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Reverse Domain Name Hijacking? 27

Posted by michael from the par-for-the-course dept.
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..."
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Reverse Domain Name Hijacking? More

Reverse Domain Name Hijacking?

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

  • Cruel.com (Score:4, Funny)

    by Violet Null ( 452694 ) on Wednesday January 09, 2002 @06:11PM (#2812580)
    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)
  • 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.... (Score:5, Interesting)

      by ivan256 ( 17499 ) on Wednesday January 09, 2002 @06:37PM (#2812914)
      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 (Score:4, Informative)

        by coyote-san ( 38515 ) on Thursday January 10, 2002 @01:57AM (#2814947)
        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.
      • Similarly, if some guy named MCDonald named a single resturaunt after himself beforeThis happened. There was a McDonalds Restraunt and Bar in the Cayman Islands. (it's gone now)I never ate there as the place looked like a dump. I guess that is why they folded. However that is why the island had a Wendys, and a couple Burger Kings, but no golden arches. They refused to change their name to open a place on the island. The name was already taken in that country. They couldn't intimidate the local government to force a change of the other restruant. The golden arches company still hasn't built a restraunt there. You can check for your self in the phone book here. http://www.candw.ky/ C and W stands for Cable and Wireless, the phone company on the island. Search the business listings of the phone book. There is no McDonalds. There is two Wendys and two Burger Kings.
    • This is very interesting... domain name disputes being settled on the basis of trademark holders trumping non-trademark holders.

      But wait! So long as two businesses aren't confused, they can both use the same trademark! (IANAL, but that is my understanding of trademark law in Canada, and presumably in the U.S.).

      So, A has website A.com. A" comes along and gets A® trademarked for A"s business. A" yanks domain A.com from A because A" has a trademark and A doesn't.... A goes and registers A® as a trademark of A, for A's business.

      A now sues A" for "using A® in the domain name A.com in a matter confusable with A's prior use in a domain name". A" is entitled to the trademark A®, of course, as is A, because they are non-confusable businesses. But A" can not use it as a domain name because of A's prior use in that fashion.

      Would some lawyer venture as to what might (hypothetically, of course, not to be construed as legal advice, yada yada...) be wrong with such reasoning? I really don't want to have to register Hollan as a "registrered trademark of Rene Hollan" for purposes of marketting his computer skills to prospective employers.

    • 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.

      Luckily, his lawyers can come up with plenty...the Motion to Dismiss probably has 25 or so that line up in their favor in one way or another. Reading the sources...generally good.

      Furthermore, this isn't a case of a personal website vs. corporation website -- this is corp. vs. corp. Both companies are using the name for business, made slightly more confusing by the fact that they are in the same general market of computers.

      It's not necessarily cake to USI -- they have to show the proof of infringement, intent to damage, and a laundry list of claims that they make. USI probably isn't helped by the fact that they are only selectively enforcing the unicom name (since multiple companies use it, and they're only going after one), and that they attempted to purchase the domain multiple times (and being told no) before they tried to sue.

  • 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.
    • But if we're not supposed to think that way, why did our government instill respect for Abraham Lincoln? We should demand a "government of the people, by the people, and for the people." I think Slashdotters have a good grasp on what our government is supposed to be, which is not necessarily what it is in all cases. Fortunately, we have the rights to do something about it, and at least to discuss it here.
    • >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. I think we have a new Douglas Adams on our hands here.

  • Did anyone read the complaint? (Score:1, Informative)

    by Anonymous Coward
    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.
    • But he has been using it in a domain name longer. Seams to me that he can prevent it's use in a domain name by anyone other than him under trademark law.
    • The issue then becomes the area of business and the issue of confusion.

      When looking at the issue of confusion, the sophistication of the customer base. The customer base of Unicom System Inc is dealing with mainframe systems are unlikely to send a check to Chip by mistake.I doubt that someone intending to by a Ford Ranger, would buy a Ford Model, Jackie Yust [fordmodels.com] by accident.

  • Nee Ho Ma! (Score:2, Funny)

    by Amiga ( 189951 )
    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... (Score:4, Informative)

    by RareHeintz ( 244414 ) on Wednesday January 09, 2002 @10:48PM (#2814379) Homepage Journal
    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 (Score:1, Interesting)

    by Anonymous Coward
    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.


  • 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 ;-)

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