Victory for small business in domain disputes

A reader sent us the link-o-meter to the story about how Clue Computing beat toy giant Hasbro over a 3 year long legal dispute over clue.com (Hasbro owns the Clue board game). Some are hoping that this will mean small business have a precent to call in in the case of legal disputes over names trademarked by different folks-and in related news, Hasbro will be purchasing Wizards of the Coast, Magic:The Gathering card maker, and owner of TSR, Inc.

It's already there.

A company called RealNames is trying to do what you're describing. What's stunting RealNames is acceptance; obviously, companies have to pay them extra to sign up, and that doesn't sit well with them sometimes (they thought they took care of that in trademark registration).

The problem with InterNIC/RSI "impartially" (i.e, non-commercially) administering something like this (besides the fact that it's RSI) is the enormous overhead, plus it's what DNS was supposed to do. They didn't policy-build to account for cybersquatters and the like, and now it's coming back to bite them in the butt.

OTOH, Yahoo lists net presences by category; you could find your category, and then look for Clue (Entertainment:games:board:Hasbro) or Clue Computing (Companies:California:etc.).

I think the current DNS resolution policy would work, if it had more serious teeth. That's likely to be the best solution we'd get.

Help Slashdot clue.com's legal defense fund!

According to their website, 50% of their 1997 revenues and more of 1998s were spent fighting this case:

Lastly, (and it *REALLY* pains us to say this) we need cash to pay the lawyers. Legal defense ate about 25% of our revenue the first year, and for 1997 it was over 50%. 1998 was even worse. If you'd like to send some cash which will be used ONLY for the defense of our domain name, you can send a check payable to:

Philip L. Dubois Attorney Trust Account (include a note that it's for the clue.com case)

and mail it to:
Philip L. Dubois
2305 Broadway
Boulder, CO 80304

$2 each from a good portion of slashdot.org readers would probably reduce that trend.

On a wider note, maybe Rob should add a billing page to slashdot.org where you could use a credit card to donate to a good cause.

Wizard's of the Coast.

Wizard's of the coast actually owns Game Keeper (the mall chain store) now too. It astonishes me that Wizards is allowing themselves to be bought out. But more importantly worries me that many games and game stores might be hurt irreparably in the transition. Wizards bought another Role Playing Game previously from White Wolf Games called "Ars Magica", which was in the same line as Vampire the Masquerade and other Storytelling rpgs. Ars Magica was very quickly dumped on Atlas Games which has since mired the production.

It would be a shame if Hasbro dumped D&D entirely or even put it on the back burner as many gaming stores could be hurt by this move.

For more info on the aquisition goto wizards site [wizards.com].
Joseph Elwell.

Restructuring .com

I'd definately agree with this one, and there are quite a splits that actually might make sense (as opposed to .web, .biz, etc.)

Take for instance, media sources-- there isn't much conflict in that one, as those that are broadcast media have 4 letter designations in the US. There aren't too many magazines willing to get mixed up with each other, and neither are the movies. (sure, there may be crossover between them, but those are the breaks).

As is stands presently, however, the TLDs are completely useless, except for .edu, which you actually had to prove. (and yet, a nursing school couldn't register as one, for some damned reason). .net is filling with non-isps. .org is filling with for-profit organizations. And .com is saturated with every stupid thing out there.

Unfortunately, unveiling new TLDs, without having some major limitations will result in people flooding the registrars to get them, and more TLDs will be more difficult on the people who have enough problems remembering two letters, much less three. There's some solution out there, I just don't know quite what it is, though.

Re:This is a no-win situation

According to corporate law, if someone can prove that you don't enforce your trademark, it becomes dilluted and your right to use it is weakened.

This is only partially true. A trademark is limited in scope - usually to a particular area of trade. There can be no infringement outside of this area (with the exception of well-known marks). The classic example in the U.S. is "Delta". I can think of three right now - Delta Airlines, Delta Faucets, and Delta Dental (insurance). Despite the use of the same name, these three do NOT conflict as far as trademarks go.

Well-known marks would include something like McDonalds, which covers so much ground that McAnything is going to have a problem (yes, I know about the McDonalds in Scotland, and there have been court cases in the U.K. about this very issue.)

Hasbro is throwing its weight around. Based strictly on trademark law, I'd expect Hasbro to lose the appeals, since 'Clue' is not a well-known mark, and there's no significant cross-over between areas of trade. I just hope that Clue Computing can hang in there for the rest of the proceedings.


...phil

Re:Simple Solution - Ban DNS.

That would be an astoundingly bad idea.

The problem is not that DNS itself is flawed; it's that people have chosen to try to use DNS both as a name-resolution system AND as a directory system.

Removing DNS and going to raw IP addresses would break many many things that people rely on:

-- Web sites routinely map a single name to a round-robin of IP addresses for load-balancing. It might be possible to do some kind of nasty reverse NAT to make this facility possible at the IP level, but we have things like DNS to facilitate not having to do nasty destination munging.
-- Companies are currently able to reorganize their internal networks transparently; if your mail address was [e-mail], and then the company wanted to move their primary mail server to a geographically different location, there's no way to point that IP address there without complicated tunneling wizardry. Easier just to re-point a DNS entry for mail.company.com.
-- Companies change ISP's all the time, and IP addresses get reassigned from leaving customers to new customers. Imagine if you'd sent out thousands and thousands of advertisements, business cards, product boxes, and letterhead with your http://xxx.xxx.xxx.xxx address on it, and you went to a new ISP, and your competitor got hold of that address block from your old ISP.

DNS was devised as an abstraction layer above IP addresses to allow tricks like this to happen conveniently, and give some sense of permanence to network addressing, in what's definitionally a change-prone environment. The fact that people have been abusing this abstraction layer for commercial purposes is (a) not surprising, and (b) not at all an indictment of the scheme itself.

DNS is our friend; we just need to get some good rules in place as to how to resolve conflicts like this.
--

This is a no-win situation

Basically, while we all sit around and criticize these companies for throwing their weight around on smaller companies (don't get me wrong, I do it too), a company really has no other choice if they want to protect their trademark. According to corporate law, if someone can prove that you don't enforce your trademark, it becomes dilluted and your right to use it is weakened.

So a company with a trademark must use draconian measures of enforcement when defending their trademark -- they have no choice if they want to prove that to a court that they're enforcing it. And since cybersquatting has been a problem in the past, companies are probably advised by their lawyers that they MUST track down ANY potential use of their trademarked name, even in situations where it won't apply.

Of course, that means nothing to the poor small business owner (or private owner) who coincidentally is using a name that has been trademarked. It's certainly not fair to them at all -- and they don't really have the funds to defend against such matters, nine times out of ten.

It seems like a situation where no one can really win. If a company wants to retain the rights of their trademark, they have to crack down in every situation (which is why Red Hat is doing what they're doing these days). On the other hand, there's no reason why someone in a business completely unrelated to the trademark should ever have to be pushed around by a corporations legal teams.

The only way out of this is to either a) strengthen the rights of the people holding the trademark, so they don't have to enforce it all the time, or b) weaken the power of trademarks significantly, or even abolish it all together, so that no one can lay any kind of legal claim to a word or a phrase.

Either option has its problems, but I think that abolishing trademark would be better than strengthening it -- if it were strengthened, companies would probably find it more "convenient" to force people who had trademarked words in their domain names to hand them over, even if the domain names were used in a way completely unrelated to the trademark itself. If that were the case, sites like ajax.org would have been instantly overrun and they would have had no legal recourse whatsoever.

Hope that wasn't too disjointed...

Trademarks...

Its good that someone finally has woke the heck up over in the Justice System. No one really defined _what_is legal to register and what isn't. But you can waste money doing a trademark search.

Lets quote NSI shall we

Revision 03 Effective February 25, 1998 1. Network Solutions, Inc. ("Network Solutions") is responsible for the registration of second-level Internet domain names in the top level COM, ORG, NET, and EDU domains. Network Solutions registers these second-level domain names on a "first come, first served" basis. By registering a domain name, Network Solutions does not determine the legality of the domain name registration, or otherwise evaluate whether that registration or use may infringe upon the rights of a third party.

This is solely written to deter themselves from suffering legal actions... point blank

2. The entity applying for a domain name ("registrant") is solely responsible for selecting its own domain name ("domain name") and maintaining for the continued accuracy of the registration record. The registrant, by completing and submitting the Domain Name Registration Agreement ("Registration Agreement"), represents that the statements in its application are true and that the registration of the selected domain name, to the best of the registrant's knowledge, does not interfere with or infringe upon the rights of any third party. The registrant also represents that the domain name is not being registered for any unlawful purpose.

Does this mean that if I registered "whatever.com" and three months down the line someone trademarked it, they can now sue me? Some of these laws are a joke... I can see whay they would make these laws being it would deter some moron from registering a site to make massive money, but there a Corporate entities who turn around and bastardize these laws as well

3. Network Solutions neither acts as arbiter nor provides resolution of disputes between registrants and third party complainants arising out of the registration or use of a domain name. This Domain Name Dispute Policy ("Policy") does not confer any rights, procedural or substantive, upon third party complainants. Likewise, complainants are not obligated to use this Policy.

More legal mumbo jumbo from a half assed registrar

http://www.netsol.com/rs/dispute-policy.html

6. Indemnity. The registrant hereby agrees to defend, indemnify and hold harmless (i) Network Solutions, its officers, directors, employees and agents, and (ii) the National Science Foundation ("NSF"), its officers, directors, and employees (collectively, the "Indemnified Parties"), for any loss or damages awarded by a court of competent jurisdiction resulting from any claim, action, or demand arising out of or related to the registration or use of the domain name. Such claims shall include, without limitation, those based upon trademark or service mark infringement, tradename infringement, dilution, tortious interference with contract or prospective business advantage, unfair competition, defamation or injury to business reputation. Each Indemnified Party shall send written notice to the registrant of any such claim, action, or demand against that party within a reasonable time. The failure of any Indemnified Party to give the appropriate notice shall not affect the rights of the other Indemnified Party. Network Solutions recognizes that certain educational and governmental entities may not be able to provide complete indemnification. If the registrant is (i) a governmental or non-profit educational entity, and (ii) not permitted by law or under its organizational documents to provide indemnification, the registrant must notify Network Solutions in writing and, upon receiving appropriate proof of such restriction, Network Solutions may provide an alternative provision for such a registrant.

In other words money talks...

What I wanna know is...

What is Network Solutions going to do in a cross-registrar dispute?

What if they weren't the registrars how are they going to handle things. And when just when are the court systems going to stop letting people twist laws?

oh well back to work...

Common word domain names

"Clue" is a common word. An individual should be able to take any common word and make a domain out of it. It's the company's fault if they name their products single words that appear in /usr/dict/words or personal names (veronica.org dispute). It's the same with movies. If you want a domain for it, don't call it a single word. Make a creative name and your product would be more recognized.

Also, it's a user's fault if they type in "www.clue.com" and assume they are at Hasbro's site. I'm sure there's a card in the box that gives the address, or people can type the company's name. Sometimes I just guess the URL if I'm looking for something, but I look at content if the site comes up.

Are we to assume that if someone knows the name of a product, they should just be able to go to www..com and get there?

Surf on over to www.thatonethingisawinbobsofficelastyearandwantedt ogetformybirthday.com :)

It's a moot point

This is all going to become a moot point now, though. ICANN has developed a new Uniform Dispute Policy [dnspolicy.com] that very soon all new domain registrants and all renewing domain registrants will be obligated to abide by as a condition of domain registration. It makes NSI's dispute policy look like a friendly thing.

The trademark and copyright interests are lobbying ICANN very heavily (including big money Hollywood interests [dnspolicy.com]) for stronger protection, even beyond what the law currently gives them. They can't get Congress, or even the courts, to back them up, so they are lobbying hard within ICANN, and ICANN is listening, not wanting to have to fight big corporate interests who are the ones actually paying ICANN's bills right now (see Follow the Money [dnspolicy.com]).

Soon individuals and small businesses with find themselves in the position of having to do what Clue Computing did, be the plaintiff in a case suing to KEEP your domain name, since under these new policies Trademark holders won't be obligated to take you to court and prove infringement or dilution. You will have to prove you aren't infringing, thus shifting the burden of proof as well as the expense.(Clue Computing sued NSI to prevent implementation of the Dispute Policy)

Not a very promising outlook.

I've been advocating some sort of grass roots campaign [dnspolicy.com] to rally against these actions by ICANN, but some people just see that ICANN is fighting NSI and think that is a justification for them trampling our rights.

--
William X. Walsh - DSo Internet Services
Email: [e-mail] Fax:[phone]
Editor of http://www.dnspolicy.com/

Lawyer: clearly correct under U.S. trademark law

The outcome is clearly correct. The question is whether Hasbro should be sanctioned for an abusive filing for initiating the frivolous litigation.

There are *many* categories of trademarks in the U.S. A trademark in one category does *not* in any way block the identical trademark from being used in another category. That Hasbro has registered "Clue" as a game would in no way stop Ford from building a car called "Clue."

Somehow, Hasbro has gotten the idea that trademarks reach *much* farther in domain names than they do anywhere else. This is simply fallacious, and worthy of sanctions.

hawk, esq., once again griping that judges in general are far too slow to use their authority to sanction frivolous filings.

DNS stinks for the web...

Yes, I know that trademark law stinks too, and that in this particular case maybe it is what needs to go first: but the dns situation is just going to get worse and worse.

There simply are not enough phrases around to give everyone a fair chance with a DNS system where no one cares about anything except the second level name in .com tld. I read on the original vision for the web (from CERN) the other day (it was linked here I believe) and it included critism for keyword systems, and yet what has DNS turned into: write "flowers.com" for flowers, "greetingcards.com" for Greeting Cards, "drugs.com" for drugs (not that kind, of course, that would not be fitting).

The fact that DNS is controlled from the top down plays right into the hands of all kinds of abuse, everything from lawyer happy MN corporations, to NSI's constant monopolist practices, to the intervention of the American regime that is last thing we want on the Net.

Will adding more tlds help? Hell no, companies are already buying out there domains in .org .com and .net, they will go ahead and buy them in .wtf as well.

I can't say that I have a beautiful replacement in mind that solves all the problems, but we have to start looking for a decentralized, non-commericial, non-governmental naming system. The current domain name system is not, and will never be, anything but a bad compromise and a headache for the way the Internet has turned out.

-
/. is like a steer's horns, a point here, a point there and a lot of bull in between.

Re:Name squatters and Large Overbearing Companies

I don't think that there should be a "mapping" between existing corporate trademarks, and domain names. I mean, I don't think that domain names were originally intended to be used that way, and with the nature of the internet, and the way domain names are (were) assigned, we were bound to run into conflicts.

I think a new system of corporate registry is needed, whereby, a given "big corporation" that has it's name as a protected, registered trademark, can register it's name, and be assigned an IP, but doesn't necessarily need a domain name, because this "new system" does not consist of a user, typing the corporate trademark into the Location field of his or her browser.

I don't know if there should be some intermediate "portal" or directory site one should go to first, in order to "hop off" to any given corporation, or whether browsers (or plugins) should add some kind of input field to the UI. It would seem to be more clean if there were just a page one could go to, look up the actual real corporate trademark name (Microsoft Corp. not Microsoft.com), and click on the link, and there you go, no ambiguity, no possibility of hitting some squatter site by mistake, and no need for Corporation X to send paralegal paratroopers in to do a man's job.

The simple mapping of corporate names to domain names certainly is one of the great things about the internet that has attracted a lot of business (because it's SIMPLE for the enduser to understand and implement), but the limitations of using that system for something it was not designed to do are showing.

"The number of suckers born each minute doubles every 18 months."

WotC buyout and D&D

I run one of the larger AD&D sites on the web (I get about 100,000 hits/month, even though I haven't updated it in a year... :-(

Am I the only one that remembers the problems we (ie the gaming community) had with TSR over writing game extension and new rules? Thankfully, this sorted itself out, and WotC seems to have been content to abide by the TSR decision.

I'm really worried about Hasbro, though. Given that they seem to have a rather (shall we say) zealous approach to "protecting" their Intellectual Property, I'm really worried that they might try to revert to the old ways, and start trying to stop alot of the independent authors of D&D material.

I couldn't fight them if I got sued. I don't have the resources. This despite the fact that I've been EXTREMELY scrupulous about making sure none of the stuff on my site is lifted from TSR material. I'd have to close down, and that would be a shame.

Hopefully, Hasbro will Do The Right Thing, and continue with the current policy. People writing new material for the TSR games help sell "Official" material. And I'm well within my rights to create such stuff. I just can't afford to defend myself in court.

-Erik

Re:Name squatters and Large Overbearing Companies

(1) Create a ".r" TLD. (We can't use ".tm", because that's the country code for Turkmenistan.) Only organizations with a registered trademark "foo" have the right to the "foo.r" domain. (If two organizations have the "foo" trademark in two different jurisdictions, then it reverts to first-come, first-served.)

(2) Establish a convention whereby anyone who has the trademark "foo" in the country with country code "xx" can get "foo.r.xx".

(3??) As a condition of taking "foo.r" or "foo.r.xx" domains, a trademark holder should relinquish any ".com", ".net", or ".org" domains they own that contain the trademark, so that the namespace doesn't become congested from large companies grabbing up every possible domain name containing their brand names.