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.
This past May, however, Tolliver’s site came onto the radar of Compaq’s
trademark attorneys. The company sent him a letter saying he was infringing
on Compaq’s trademark and demanded that Tolliver give up the site by June 10th.
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.”
