A fourth lawsuit against NSI by a domain name owner to try to keep from losing a domain name

Thu Jun 20 03:54:18 UTC 1996

At 06:07 PM 06/19/96 -0700, Gene Ingram wrote:

>Carl Oppedahl wrote:

>> There is now a fourth case in which NSI wrote to a domain name owner
>> saying that their domain name would get cut off in 30 days, and in
>> which the domain name owner says it wasn't infringing anybody's
>> trademarks (which is of course no defense under the present NSI
>> policy), and finds itself suing NSI to avert loss of the domain name.

[roadrunner.com]
[dci.com]
[ty.com]
[clue.com]

>Based on the fourth case, I'd say we are in serious trouble.
>The word "clue" is a word in a dictionary, and the company is
>entitled to call their firm "Clue" on a local level provided
>they have a business license and have filed a fictitious name
>statement.  In my area we also need to renew our fictitious name
>with some government agency (can't remember offhand which one)
>downtown, every 5-7 years.  Provided you do that, and your
>business is industry-specific (does not violate trademark laws)
>then there is nothing anyone can do to stop you.

Well, of course you are right that "clue" is in a dictionary.  It's not
difficult to imagine that someone could pick the name "Clue" for their
business for perfectly innocent reasons.

But then the word "road runner" is in the dictionary too, and is also the
state bird of New Mexico.

What can be said about "dci"?  Probably what can be said is that it is three
initials, and there are probably hundreds or thousands of companies with
those initials.

And "ty"?  It is a person's name.  Short for Tyrone, I suppose.

It seems to me that in each of these cases it is not difficult to imagine
that the name could have been chosen for perfectly innocent reasons.

>What if the company wins and gets "clue.com" but then
>someone in an entirely *different* industry with a trademark
>for use in *their industry* under the name "clue," comes
>along and shows they got their trademark first?  Let's say
>the company that is suing Clue wins because they got a
>trademark in their respective industry in say, 1970.  Now
>let's say that someone who *also* owns the trademark "clue"
>in an entirely separate industry, comes along and sues for
>``clue.com'' because their trademark was obtained in 1969,
>one year earlier?  Will NSI then suspend the company's
>domain ``clue.com'' (the company that won the right to
>``clue.com'' through litigation), pending outcome of the
>third company who says their trademark in a separate
>industry (let's say, it's ``Clue Lingerie'' and they
>registered the Clue trademark for women's lingerie in
>1969, while the game manufacturer registered their Clue
>trademark for games in 1970).
>
>Now is someone going to tell me that the process will start
>all over again in court, with the lingerie company perhaps
>being awarded the ``clue.com'' domain that was won with
>costly litigation by the game company?  Where does this
>legal madness end?

Keep in mind that it's not just US trademarks, but also trademarks of
countries outside the US, that under present NSI policy permit taking away a
domain name from somebody.  I just did a quick check and found more than
half a dozen "clue" trademark registrations in Europe.  Each of these
European trademark owners could, one after the other, bring an NSI challenge
against whoever happened to own "clue.com".  Of course, by definition all
but one of them will have to somehow find a way to go on in life without
possessing "clue.com".  Notwithstanding that, each of them could initiate a
challenge according to NSI policy.

In the US alone there are over a dozen "roadrunner" and "road runner"
trademark registrations.

In the US alone there are almost two dozen "dci" trademark registrations.

In the US alone there are about half a dozen "ty" trademark registrations.

Let's look at SAIC, the parent company of NSI.  As you may know, their
domain name is saic.com.  Well, there is some company in Italy with a
trademark registration of "saic".  They make meat, I seem to recall.  This
Italian company could simply spend the cost of a postage stamp and send a
copy of their trademark to NSI, and NSI would have to commence a dispute
proceeding with its own parent company.  If SAIC failed to provide the
precious trademark certificate within 30 days, NSI would have to cut off the
domain name of its own parent company.  Or if SAIC did manage to provide a
trademark certificate within the required 30 days, NSI would have to ask
SAIC to sign the well-known "indemnification agreement" and perhaps ask it
to post a bond.  If SAIC failed to sign the indemnification agreement within
14 days, then NSI would have to cut off the domain name of its own parent
company.  Of course, SAIC might feel that it was unreasonable to have to
sign the "indemnification agreement", in which case SAIC would presumably
have to sue NSI for a court order to restrain NSI from cutting off the
saic.com domain name.

This all assumes that NSI would carry out its policy with respect to its
parent company in the same way that it carries out the policy in other cases
that are publicly known.  Since NSI conducts its proceedings in secret, one
would have no way to check if this were so.

---
Carl Oppedahl, oppedahl at patents.com  Oppedahl & Larson, patent law firm
http://www.patents.com/ is a web server with frequently asked questions 
  and answers on patent law and other intellectual property subjects