Reverse Domain Name Hijacking?

outlier writes: "Sit right back and you'll hear a messed up tale of what can only be called reverse domain name hijacking. Chip Rosenthal is being sued because the domain Unicom.com that he registered in 1990 (before the web even existed.) allegedly infringes on Unicom Systems, Inc.'s trademark -- filed in 1997! Never mind the fact that there are tons of companies using the name Unicom. The whole sordid saga is chronicled at http://save.unicom.com. Again, somebody tell me why the system isn't broken..."

so if I happened to register

slashdotty as a trademark, you'd be out of business? (never mind that you were around first)

Cruel.com

Cruel.com said it best: "All Your Domain Are Belong To Us"

In 1990, Chip Rosenthal registered unicom.com for Unicom Systems Development. Eleven years later, Unicom Systems sued him for infringing a trademark it registered in 1997, relying on a unique legal theory involving a breach of the space-time continuum. (12-31)

i hate to say this....

Here's how i see it

Unicom Systems Development going up against Unicom Systems, Inc. (USI holds the tm on "Unicom")

USI took the time to register their trademark, while USD did not. Since there is no statue of limitation on defense of trademarks, USI has some real beef here. If I register the term "slashdot" as a trademark tomorrow, I can legally sue (successfully too) Slashdot.org for tm violation, even though Slashdot.org was here several years already. It also wouldnt matter if I sued next week, or next century, I'd still win.

There have been plenty of prior cases on this issue -- Ford Motors vs. ford.com comes to mind -- guy with last name Ford registered Ford.com before Ford Motors did. But since Ford Motors had that tm, they were able to obtain ford.com from Mr Ford.

The major difference here is that USD was around long before USI registered their mark, but how that fact will play out is a very interesting question. I know of cases where that's happened, just cant think of any right now.

Point: This case will be very tricky for USD to handle, but to USI it's almost cake.

Re:i hate to say this....

That's bullshit. What if USD only did local consulting and was not invloved in interstate commerce. Their trademark would not be valid for registration in the USPTO because they have no juristiction, but their trademark would still override the registered mark in the region it was used in by USD beacuse they were around first. Similarly, if some guy named MCDonald named a single resturaunt after himself before the chain "Mcdonalds" existed he would not be forced to change the name of the existing resturaunt after "mcdonalds" registered their trademark. The rules of domain dispute resolution involving trademarks are to simplistic to deal with the complexities of trademark law in the real world. This is the fault of the people who made the arbitration rules, not of the USPTO ar any similar organization. If USD brings this to state court in his local district he should win.

Hard Rock Cafe, another example

Another good example is the "Hard Rock Cafe."

The overpriced chain has sued a number of small restaurants in mining towns for trademark infringement, even though the mining town restaurants usually predated the "victims" by many decades.

The chain, having deep pockets, usually won by simply outspending the Mom&Pop restaurants in economically depressed towns. But I don't think it ever won in a case where the owner had the resources to force the issue into court. After all, these cafes took their name from "hard rock mining" (as opposed to "white metal mining," soft metal mining, et al.)

Since the restaurants didn't have a federal trademark on the term they couldn't stop the chain from using the same name, but they never sought that. But since the restaurants didn't engage in interstate commerce and clearly predated the national chain, the chain couldn't force the restaurants to change their name.

You don't understand the real issue...

Which is that /.ers seem to have a fundamental misunderstanding of how the law works. An assumption is made that the law has to have a logical, moral, or at least actual physical basis. None of these things are true. The problem us "Intelligent", "Nerdy" people have with the legal system, however, is deeper than it seems at first. Most of us have been led to believe that the world operates according to a set of physical laws. Inside a courtroom certain physical and logical laws may cease to apply, such as that of cause and effect, gravity, or that of the law of the buttered side down. This can lead to comedic side effects, such a the legislation mentioned earlier, or people floating around, as well as truely stange and interesting studies in the exciting dynamic field of buttered bread flipping.

Did anyone read the complaint?

In the defendant's response letter they make reference to Chip having rights to a "common law" trademark because of his use of the term since 1990.

In the complaint filing, the plaintiff claims to have been using the term since 1989.

It would seem to me that if "common law" rights are the deciding factor here, Chip is going to lose since he hasn't been using the term for as long as the company suing him has.

Nee Ho Ma!

China Unicom is a huge telco in China with state backing. USI had better start learning kung-fu cos otherwise they're in for a beating!

Ugh... migraine coming on...

I'm beginning to think that the only way to deal with problems like this - abuses of corporate wealth - is to stop offering corporations the same rights to legal recourse as people.

A corporation is really just a legal fiction with the rights of a person. Unfortunately, the wealth corporations tend to accrete seems to offer them better use of those rights (e.g., legal redress of grievances) than real people actually get. Is there some answer other than limiting the rights of corporations to sue?

OK, now I'm just going to ramble... I'll think about this more and post it to K5...

OK,
- B

There is precendent

And it isn't good. A local company had registered gateway.com about three years before they had their copyright. Gateway Comp was using gw2k.com, took them to court, they got gateway.com, since they had more of a interest using it.

Restricted TLD to replace trademark symbol

I have been in contact, for quite some time, with US and UK authorities (and lawyers) about these domain and trademark problems.

The United Nations World Intellectual Property Organization and the United States Department of Commerce already knew that a restricted TLD was required for trademarks (e.g. dot REG).

They knew the answer to exclusively identify ALL trademark domains.

Information for lawyers - yes I know all about classifications and all the other 'so-called' problems.

Please visit WIPO.org.uk [wipo.org.uk] to see rationale behind the solution (which was self-evident).

Incidentally, you would think the news media would report on WIPO.org.uk - as the United Nations WIPO.org take away similar domains to trademarks - wouldn't you?

Also they would report the fact that the solution was ratified by honest attorneys - including the honourable G. Gervaise Davis III, a UN WIPO panellist judge himself.

I have contacted over 100 news editors and journalists of newspapers and TV. Perhaps they are all ignorant imbeciles and could not recognize a story if it bit their bottom ;-)