Cybersquatters Battle Back
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As corporate trademark attorneys scour the Internet for sites that infringe on their registered marks, some so-called cybersquatters are discovering novel ways to battle back and protect their domains.
The latest case involves an Inglewood, California computer technician named Lawrence Tolliver, who had hopes last July of getting in on the e-commerce boom by building a web portal site for online shopping. But like many would-be Web entrepreneurs, Tolliver found most of the prime dot-com real estate was already taken. He spent hours at domain registration sites trying to find the perfect address for his online business, ultimately settling for the awkward -- but he hoped serviceable -- Web address www.www-shopping.com.
Little did he know at the time that he was about to step on the toes of the Irvine, California company founded in 1996 as Shopping.com, which would later be acquired by Compaq and the AltaVista Co. as part Compaq's push into online retailing. Last week, Shopping.com became the property of venture firm CMGI, Inc., as part of its acquisition of AltaVista.
At his Web address, Tolliver has assembled a home-made looking collection of links and affiliate programs, and has had about 4,800 visitors since it went live in August of 1998.
Although he says he can't afford to consult an attorney, Tolliver said Tuesday he's certain that Compaq is in the wrong, because "shopping" is a generic term.
"I don't know why I should have to give up my site just because they think I purposely tried to trade off their name and confuse their customers. In order to find my site, you have to purposely be looking for it," said Tolliver.
To combat Compaq, Tolliver recently enlisted the help of a group called the Domain Defense Advocate, which organizes e-mail campaigns from Internet users on behalf of domain holders who are the victims of "reverse hijacking." The DDA gained notoriety last year when it was able to deter consumer-products giant Colgate-Palmolive from attempts to take over the Ajax.org Web address.
The DDA's campaign on Tolliver's behalf, however, seems only to have strengthened AltaVista's resolve. In mid-June, he received a phone message from AltaVista's assistant general counsel, Louis Brucculeri, saying the e-mails hadn't changed the company's position and reiterating its demands.
AltaVista officials were unavailable for comment.
While trademark holders have the right and responsibility to protect their marks from infringement, some observers say attorneys are misusing their marks online, particularly in the case of generic terms, and even violating professional conduct guidelines.
"There are ethics involved. If a domain name is not infringing, threatening domain holders with lawsuits is unethical and the trademark holder should be held responsible," said Mikki Barry, president of the Domain Name Rights Coalition, which represents small businesses and Internet users in domain name battles against trademark holders.
Barry advises clients who are in circumstances like Tolliver's to file a petition with the US Patent and Trademark Office, which can ultimately revoke a trademark if it's misused by the holder. According to Barry, such a petition costs $200 to file, considerably less than mounting a full legal challenge.
Another defense tactic being tested by domain holders involves filing a complaint with the appropriate Bar association.
The rights of trademark holders online are expected to be bolstered by proposed legislation introduced in the US Senate earlier this month. The Anticybersquatting Consumer Protection Act would make it illegal to register a domain that included someone else's trademark with the intent of selling it later. Under the proposed law, repeat offenders could be fined up to $300,000 for each violation.
Barry says the bill, despite its name, does little to protect consumers and is skewed in favor of trademark holders.
"It looks like another Communications Decency Act," she said. "It's a vague law intended to protect the trademark lobby, and it would make perfectly legitimate non-commercial speech criminal."