LA Times Domain Name Article

["Jim R." <InfoCker@worldnet.att.net>]

Solveig Singleton
Director of Information Studies
The Cato Institute
Washington, D.C.

May 10, 1999

Ms. Singleton,

I enjoyed the recent Cato domain name forum (which Declan McCullagh was good
enough to make Politech list members aware of).  As the attached LA Times
article illuminates the S*** is hitting the fan so far as this issue
permeating the real world.  In fact, it may be moving faster than ICANN,
WIPO, DOC, NSI, and other players are, so look out below.

Of particular interest from the piece: "The issue will become even more
important if the reform of the system for registering domain names sets off
real estate rushes for spots in categories such as .biz or .fin.
Interim ICANN Chairwoman Esther Dyson said she hopes Web-trademark conflicts
will be addressed at ICANN's meeting this month in Berlin."

It would be helpful if some sort of domain name event attendee contact list
(e-mail) could be distributed (most participants I spoke to seemed like they
would welcome this).

Also, if Cato plans to hold more discussion/forums on cyber policy issues I
would welcome being kept in the loop.

On another note, I would suspect a hot issue will be net taxation.  An
interview in today's Washington Post, finds mega net retailer Value America,
CEO Craig Winn in support of a national net sales tax.

Sincerely,

Jim Rapp

P.S. feel free to distribute this article to others (in particular Ms. Burr
at DOC, who I do not have an e-mail address for) interested in the domain
name issue if you wish.

********************************************
James B. Rapp
CyberStrategies       InfoCker@worldnet.att.net
Alexandria, Virginia USA   (703) 836-1501
Austin, Texas USA          (512) 339-9135
Author of "Electronic Commerce: A Washington Perspective,"
"Governance and The Proliferation of International Electronic Markets."
Also see on CMPnet, "Last Mile Shootout,"
http://www.techweb.com/wire/story/TWB19981118S0010;
"The Austin Miracle,"
<http://www.techweb.com/news/story/TWB19980206S0007>and
"A High Tech Career Of Her own."
<http://www.techweb.com/wire/story/TWB19980422S0017>
********************************************

Trademarks Scuttle Some Firms' Plans for Web Names Computers:
Conflict between Internet sites and company monikers leaves some business
owners holding the bag.
http://www.latimes.com/HOME/BUSINESS/t000041873.1.html
By JOSEPH MENN, Times Staff Writer
April 10, 1999

Credit.com had no idea how much it didn't know about trademark law.
The San Francisco-based online service spent five years building a
profitable business that provides credit reports, loan information and other
services to 300,000 Web site visitors each month.
Long after making a name for itself, the company discovered that its name
has made it a target of scores of confused consumers. And a similar-sounding
company that runs a similar business, Creditcomm, has threatened its very
existence.

After receiving a letter in March from Fairfax, Va.-based Creditcomm telling
it to change its name, the San Francisco company fought back by filing a
million-dollar lawsuit in federal court, accusing Creditcomm of unfair trade
practices.

All of this has left Credit.com's owners wondering how they got into such a
mess.
At the heart of the dispute are the blurred lines between the rights of
companies that stake out claims to online domain names and those that have
real-world trademarks. And such disputes will only grow more common as the
registering of domain names becomes decentralized.
"There is this tension between the trademark world and the Internet world,"
concedes Bob Anderson, deputy assistant commissioner for trademarks in the
U.S. Patent and Trademark Office.
Trademarks are the single most common source of disputes about Web site
monikers, according to Network Solutions Inc., which until last month had a
monopoly on assigning domain names.
Credit.com President Todd Meagher, a former credit analyst who grasped the
power of the Web early, never saw the trademark tension coming.

After quitting his job on "the dark side of debt collection," Meagher turned
to the Net, partnering with a former state credit regulator.

In 1994, they opened an educational services credit business on the Web. "We
built ourselves into a trusted resource," said Meagher.

Some resources are easier to protect than others, Meager learned. The
trademark office, which evolved during simpler times, basically ignores the
".com" suffix, and "credit" is too descriptive, lawyers said. Because of
that, Credit.com couldn't get a trademark on its name.

"The closer you get to being merely descriptive, whether e-commerce or
regular commerce, the less likely you are to get registered as a trademark,"
said Anderson of the patent office. "If Toasters.com specialized in the sale
of toasters, that would probably not be registerable."

Buy.com and Shopping.com are also without trademark protection, though
Shopping.com is trying.
Because Creditcomm had a more unusual name, it applied for trademark
protection in December (the request is pending), then demanded that
Credit.com change its name.

The San Francisco company had already heard more than enough about its East
Coast rival.
"We were getting 20 or 30 people complaining a day" about Creditcomm after
getting the two companies confused, Meagher said after filing suit.
Creditcomm refused to discuss its history or the legal case.
"As a matter of policy, we have no comment on any request for information on
pending matters," company spokeswoman Melissa Levanowitz wrote in an e-mail.

Credit.com has a good chance of prevailing in court and even of getting
Creditcomm's trademark squelched, lawyers said, because being first in
public is more important than being the first with a government piece of
paper.
"If Credit.com can establish it was using it as a trademark or a service
mark, it has gone a long way toward proving infringement," said Carla
Oakley, a trademark specialist at Brobeck Phleger & Harrison not involved in
the case.
But the company faces an uphill battle. Courts have tended to lean toward
backing trademark holders in similar disputes.

Recently, for example, the U.S. 9th Circuit Court of Appeal in San Francisco
ruled that a company that had trademarked the name MovieBuff had the right
to shut down a Web site at http://www.moviebuff.com.
Network Solutions has taken a similar tack. In disputes involving trademark
infringement, the Herndon, Va.-based company will act to take down an
offending Web site when there is direct conflict between the trademark and
the domain name.

After a determination, there is a 90-day period during which both parties
can use the site name, said David Graves, director of business affairs at
Network Solutions.

Graves said the policy has been invoked 3,000 times, out of 4 million domain
names.
"You have to recognize the fact that trademark law came about over a period
of time, never anticipating that there would be anything like the Internet,"
Graves said.

"And when the Net was designed and implemented, people never thought it was
going to be a center of e-commerce."
Five companies besides Network Solutions are now in the business of
registering domain names in a test run by the Internet Corp. for Assigned
Names & Numbers. The issue will become even more important if the reform of
the system for registering domain names sets off real estate rushes for
spots in categories such as .biz or .fin.
Interim ICANN Chairwoman Esther Dyson said she hopes Web-trademark conflicts
will be addressed at ICANN's meeting this month in Berlin.

In the meantime, experts said, companies should get both a trademark
registration and a domain name.
Any fix will come too late for Credit.com.

"If you can't protect your mark," Meagher said, "that's pretty scary."

1999 Los Angeles Times.