On Tuesday, trademark examiners rejected the Colorado-based ISP’s
cation for a
service mark on Whois in a notice of non-final action. While Verio (VRIO)
has an opportunity to respond within six months. Glenn Beaton, an attorney
ISP, said Verio is likely not to pursue the application further.
Colorado-based Verio applied for the mark in July 1999 in hopes of getting
trademark protection on its domain name Whois.net under the domain dispute
resolution policy then in use by Network Solutions (NSOL)
“With the prevalence of cybersquatting and trademark piracy, I think a
company is well advised to get whatever rights available to its names,”
Whois is a
term used by
numerous sites and software packages for performing look-ups on the database
of domain registrations maintained by Network Solutions.
David Loundy, an Internet attorney with D’Ancona & Pflaum in Chicago said
that because Whois is a generic term, the Trademark Office’s ruling on
Verio’s application was the correct one. “It should crash and burn it’s so
clearly unenforceable a claim of protection,” Loundy said.
Verio assumed the Whois.net registration as part of its acquisition of
TABnet in 1998 and currently offers a domain look-up service at the address
and at Whois.org. SilkRoute Ventures in Singapore has owned Whois.com since
1995, according to Internic records.
Verio’s application for a registered trademark on the name Whois.net was
October 1999. The logo on the company’s look-up page nonetheless bears the
“sm” service mark indicator because the company believes it has common-law
rights to the name, according to Beaton.
Verio’s strategy of applying for trademarks on its domains was generally
sound under the old NSI dispute policy, which gave trademark holders
superior rights in conflicts over a domain name. But under the Uniform Dispute
Resolution Policy adopted by the Internet
Corp. for Assigned Names and Numbers in October of 1999, trademarks
will no longer automatically trump prior use of a domain, according to
Beaton said Verio hadn’t decided whether to enforce the Whois
mark against all users or just instances involving Whois.net.
issue we obviously hadn’t confronted yet, but it appears to be a moot point