Domain Names: Mercury News article.
peterb at psc.edu
Wed Feb 28 14:22:35 UTC 1996
Here's a follow-up to last week's forward from the gentleman
"auctioning" off domain names that he registered solely for that
TRADEMARKS FACE A BRAVE NEW WORLD -- THE INTERNET
By SIMSON L. GARFINKEL
Special to the Mercury News
BRIAN Cimins is really sorry.
Like many people, the 19-year-old student at Stockton State College in New
Jersey thought the Internet represented a wonderful opportunity to make
money. Last year, he designed a site on the World Wide Web to advertise
Riding on that success, he started looking around for other companies that
weren't yet on the Net -- companies for whom he might be able to create
custom-built Web sites, taking advantage of the Web's ability to combine
graphics, video, sound and text into interesting areas for people to visit.
It wasn't hard. In no time, Cimins found a whole slew of companies that
hadn't yet registered their names in cyberspace -- companies for whom there
was no ''.com'' address, which essentially is the Cyberspace surname for
So on Feb. 6, Cimins submitted registration forms to the InterNIC, the
Internet's Network Information Center, claiming for himself the names
billclinton.com, canadadry.com, bdalton.com, bauschlomb.com,
readersdigest.com and capitolrecords.com. For each name, Cimins paid the
Network's nominal $100 registration fee.
''I picked up some names I thought were pretty good names,'' Cimins said.
''I didn't have any negative intentions of doing anything with these names.
I wanted to start a forum for these businesses, and possibly be an Internet
provider for them. I could design their presence and provide their (Web)
But Cimins' entrepreneurship ran head-long into a growing problem on the
Internet: Who owns the names?
STATE SENATE STEPS IN
In California, the issue has reached the Legislature, where on Feb. 14,
State Sen. Charles M. Calderon, D-Montebello, introduced a bill that would
prohibit the unauthorized use of trademarks as ''a user identification or
electronic mail address on any computer bulletin board, information
network, or information system which accepts and relays electronic mail
into computers situated in this state,'' according to a statement issued by
the California Senate Rules Committee. The bill would also prohibit the
unauthorized use of trade or registered names and trademarks on the
Internet or the World Wide Web. The bill provides for civil penalties of
$1,000, plus court costs and attorney's fees. (A full text of the
legislation is available on the California Senate's Web site at
''What is the state government trying to do regulating the global Internet?
That's crazy,'' said Jim Warren, a columnist for MicroTimes, who closely
follows attempts by governments to regulate the Internet.
One of the problems with the legislation, says Warren, is that a company in
another country might obtain a domain name that conflicts with a trademark
that is owned by a California corporation.
''My half-baked, knee-jerk reaction is that we don't want to emphasize
national borders on the Net,'' he said.
The state bill reflects how important the ''name game'' has become on the
NAMES FOR SALE
Cimins allegedly offered to sell some of the names to the highest bidders
- -- prompting protests from Internet advocates who consider such antics
unscrupulous. For companies, the names often represent their corporate
identities or some of their most well-known products. For individuals, the
domain names often are their names. Meanwhile, for profit-minded
individuals like Cimins, trading in the names offers a chance to make a
In the case of billclinton.com, it turns out Cimins made a good business
decision. Shortly after the domain was registered, Cimins discovered a
company that was selling a ''Billy-Bob Clinton Bobbing Head Doll.'' As luck
would have it, the company decided to take the plunge and set up a Web site
using the domain name.
''I bought it (for) quite a bit of money,'' said Marc Cortez, marketing
director for Cortrade in Huntington Beach. Cortez said he paid between
$1,000 and $10,000 for the rights to the billclinton.com domain and to set
up the Web site.
But what about the other names -- the names for companies that already
exist? In the case of the capitolrecords.com domain, Cimins said he wanted
to build a Web site that had links to Capitol Record's recording artists.
In the case of B. Dalton, he wanted to design a ''virtual store.''
There was just one problem: he didn't ask the companies' permission first.
TRADEMARKS IN CYBERSPACE
Over the past year, the Internet has been struggling with the role
trademark law should play in cyberspace. The problem is that while Apple
Computer Inc. might want a name like newton.com for a Web site to help
promote its Newton personal digital assistant computer, Nabisco might want
newton.com to advertise its Fig Newtons.
Complicating the matter still is Mark Newton, a computer enthusiast in
Brighton, Mich., who runs a bulletin board called the Newtonian BBS. Newton
obtained the domain name newton.com in April 1994.
For years, Internet domains were registered on a first-come, first-serve
basis. Last summer, Network Solutions Inc., the company that runs the
InterNIC, decided to change the policy.
The InterNIC rules are complicated. But they work roughly as follows,
according to David Graves, NSI's business manager:
A person or company can register any domain name not already taken. But if
another person or company then says it holds a ''valid and existing
trademark that is identical'' to that domain name, and if the trademark was
registered before the domain name was awarded, the party holding the
trademark has the right to get that name. The party that registered the
domain name first then has the right to prove that it also has a federal
trademark on the name.
Assuming the party that registered the domain doesn't hold the federal
trademark, NSI gives that person or company ''the ability to register a
different name, and will give them 90 days of simultaneous use. The purpose
for that is to give them the opportunity,'' to migrate to the new name,
In the case of newton.com, both Newton and his Internet service provider,
Innovative Concepts of Ann Arbor, Mich., say they have been contacted by
Apple, which has threatened a lawsuit unless they relinquish the name.
''I haven't done anything wrong,'' Newton said. ''Do I need to trademark my
last name to use it?''
Furthermore, Newton believes Apple doesn't need the newton.com address,
because the company is already using newton.apple.com.
Apple never comments on threatened lawsuits, said Lynne Keast, a company
CIMINS CHANGES PLANS
Back in New Jersey, Cimins is worried he might soon be receiving legal
threats himself from the companies whose names he registered.
Complicating matters is a piece of electronic mail, Cimins allegedly sent
Feb. 21, in which the author claimed that ''these corporations will pay big
bucks for these names.''
Cimins denies sending the message, saying it might have been sent by one of
his employees who was using his own account. In fact, Cimins said he now
plans to ''dump'' the domain names he has obtained.
HOW BAUSCH & LOMB SEES IT
At Bausch & Lomb, senior trademark counsel Gregg Marrazzo doesn't take
kindly to the idea of anyone trying to sell the company its own name back.
''Our corporate name as well as our product names are very valuable
property to us. This fellow was able to get some property and try to sell
it back,'' Marrazzo said. ''We would equate that to some extent if someone
took something off your front lawn and tried to sell it back to you.''
Marrazzo said the company has a ''hard time keeping up with all of the
registrations of all the different corporate names and trademarks.'' The
Internet complicates the program, because a Bausch & Lomb brand such as Ray
Ban might be registered under many different names, including rayban.com,
ray-ban.com, or even ray.ban.com. To the computer system, each of those
names would be unique.
In the case of bauschlomb.com, said Marrazzo, Cimins should expect to
receive a ''cease and desist'' letter in the mail from the $2 billion
Indeed, Cimins said he submitted a series of new requests last week to the
InterNIC, asking that all of the domains that he had obtained for other
company's names be deleted.
''I'm sorry,'' he said.
When Marrazzo heard that Cimins was studying marketing, he burst out laughing.
''I think that he has a very bright future,'' the attorney said.
MERCURY CENTER ID: me10010d
Transmitted: 96-02-26 05:02:40 EST
"Superior technology is no match for superior marketing."
Simson on Tour:
Feb. 28 - March 1 - Seybold, Boston.
March 6-8: NYC. Consulting.
March 23 - NYC. MacFair.
March 27 - March 30: Cambridge. Computers, Freedom and Privacy.
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