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IDG Inc. sent me a letter on February 18th, 2000 demanding my domain name, einfoworld.com. They want me to turn over the registration to them. They don't have a trademark on einfoworld, but they want my name anyway. They demanded I turn it over to them and if I don't I will be liable for legal costs and damages.



CORPORATE GORILLA

You gotta love it. IDG is the huge corporate gorilla behind:

Infoworld 
Computerworld 
Sun World
JavaWorld 
PCWorld
Macworld
Industry Standard

and a host of other websites, books and publications - all dealing with computers and tech. IDG is also the owner of the Dummies series of books. Visit their home page IDG.net (I provide no links to them as they need to approve all links on a one by one basis. I can only imagine how the web, created as a hyperlink entity, has managed to survive this morphing to static state with corporate legal eagles sprouting around each and every hyperlink).

IDG owns the magazine Infoworld (and its related website infoworld.com). And because they do, they think I shouldn't own the domain name, einfoworld.com. And because they think my ownership of this violates trademark law and diminishes their good name I can cause them to lose money. They say:

Your registration and use of this domain name are likely to cause confusion as to the sponsorship and source of any World Wide Web site associated with that domain name. Such confusion will cause irreparable harm to IDG's good will and reputation.


I don't happen to agree with them. And as a recent high profile case proves most people don't agree with this reverse domain name hijacking. Including one of Infoworld's
own...


 

INFOWORLD DEPLORES DIRTY DOMAIN TACTICS

Go to Infoworld's home page (infoworld.com). Do a search for 'domain names' and click on the article by Infoworld's own Net Prophet, Sean M. Dugan:

"The war over a single letter -- eToys vs. etoy"

In a stunningly succinct and cut to the chase article, Mr. Dugan has captured the essence of what he calls:

"a big money corporation using its muscle to push around the little guy".

He asks us to consider how eBay has managed to restrain itself by not suing eBoy.com and how Buy.com can restrain its horde of vigilant lawyers from climbing over Buys.com. And he gives my favorite example: whitehouse.com (a porn site) and whitehouse.gov.

I'd like to ask Mr. Dugan a question. Will you answer the question you posed in your article? You ask us to consider the question of how the little guy can defend himself against a Goliath.  I haven't a clue, yet here I am. What can I do?



PRESENTING  THE FACTS

According to ICANN (Internet Corporation for Assigned Names and Numbers), the governing body of the Internet charged with overseeing domain disputes, the party making the complaint must prove that the disputed domain name was registered in bad faith. The following is a description of what they mean by Bad Faith. Read it carefully.

b. Evidence of Registration and Use in Bad Faith.

For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

I bought einfoworld.com for my own special place in cyberspace. Being known to many as an information junkie, I wanted the domain name einfoworld.com, thinking this was my world of info, electronically. It was available and I registered it on March 25, 1999.

(If Infoworld is so worried about their trademark, why didn't they register this name a long time ago - they are after all, the gorillas of computer information and should have known this was a proper thing to do, unless, of course, it wasn't.) I never tried to sell, or in any way profit from, this name, either to the general public or to Infoworld or IDG. Or to a competitor. Einfoworld.com was so far from infoworld that until contacted by IDG I never made a connection between the two words.

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

I didn't even consider that my name was in any way associated with a trademark. In fact, it isn't. Einfoworld is not trademarked. And I have engaged in no pattern of such conduct. I certainly didn't, and couldn't, register infoworld.com so as to prevent IDG  from reflecting the mark in a corresponding domain name as they own the corresponding domain infoworld.com, which, unlike my domain, is text-identical to their trademark of infoworld . I repeat, einfoworld.com is not infoworld . It doesn't sound the same, it doesn't look the same, neither the name, nor the website. 

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

There is no basis for this at all. It doesn't even make sense in this situation. 
 

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

Since I haven't done anything with the site until now, haven't sent it to search engines at this time, and so far as I know there are no links into my site, I certainly haven't solicited any, nor have I publicized this site in any way, online or off, I have done none of the above.

Until IDG
contacted me I never even thought of using the Infoworld name to attract people to my site, am not doing so now, and have no intention of doing so in future. My site has nothing to do with computers nor anything else that Infoworld is associated with. One of the tests used by the courts to see if a claim for a domain name in a trademark case is fair is to query the defendant as to whether or not they own any other domain names that have trademarks in them. While I do own other domain names, some of which I have up and running as websites, some of which are for sale, the names are quite generic (cyberchocolates.com and e-dates.com for example). I pass this test with flying colors.



WHAT IS REVERSE DOMAIN NAME HIJACKING
AND WHAT HAS BEEN WRITTEN ABOUT IT?

CASE NO. C-96-20434 from San Jose , CA Court in the TY , Inc Case says:

28. In a reverse domain name hijacking, the holder of the registered trademark in an entirely different trademark classification and business tries to take advantage of the fact that a small business or individual cannot afford to litigate the issue of an alleged infringement. The holder of the trademark, after deciding it would like to use the domain name itself, notifies the registered owner of the domain name of its specious claim, and simultaneously demands that the hapless individual domain name holder give up the domain name, based upon an allegation of trademark infringement and dilution. The allegation occurs, as in this case, totally without regard to the fact that, in a trademark infringement action involving two products of the same name, the registered trademark owner could not show infringement or confusion by the same mark in a totally different classification, and cannot prove dilution or diminution of the trademark by the mere existence and use of another product or service using the same mark. Furthermore, a domain name is usually just an address, as in this case, and not a product or service. It is at most a service mark, which by definition does not infringe a product trademark which is unrelated to the service.

72. In this manner, the Courts have the authority to enforce good faith use of trademarks by their owners, and, in turn, to punish bad faith efforts by trademark owners who attempt to broaden the scope of their trademark by misusing the trademark enforcement provisions of the law. This Court and the other Federal District Courts have the inherent equity power, in addition to Section 1119, to carry out the causes of justice in appropriate cases.

Given the facts, how can they prove I have registered the domain name in Bad Faith? It is more likely I can prove IDG acted in bad faith in this attempt at reverse domain hijacking by inappropriately invoking the Trademark Law.



SIMILAR DOMAIN NAMES

It must be frustrating trying to police the internet. If any word containing the term "infoworld" is fair game, then what about the registered names:

Myinfoworld.com
theinfoworld.com
e-infoworld.com

[many additional examples of *infoworld* domain names are listed here]

Does IDG want to control every variation on a theme? In legal discussions of the case of the domain name realworlds.com the following questions were raised.

28. On information and belief, there are many companies that use the term "realworld." By virtue of the way the Internet works, it is impossible for them all to possess the domain name realworld.com. On information and belief, a company called "Real World Data" in Virginia has registered the domain name realworlddata.com, a company called "RealWorld Quality Systems" in Ohio has registered the domain name realworldstats.com, a company called "RealWorld Solutions" in Arizona has registered the domain name real-world.org, a company called "RealWorld Solutions, Inc." in Massachusetts has registered the domain name rws.com, a company called "Realworld Design, Inc." in Delaware has registered the domain name realworlddesign.com, a company called "Realworld Net, Inc." in Washington has registered realworld.net, and a company called "Realworld Onsite Computing Specialists" in California has registered the domain name realworld-rocs.com.

The most spectacular example of similar domain names is one that is identical in its root word, not similar. I am referring to the registered and functioning web site:

www.infoworld.org

This is a text-identical use of IDG's trademarked name and it is a functional website. This domain name was registered in Nov. 1999. If IDG has not demanded this domain name be turned over to them, if they have not found this to dilute their trademarked name or cause them to lose money, how can they state that einfoworld, a word not text identical, is doing so. I have recently contacted the registered owner of infoworld.org and learned that he has not been contacted by IDG to date.

On Feb 17, 2000, IDG registered the domain names einfoworld.net and einfoworld.org. Two days later they demanded einfoworld.com. Why wait so long for these names? IDG never registered infoworld.org. It was available until Nov, 1999. Does this look like a corporation vigilantly protecting its trademark in the very arena in which it bases business? No.

And since they own Computerworld, then surely they must go after and demand that all the names containing computerworld in all its variations, with an 'e', with an 's' or an 'i' (and .net and .org variations) be squashed also. Some registered examples:

icomputerworld.com
ecomputerworld.com

mycomputerworld.com

e-computerworld.com

computerworld.org

In addition, IDG owns Industry Standard magazine, but does not own the industrystandard.com domain name. IDG uses thestandard.com for the name of the website of their magazine. Yet, both names co-exist in the marketplace with no apparent dilution of the IDG's Industry Standard name. SunWorld magazine is owned by IDG. Yet, there exists another Sunworld magazine, this one in England and it is not about Sun computers, but is about solar energy. It too coexists peacefully with IDG's magazine. Even idg.org is not owned by IDG. These are text-identical names, these are names comprised of the exact same words as the IDG trademark. There is no consistency with IDG's policing of their companies' names when they allow these examples to exist, yet they come after my non text identical name and claim I am harming their sales of goods and services by owning this name.  

If they do not go after these examples then I am being singled out and this is harrassment.




WHAT DOES THE CREATOR OF THE WEB HAVE TO SAY ABOUT THIS?

Tim Berners-Lee, known as "the father of the web",  in his landmark book, Weaving the Web discusses the question of domain names and trademarks and the conflicts that have arisen. He states:

"Much of the conflict is due to the mismatch between the domain name structure and the rules of the social mechanism for dealing with the ownership of names: the trademark law...

"Whatever solution is found must bridge the gap between law and technology. One problem is that the better domain names will wind up with people or companies that have the most money, crippling fairness and threatening universality...It is essential that domain names be primarily owned by the people as a whole, and that they be governed in a fair and reasonable way by the people, for the people."

Mr. Berners-Lee follows this with a discussion of "how to prevent a company from snapping up names with every English word related to them". He makes the excellent suggestion that widget.com becomes widget.boston.ma.us.

Along these lines I have considered domain name donation to charities and other non-profits and have had preliminary discussions with greatdomains.com regarding domain donation.



 HOW WE CAN SOLVE THIS
 

IDG: If Mr. Berners-Lee can envision cohabitation, peacefully, then surely so can you as world wide representatives of computers and the people who use them. All the people. Even those with e's before their names. I am willing to put a link prominently on this site,  pointing people to infoworld.com if they should somehow come here by mistake.  This is the way of the web. For an example see the uspto.com link to uspto.gov. If such an arrangement is sufficient for the US Federal Trade Mark Office, I would hope that it would be sufficient for you.

I would like to  ask you to help me build a bridge over that gap that exists between law and technology, as Mr. Berners-Lee described the current situation.  It isn't often that a corporation, dedicated to computers, technology and their societal effects, can prove to be agents of change in the marketplace and the courts of law.  But if anyone can do so, then certainly IDG can.

If you don't want to dilute your trademark, then perhaps you want to strengthen it.  Let Infoworld stand for technology for all, let the digital divide be a little less divisive because Infoworld helped make it so. Let us coexist.


last updated 02/27/2000
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