noted, "Thousands or Internet users every day take a stab at what they think is the most likely domain name for a particular website. Given the limited number of letters in the alphabet, and the tendency toward the use of abbreviations in commerce generally and in domain names in particular, it is inevitable that consumers will often guess wrong." The court rejected theclaims of dilution and infringement and granted the Summary Judgment.

TORONTO2.COM

On June 24, 1999, the owner of trademark TORONTO.COM filed suit against the registrant of TORONTO2.COM, for trademark and copyright infringement and passing off, requesting $.5M in damages. However, both names are rather generic derivatives of the name of the Canadian city about which the respective websites carry information. Plaintiff is a limited partnership of Metroland Printing, Publishing & Distributing Ltd., Bell Actimedia Inc. and CitySearch Canada Inc. and registered TORONTO.COM on December 4, 1997. TORONTO2.COM was registered on February 28, 1999. On January 31, 2000 the court dismissed the motion for interlocutory injunction but TORONTO2.COM has posted a link to Plaintiff and disclaimer of any affiliation between the two sites.

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 Toys "R" Us, Inc. v. Feinberg, 26 F. Supp. 2d 639, 1998 U.S. Dist. Lexis 17217 (S.D.N.Y. 10/28/98) GUNSAREUS.COM: Toys 'R' Us Loses Bid to Block Gun Merchant's Web (NY Law Journal - November 3, 1998); Toys R Us and Geoffrey, Inc. v. Akkaoui, dba. Adults R Us, Order Granting Plaintiffs' Motion in which the court enjoined defendant from using ADULTSRUS.COM and cancelled the domain registration; U.S. Northern District of CA, #C-96-3381 CW (October 29, 1996) and Toys "R" Us, Inc. v. Abir, 45 U.S.P.Q.2d 1944 (S.D.N.Y. 1997) (preliminary injunction decision), 1997 U.S. Dist. LEXIS 22430 (S.D.N.Y. Dec. 1, 1997) (order granting preliminary injunction), 97-Civ. 8673 (JGK) S.D.N.Y. Aug. 27, 1998). In this case, the court permanently enjoined the defendant from using the TOYSAREUS.COM domain name and any "R" US mark in any medium and ordered TOYSAREUS.COM and KIDSAREUS.COM to be transfered to the trademark owner. The court awarded attorney's fees to the plaintiff in in the sum of $55,162.76.

UMBRO.COM

Umbro International, Inc. v. Canada, In. 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 names 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. An appeal has been filed. On April 21, 2000, the Virginia Supreme Court held in a 5 to 2 decision "Whatever contractual rights the judgment debtor has in the domain names at issue in this appeal, those rights do not exist separate and apart from NSI's services that make the domain names operational Internet addresses." The court held that a contract for services is not "a liability" and hence is not subject to garnishment. It reversed the judgment of the circuit court that the domain name registrations at issue in the appeal were garnishable. The court also asserted, "We do not believe that it is essential to the outcome of this case to decide whether the circuit court correctly characterized a domain name as a "form of intellectual property." The dissent wrote, "Because NSI has received everything required to give the judgment debtor the exclusive right to use the domain names it registered, the contractual right, a valuable asset, is gthe intangible personal property in which the judgment debtor has a possessory interest. This right is a "liability". . . and is subject to garnishment."

USABANC.COM

In July 1999, U.S. Bancorp filed suit in Minnesota federal court seeking a temporary injunction to shut down a new website established by USABanc.com, Inc. According to the suit, U.S. Bancorp claims customers will confuse its site at USBANK.COM with the new site at USABANC.COM. Three months earlier, USABanc.com changed its name from USABancShares and established a webpresence at USABANCSHARES.COM, which is not challenged in the lawsuit.

UTAHREALESTATE.COM

In a federal lawsuit filed late in December 1999, VisionNet, developer of UTAHREALESTATE.COM, accused Wasatch Front Regional Multiple Listing Service fo snatching control of the website. VisionNet developed the website to show homes for sale by Utah Realtors and requested a temporary injunction to halt the listing service's control of the site, which provides information on more than 12,000 homes, condominiums, farms and other properties for sale.

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.

VATICANO.ORG

The original registrants of VATICANO.ORG alleged that NSI prevented them from reregistering the domain name by refusing all attempts of payment and, immediately upon expiration, registering it to a Catholic association in Rome. Il Giornale di Brescia said the site had been active for a year and was almost identical to the official Vatican site, but with retouched content and "unpardonable errors". The Vatican also has registered the domains VATICAN.VA, VATICAN.NET, GIUBILEO.VA.

VERIZONREALLY
SUCKS.COM

Verizon is the new name of the recent Bell Atlantic-GTE merger. Bell Atlantic preemptively registered VERIZONSUCKS.COM, so a hacker magazine registered VERIZONREALLYSUCKS.COM to poke fun at the company. Bell Atlantic's counsel sent a letter to the registrant , known as 2600, asserting the domain name infringed on Bell Atlantic's rights in the 'Verizon' mark, invoked the new Anti-cybersquatting Consumer Protection Act, and insisted that the domain name be transferred to Bell.. Ired by Bell Atlantic's attempt to trample on the registrant's right to expression, the magazine registrant turned over the domain name to the Communication Works of America to document CWA's strike against Verizon. It also took advantage of the expanded 63-character limit for a domain name and registered,VERIZONSHOULDSPENDMORETIME
FIXINGITSNETWORKANDLESSMONEYONLAWYERS.COM. Verizon decided not to pursue the fair use of the domain . "We're out to defend our brand against confusion and dilution, not squelch free speech," said spokesman Larry Plumb.

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.

VIAGRA.COM.CN, VIAGRA.CO.NZ and VIAGRAFALLS.COM

Pfizer, Inc., trademark owner and pharmaceutical manufacturer of the high profile impotence wonder-drug Viagra, lost its bid in a Beijing court to prevent Viagra from being registered as a Chinese domain name. The Beijing No. 2 Intermediate People's Court ruled in December 2000 that the name "Viagra" is not sufficiently well-known in the country to be specifically associated with Pfizer, nor is the name registered as a trademark. The product sells locally under the name, "Wan Ai Ke."

In other litigation, Pfizer 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).

VICTORIASSEXYSECRET.COM,
VICTORIASEXSECRET.COM

Victoria's Cyber Secret LP v. Secret Catalogue, Inc., S.D.Fla., No. 01-1095-CIF-KING (September 10, 2001) - Plaintiff registered VICTORIASSEXSECRET.COM and VICTORIASSEXYSECRET.COM and two variations in 1998 for adult content sites associated with Victoria Silvstedt, a former Playboy Playmate of the Year who was hired as a model and spokeswoman. Defendant, a lingerie and clothing company dba Victoria's Secret, filed a USRP challenge and was awarded transfer of the domain names. Plaintiff instead filed for declaratory judgment and defendant counterclaimed charges of dilution, trademark infringement and cybersquatting. The court ruled in favor of Victoria's Secret, holding that since Internet consumers do not have the same opportunity to exercise the degree of care that they would in a store, a similar domain name is likely to cause confusion in the marketplace as to the origin of the goods. The court also held that insertion of a generic word in a domain name that otherwise wholly incorporates another party's trademark is irrelevant in determining whether the domain name is identical to the mark. The defendant was awarded attorney's fees and costs.

VINTAGECOCACOLA.COM

Maxistore.net, the administrator of VINTAGECOCACOLA.COM, received a cease and desist letter from Coca-Cola in January. The site featured images of vintage Coke memorabilia and links to Coke merchandise auction sites. After the design firm pulled its original content and converted the site into a discussion board for domain name rights issues, the Coca-Cola Company withdrew its objections to the site. It also doesn't take issue with a website called BOYCOTTCOKE.COM which has been championing Vintagecocacola's cause since the dispute went public. "It's not commercial in nature, so they have a right to do that," said a spokesperson for the soft drink maker.

VW.NET, VW-BUG.COM

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 claimed the use constitutes infringement and dilution of its mark. On August 23, 1999, Virtual Works filed a civil lawsuit in U.S. District Court in Alexandria, to block an attempt to reassign its domain nameor have it deactivated by NSI, who was named as a co-defendant. The ISP sought $1 million in damages. The VW trademark, registered in 1956, is for Class 12, autos, trucks and related parts and accessories. .NET is designated for networking operations. The federal judge ruled that Volkswagon made no demonstration of irreparable harm and refused to grant a preliminary injunction against the ISP for use of VW.NET. However, Virtual Works' claims of interference by Volkswagen and breach of contract against NSI were dismissed. Early in 2000, the court ruled that the auto manufacturer was entitled to VW.NET since Virtual Works had attempted to sell the domain name to Volkswagon, The ISP lost its battle in March 2000, when the VW.NET domain name was awarded to the auto manufacturer. A federal appeals court upheld the opinion that Virtual Works registered VW.NET in bad faith. Virtual Works petitioned the court for a rehearing in February 2001.

(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.

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.

WASHINGTON
SPEAKERS.COM and .NET

Washington Speakers Bureau, Inc. v. Leading Authorities, Inc., 33 F. Supp. 2d 488 (E.D. Va. 1999): 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.

  • Washington Speakers Bureau, Inc. v. Leading Authorities, Inc., Order, C.A. No. 98-634-A, E.D. VA (May 19, 1999)
  • Domain decisions favor plaintiffs (C/Net - February 24, 1999)
  • Washington Speakers Bureau, Inc. v. Leading Authorities, Inc., Memorandum Opinion,.CA. No. 98-634-A, (E.D. Va., February 2, 1999)
  • Case summary, by Martin H. Samson (February 1999)

WBAI.NET

The Pacifica Foundation has threatened legal action against a woman who has maintained the WBAI.NET website in New York City since 1997, claiming that the domain name infringes on its trademark. WBAI 99.5 FM, is the New York affiliate of the Pacifica Foundation.

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.

WHOSWHOINTHE
WORLD.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.

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 27, 1999 but ordered NSI to review any requests by defendant Artinternet.
  • Worldsport Networks LTD v. Artinternet S.A. and Cedric Loison,Amicus Brief of ACPIP, CA. No. 99-CV-616, E.D. Pa (July 6, 1999)
  • NSI's liability in trademark disputes, by Dan Goodin (C/Net - April 29, 1999)
  • Worldsport Networks LTD v. Artinternet S.A. and Cedric Loison, Memorandum, CA. No. 99-CV-616, E.D. Pa (April 27, 1999)
  • NSI Not Domain Name Police, Lawyers Argue, by Shannon P. Duffy (Law News Network - March 31, 1999)

WPNI.ORG
A U.S. District judge for the District Court of Minnesota ordered Bill Purdy, who lives in South Saint Paul, to appear and face possible criminal sanctions for registering WPNI.ORG, which is similar to the WPNI.COM domain name used by the Washington Post Newsweek Interactive. The four-page order requires Purdy to turn relinquish the domain name which is similar to the one many Washington Post-Newsweek employees have as part of their e-mail addresses. Purdy claims to have intercepted e-mail messages intended for Washington Post staffers. The anti-abortion activist claims WPNI is an acronym for "Interactive William Purdy's Novel Insights" and that the close esemblance of the domain name to one owned by The Washington Post is sheer coincidence. Purdy stransferred ownership of the domain to a Mexican man and said he could not lcomply with the demands even if he wanted to.

WRITEWORD.COM
On February 24, 1998 Rose Marie Dorer and ForRMS, Inc., filed a trademark infringement action against Brain Arel, seeking money damages and injuctive relief. Defendant failed torespond and the magistrate judge found that defendant had infringed plaintiffs' mark by using the phrase Write Word Publications and the domain WRITEWORD.COM. Plaintiffs were awarded a permanent injunction and $5,000 damages, but disposition of the domain name was not addressed. Under Virginia law the infringing domain name is an asset that can be subject to a lien of fieri facias to satisfy a default judgment.The court avoided adjudicating the issue of whether a domain name is personal property, asserting that NSI's dispute policy procedure would offer self-help remedies sought by the plaintiff. However, the WRITEWORD.COM domain name was released to the available pool and registered by an unaffiliated party.
  • Rose Marie Dorer and Forrms, Inc. v. Arel, Memorandum Opinion, E.VA, Alexandria Division,C.A. No. 98-266-A (August 26, 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.

WWWPAINEWEBBER.COM
PaineWebber Inc. v. Fortuny, Civ. A. No. 99-0456-A (E.D. Va. Apr. 9, 1999): 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.

WWW-SHOPPING.COM
A California computer technician registered WWW-SHOPPING.COM to build a portal site for online shopping. In May, 1999, trademark attorneys advised him that he was infringing on Shopping.com, acquired by Compaq to create online retailing. The domain registrant claims the domain name is generic and has enlisted the help of the Domain Defense Advocate.

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.

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.

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 sought--and received--an apology from the school's administrators.

.

DOMAIN DISPUTES

INDEX

A - H

I - R

UDRP

OTHER

 

NAME CHANGES

2,976 U.S. companies changed their names in Y2000, according to Enterprise IG, a New York firm that has tracked the statistic for three decades

Name changes are up nearly 300% from 1,004 eight years ago.
 

 

Website design and host 

 

Contact | Order | Site | News | Disputes | Policy | ICANN | Lists | Archives
Contents | Reviews | Viewpoint | Acknowledgment | Glossary | Special Features | Booklist
 The Domain Name Handbook: High Stakes and Strategies in Cyberspace
Copyright© 1998-2003 Ellen Rony and Peter Rony. All Rights Reserved.
http://www.domainhandbook.com/dd3.html