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The Courts Government News

Chip Rosenthal Wins Unicom Domain Name Case 170

Seth Schoen writes "As seen last month, Chip Rosenthal (whom many people know for Reply-to Munging Considered Harmful, among other projects) was threatened with the loss of his domain name unicom.com. He's now won in court and will get to keep the domain, at least for the time being."
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Chip Rosenthal Wins Unicom Domain Name Case

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  • by TrollMan 5000 ( 454685 ) on Tuesday February 05, 2002 @11:01AM (#2955274)
    Mr. Rosenthal secured the domain in 1990. It seemd to be his. How this got that far into the courts mystifies me.

    According to the plaintiff's charges, Rosenthal was being accused of cyberpiracy. Why? It's almost like a child throwing a tantrum when he can't get his way.
    • Evil Priority (Score:2, Offtopic)

      by fm6 ( 162816 )
      Believe me, you do not want this kind of case settled sole on the basis of who-filed-first. If we took that approach, we'd all be paying half our income to the holders of submarine patents [finnegan.com].
    • What a silly question. Even people without a leg (wooden, plastic or virtual) to stand on file suits every day just to see if the threat is enough to get another party to back down.

      As for the suit, ok, the California part is over, but it's up to UnicomSI to decide if they want to pursue in the district of Western Texas. Until such time as they throw in the towel or Chip is victorious in Texas, it ain't really over.

  • Leave him alone... (Score:4, Insightful)

    by PoiBoy ( 525770 ) <brian AT poiholdings DOT com> on Tuesday February 05, 2002 @11:01AM (#2955277) Homepage
    Since he registered this domain way back in 1990, I don't see how this California company has any claim to it. Notice that the company became interested in acquiring the domain around 1998, about the time every company on the planet decided to get online. Seeing that an individual owned the name they wanted, they figured they could throw a few lawyers at the problem and scare the person into giving it up. They thought wrongly.

    Sure, cybersquatting just to extort money out of a company or to otherwise do harm to a company is wrong; in these situations I think companies have legitimate beef with cybersquatters. However, let's not ignore that fact that this guy registered the domain in 1990!

    • Besides, he couldn't really qualify as a cybersquatter when his registration precedes the plaintiff company's mere EXISTENCE! He's also been actively using the domain for WWW, e-mail, gopher, etc. Not just putting up a page saying, "This domain for sale"!
      • Oops, looks like they did exist... but they didn't trademark the Unicom name until 1997. My bad.
      • Actually, unicomsi has been around for ~20 years. They claim to have registered the trademark on UNICOM (and attached thousands of circled "R"s on their web paged) in 1989. The domain was registered in Feb of 1990. Now, I would submit, Mr. Rosenthal had no knowledge of the existance of the "international powerhouse" of unicomsi (not being a Fortune 100 company and all.)

        Of course, their failure to "protect their mark" for 12 years is extremely damning evidence. I say let him keep his domain name AND nullify the trademark as well *grin*
      • Try telling that to the Texan lawmakers. If they want to impose their views on the entire world wide web, there seems to be no stopping them.

        Our next step is to register "tx" as a trademark in Uganda, then sue the state of texas and force them to surrender their .tx domain. It's really no different.
  • Cyber squatters (Score:3, Insightful)

    by sweat ( 552480 ) on Tuesday February 05, 2002 @11:02AM (#2955281)
    I have never been a fan of companies being able to override people who own domain names. First come, First serve should apply. Especially if the domain name was originally purchased before the company was even formed. A similar example was the newish Minnesota Wild NHL team sued a childrens magazine(titled Wild) even though the magazine was around for years before the team even existed. Crazy.
    • First come, First serve should apply.

      Actually, I have a real problem with that. There were all sorts of speculators who tried to sign up domains for recognizable trademarks in the hopes of making a lot of money selling the domain back to the trademark holder. To me, that is un-acceptable.

      Now, the people who registered generic terms for domains (i.e. drugs.com, beer.com, etc) - those were the smart people because the domain could properly be sold to the highest bidder.

      In this case (and the example you quote with the NHL Wild), the companies trying to get a domain that was registered long before the company existed, these people are no better than the cyber-squatters and do not deserved to be treated any better.

      It's too bad that they are the ones with the money and the lawyers though. It would be nice if ICANN and their *cough* impartial *cough* dispute mechanism could take this sort of thing into account. Mind you, it would be nice if ICANN had the broad interests of the entire Internet community at heart as opposed to the corporate interests it seems to represent.
      • Again, this is why the generic TLD's (.com, .net, etc) were a bad idea to from the beginning and should be done away with. We still live in a world with nations that have their own laws. Every domain should have a ccTLD, so the applicable laws apply.

        If you register a common word as a domain (beer.com.us) then you can auction it off. Individual countries would be responsible for 2LD management so that McDonald's (the restaurant chain) and McDonald's (the hardware store) could both have their name. You shouldn't be allowed to squat on your name across every namespace when others have a legitimate claim as well.

        If you are truly international, register your .int domain, give up rights/claims to any ccTLD domain you have, and agree to settle disputes with WIPO or similar agency.

        These stupid domain-name-trademark infringement cases would become drastically more scarce. Seems fair to me.

        • We still live in a world with nations that have their own laws. Every domain should have a ccTLD, so the applicable laws apply.

          Yes but individual states also have their own laws. And in many countries individual towns have their own laws. So by your argument, every domain should be geography-specific enough that it is in one, undebatable, jurisdiction. Even if it means going several subdomain layers down. Most people would consider that an unnacceptable sacrifice. The internet is a global network. That's one of its strongest benefits.

          • In legal terms I think the phrase that applies is, "It's the law. Deal with it."

            Convenience might have to be sacrificed. TBL never intended URLs to be exposed to users anyway. Remembering that long string is only slightly less clumsy than remembering the IP. But, if your states/districts want their own control and their own subset of laws to apply, then you will have to deal with reduced convenience. If the citizens don't like it, vote in somebody who will change it. Just because the internet is a global network doesn't mean we have to throw out all rules (which are inconvenient) in favor of anarchy (which is convenient...until someone takes your domain name, at which point you wish you had some rules).

        • Actually, they aren't that bad if people actually obeyed the original charter: .com is for COMpanies, .net for NETwork providers, .org for non-profit ORGanizations.

          One cannot rely completely on "first come" or trademarks or copyright. Domain disputes are complex problems. The bigest problem is all the lies and posturing associated with almost all disputes. In this case, he got there first and without incident for *12* years.
          • Yeah, it would help if groups would actually stay in the TLD that best suited them. That's what I meant when I said they shouldn't squat across every namespace.

            Still, there are different "areas" for copyright. For instance, Acme Computers does not infringe on Acme Coffee, even thought they have the same name. Both have a legitimate claim to be the .company that "rightfully" gets acme.com. That's why we should move to ccTLD's exclusively, and let nations sort out the rest by their own (copyright) laws.

      • This wasn't a case of cybersquatting -- but of someone who was legitimately using a particular domain name for 11 years before one of at least four companies with the same name decided to sue. First come, first serve may not be the best policy -- but after 11 years, even if this particular Unicom somehow "owned" the name, they've lost the trademark by non-enforcement.
  • I've met Chip. He's a decent guy. It's nice to see that the good guy does win once in a while.
  • by mythr ( 260723 ) on Tuesday February 05, 2002 @11:02AM (#2955289)
    He wins the right to keep his page up at that domain, and, within minutes, we bring it back down. Now that's irony.
  • Funny (Score:2, Interesting)

    by .sig ( 180877 )
    Checked out his website, got a laugh out of it. Apparently during the case, he was using his website to keep us informed of the progress of the case. So, he was defending his right to keep his domain, on which he reported on the defending of his right to keep his domain, on which he reported on the defending......etc

    • It's kinda funny, too, that he was slashdotted before and I couldn't get the finding to come up, probably slashdotted again.


      It's an interesting read and a very professional job, aside from the shout outs, of assembling a track. Kudos to Chip for keeping people informed and placing the relevant information in an easy to read and access format. Others could learn from him, or heck, even hire him as a consultant, I expect he could do with some employ. *hint* *hint*

  • by sjhwilkes ( 202568 ) on Tuesday February 05, 2002 @11:05AM (#2955303)
    Companies should be checking domain name availability before coming up with names, either that or develop a more relaxed attitude to all the different TLD's. - I worked for too many firms that consider 300 odd names their right.
    • Companies should be checking domain name availability before coming up with names

      I agree with you on new companies but this wasn't the case here. This is a case of a company with a poor sense of timing. According to their site the have existed since 1981 but they didn't register a trademark until 1997? (Although they did mention something about a prior trademark that was abandoned in the suit). Then after registering a trademark they decide to register their domain name, find it exists, get pissed off and sue.
  • by Masem ( 1171 ) on Tuesday February 05, 2002 @11:09AM (#2955328)
    While I agree that the case shouldn't have even come this far (first come, first served back in the 90s), I also think the Judge's reasoning on the non-commercial nature of the site are to be noticed. Specifically, the platiffs tried to point out that the site had the authors email, resume, phone, and other ways to contact the author if they wanted to talk about business deals. The Judge summarized that these were all passive, in that no business activity or exchanging of money was done through the site itself, nor the direct selling of a product. (This was even considered in the posting of the resume; the judge disagreed that the author was selling himself to outside companies). Thus, trying to call the site 'commercial' failed, and thus fell out of the traditional cybersquatting situation.

    Unfortunately, this is a limited decision, but hopefully others (like WIPO!) would consider some of this ruling to be reasonable when deciding other domain name battles.

    • Unfortunately, this is a limited decision, but hopefully others (like WIPO!) would consider some of this ruling to be reasonable when deciding other domain name battles.

      Remember that WIPO is a for-profit thing. They make their money off of people who choose them to arbitrate intellectual property issues. Therefore, its in their best interest to *always* decide for the plantiff rather than the defendant in IP disputes so that more plantiffs bring their cases to WIPO.

      Indeed, this seems to be their business model, because something like 80% of WIPO cases are decided for the plantiff... complaint bringer... whatever.

      It's a clear case of conflict of interests, but it continues nonetheless.
    • I am no lawyer but if you look through all the documents and filings, etc. you will see that the cybersquatting charge was dropped. In the argument and reasoning that you are referring to the court was trying to determine if it had jurisdiction over Rosenthal. To do that, one of the points to consider was if the defendant had done substantial commercial activity in CA, which of course, wasn't the case.
  • by Elwood Blues ( 127255 ) on Tuesday February 05, 2002 @11:09AM (#2955334) Homepage
    Let me preface this by stating I'm currently a law student (actually in my civil procedure class right now).

    The court did not render a judgment stating he had the right to his domain. Rather, they said that suing in California was not permissible due to a lack of jurisdiction over him.

    There are several ways to establish jurisdiction over an out of state defendant:
    -If Chris had "systematic and continuous" contacts with the State of California
    -If his website was of an ambiguous (courts have a nebulous examination standard) level of interactivity and accessible from California (contacts with California established via the Internet)

    Because they didn't find either of those, the court determined that he couldn't be tried in that court. This does not preclude the plaintiff from bringing a case in Texas against him.

    Basically he just won this battle. It's possible the war is still going on.
    • by chip rosenthal ( 74184 ) <chip@unicom.com> on Tuesday February 05, 2002 @12:04PM (#2955651) Homepage
      I agree with your analysis. However it greatly rearranges the playing field, and that helps me tremendously. I won't have to fight a long-distance lawsuit. If they choose to re-file, they would have to retain ($$$$) Texas counsel. (I believe all of their work on the lawsuit to-date has been done with in-house counsel.)

      I think the big value in the Unicom v. Rosenthal decision is that it provides the independent web publisher some peace of mind that some company cannot reach out, claim jurisdiction, and make them fight a long-distance lawsuit. That's very expensive and very difficult.

      • That may or may not be true. It's possible, though unlikely, that they may have members of their in house counsel with licenses to practice in Texas and/or agreements national firms that do. They also have the option of becoming licensed, which may, in fact, be less expensive than hiring local counsel.

        Just my 2 cents...
      • This was not to slight your decision at all. "Winning" is always a relative term, especially in the legal field.

        I really think what's important coming up about these types of jurisdictional issues is the distinction courts are making with regards to the interactivity of websites determining whether or not you've "entered" the forum state. Your page is rather static, but if you'd offered a product for sale, or possibly the ability to directly communicate with another individual in California, the jurisdictional issue may have been decided otherwise.

        Actually, the Northern District of Texas set out a description of whether or not a website creates "sufficient contacts" in the forum state in Mink v. AAAA (190 F.3d 333). Basically the court described three points on a spectrum of websites: 1) fully interactive, and/or commercial, 2) somewhat interactive, 3) static pages. The court is the determiner of where a website falls, and if it's somewhere within 1 or 2, a website operator may be under jurisdiction in a state where the site is viewable.

        Granted this is one court's decision, but the extreme difficulties in quantifying interactivity make this a sticky issue.

        I really think this highlights the need for a clear legislative or Supreme Court ruling on these types of issues.

        Again, I'm just a first year law student, about a month and a half into civil procedure--but I have been following the growth of the Internet and the arising legal issues since 1994. I do think the correct result was reached on this issue, and hope that they don't pursue the case any further.
    • The court did not render a judgment stating he had the right to his domain. Rather, they said that suing in California was not permissible due to a lack of jurisdiction over him

      True, the judgement is based on jurisdiction.

      But the court goes on to explain why UNICOM wouldn't have a claim to the domain anyway: that a name, phone number, and resume do not make a site "highly commercial", and that Chip was (obviously :) unaware of UNICOM's trademark rights when he registered to the domain name.

      So they establish some precedent that would make it very hard for UNICOM to appeal under a different jurisdiction.
  • by jeffy124 ( 453342 ) on Tuesday February 05, 2002 @11:09AM (#2955335) Homepage Journal
    the case was tossed out by the judge because Chip was from Texas, not because he was there first or anything to do with trademarks. This was very similar to what LindowsOS is trying to do with Microsoft. MS wants the case tried under Washington state laws, but LindowsOS is trying to get the case tossed because they havent done any business in Washington.

    At any rate, Unicom Systems Inc will find a way to keep things going against Unicom Systems Development, we'll here more about this in a few months.
  • Clarifying the Win (Score:5, Informative)

    by Jim Tyre ( 100017 ) on Tuesday February 05, 2002 @11:15AM (#2955369) Homepage
    We did win (I'm one of Chip's lawyers, so I can say "we"), but the thing isn't necessarily over yet.

    Chip is in Austin, Texas, but the Plaintiff sued him in Los Angeles.

    When we responded to the Complaint, we made several alternative motions, one being that a court in California lacked personal jurisdiction over Chip, not only because he's in Texas, but also because he does not have sufficient contacts with California to make it reasonable for him to be dragged into court here.

    The Court granted our motion to dismiss for lack of personal jurisdiction. That's a big victory, there's much to be said for the proposition that courts do not have unlimited reach, even when the Internet is involved (think Matt Pavlovich and the California DVDCCA case, for example), but it isn't a ruling on the merits.

    If Plaintiff should choose to file a new action against Chip in Austin, we have plenty of ammunition for arguing the merits of his rightful claim to the unicom.com domain name, but readers should not assume that this win addressed that issue. The Court's ruling is here [unicom.com].

    • Going through the ICANN dispute resolution system? Have you?

      You might want to write up an article about the case for this place or k5 [kuro5hin.org].

      • Re:Have they tried (Score:5, Informative)

        by Jim Tyre ( 100017 ) on Tuesday February 05, 2002 @11:38AM (#2955485) Homepage
        Going through the ICANN dispute resolution system? Have you?

        No, they didn't go through ICANN. (Allegedly) aggrieved domain name owners can either use the ICANN UDRP or go to court, they're not required to use the ICANN procedures first. These folks chose to go to court first.

        As for Chip, he would have no reason to go to ICANN. unicom.com is his domain name, he isn't contesting that the Plaintiff can keep its name, unicomsi.com.

        • by wiredog ( 43288 )
          I was wondering if this was like the eReferee case, where the corporation lost in UDRP, and then won in court.
    • When we responded to the Complaint, we made several alternative motions, one being that a court in California lacked personal jurisdiction over Chip, not only because he's in Texas, but also because he does not have sufficient contacts with California to make it reasonable for him to be dragged into court here.

      Ok. So in the ruling, it says:

      Here, Plaintiff has failed to establish that Defendant's internet activities are purposefull directed at California in a substantial way. The only portion of Defendant's website that Plaintiff claims is "presumably" commercial is the copy of his resume. This is nothing more than a passive "advertisement" for Defendant's services akin to the web site in Cybersell. Unlike Colt or Stomp where California consumers purchased goods or services directly online, Defendant's resume does not enable people to automatically hire his services online.

      Is this saying that had unicom.com been offering the sale of products or services to anywhere, including California, that would have justified jurisdiction for California courts in this case?

      That seems strange to me. Why would his selling products and services to California justify jurisdiction? Hypothetically, what if a website offered products that are legal in the state that it resides but illegal in California. For example a cheap system for disconnecting California emmissions systems on automobiles. This is something that might be valuable and legal to someone living outside of CA. Is it now the responsibility of the seller to refuse to sell the product to CA residents?

      If so, what does that say about the Skylarov case. Does California, or anywhere in the US justifiably have jurisdiction, and justification for arresting Skylarov based on his selling software that is (stupidly) illegal in California and the rest of the US?

      My concern about this is that it seems like it's setting a precedent for making it impossible to sell things over the web. The seller has to not just take into account the laws that govern the selling of the product where he lives. He has to be aware of the laws that govern the buyer of his product. This seems to me to be an unreasonable burden for the seller of products and services over the web to carry.

      IANAL. Did I get this wrong?

      • IANAL either, but I'm afraid mjh got that right. It is encouraging that the courts are recognizing _some_ cases where web sites don't come under distant jurisdiction, but very discouraging to discover all the things that can make them liable to be hauled into a far-away court...
  • The court did not rule on the substantive issues - whether or not Rosenthal has the right to continue using the domain name, or whether his use of the name violates the California company's trademark. Rosenthal won because the California court did not have personal jurisidction over him - a procedural matter.
  • HAve you noticed (Score:4, Interesting)

    by wiredog ( 43288 ) on Tuesday February 05, 2002 @11:17AM (#2955383) Journal
    That the corp sueing him apparently didn't go through the ICANN name dispute resolution system? Interesting that they realize that ICANN has no real power in those sorts of disputes. Not that it's any surprise See this story [cnet.com] from a year ago for another example of using the courts to avoid/overrule ICANN.
    • HAve you noticed That the corp sueing him apparently didn't go through the ICANN name dispute resolution system? Interesting that they realize that ICANN has no real power in those sorts of disputes.

      Actually, ICANN does have power, in that possession is often 9/10 of the law, and an ICANN decision will yank the name and put it in the plaintiff's hands right away.

      What is really interesting is that they chose not to use the ICANN "arbitration" procedure (I use the term in quotes for a reason), particularly in light of the fact that the ICANN "arbitration" procedure is designed to favor the plaintiff. The plaintiff pays for the procedure, chooses the arbiter out of several competitors (obviously the ones who tend to rule for the plaintiff are outcompeting the more fair alternatives), and the defendent has no recourse once the domain name is taken away (aside from a civil suit to get the name back).

      One could speculate either way on why they would go to the courts, rather than use a remedy procedure that costs less and is clearly slanted in their favor. It is interesting, in any event.
      • Perhaps they use the courts since the courts can award monetary damages and can order the defendent to pay for the plaintiff's lawyers and for the court's costs (i.e. the defendant has to pay for all the costs of the attack against him). The plaintiff ends up paying nothing in that case.

        Also, violations of the various trademark and cybersquatting acts can lead to up to a $100K fine!

        The worst a UDRP hearing can do is a domain transfer.

        Maybe the company wanted to line its pockets with the defendant's money and/or make him bleed. Note: even middle class defendants have houses that can be foreclosed on and sold to pay a judgement - so a lawsuit is useful to hurt/destroy an opponent and can be profitable even if the defendant doesn't have any spare money lying around (since the courts can sell everything one owns).

        Just because it isn't moral doesn't mean it isn't legal.

        Plaintiffs get undeserved judgements that bankrupt defendants so often it is commonplace.
    • That the corp sueing him apparently didn't go through the ICANN name dispute resolution system?
      Well, if they had, and the ICANN followed it's own rules, ICANN would have had to rule in Chip's favor. ICANN rules in favor of those who were there first -- the domain, or the trademark. In this case, the domain was there long before any trademark.

      Only if a domain is registered after a trademark is created do they start figuring out the purpose of the domain and such (and they usually side with the plaintifs, but that's another story.)

      At least if you go through the courts, there's a good chance they won't undertand and will side for you due to that.

  • First things first: Congratulations, Chip.

    This decision, though good for Chip, does not address the merits of the case, only the question of whether a California Court has jurisdiction to hear it. Presumably, the plaintiffs could got to a Federal Court somewhere and get the case heard (disclaimer: I don't know all of the facts, so that is merely a presumption on my part)

    That doesn't mean the decision isn't interesting. The judge includes a nice discussion of purposeful availment and standards used to decide when the operator of a web site has or has not made him/herself subject to a jurisdiction's laws. Very good to see that mere presence doesn't trip the wire.

    • A small point. The Plaintiff is not barred from bringing suit again. This is not simply because the decision was not based on the merits. Under Rule 41(b) of FRCP, if the federal court does not specifiy dismissal with/without prejudice, prejudice will be assumed, invoking res judicata and barring future suit. There are three exceptions to 41(b) where prejudice will not not be presumed, however, and Lack of Jurisdiciton happens to be one of those. THe ends are the same, but you can't say just because a case was decided on procedure the issues will not be barred in future suits.
    • Thanks for the support, Dino.

      I think the decision goes beyond interesting, and really will be valuable. The jurisdiction question is an area of the law that needed clarification, and I'm really proud that we were able to do that. This decision will help shield the independent web publisher from "long arm" tactics, that would pull them into a long-distance lawsuit they couldn't fight.

      (By the way ... I was sued in a Federal court, not State court. If they want to come back after me, they are going to have to come to Austin and do it.)

      You are right that there were other matters in question, but once jursidiction was settled they all became moot. Somebody, someday, is going to have to litigate those issues too. (Hey, why you looking at me!!?!)

      • >By the way ... I was sued in a Federal court, not State court

        Oops! Gotta get those glasses fixed. ;0)

        Like you, I was pleased by the Court's decision. Web Access may be worldwide, but the Web itself is as local as it is global.

        Following a snowstorm the other day, I hoped onto the local high school web site to see if my daughter's driver's ed class would be cancelled. My local library publishes it's schedule on the web. My neighbor across the street advertises his local heating and cooling business on the web.

        People in California or Timbuktu can look at these sites, but the intended audience is right here in St. Charles, IL. Well, Tony's happy to service customers in the surrounding towns, but not Calfornia.

        Reasonable standards of contact are required to activate long-arm statutes and I'm glad to see the Courts making sense when applying those standards to this case.

        Side note. Putting the check in the mail this week to renew my law license.

        I may not do much with it, but at least I'll be able to reply to any nastygrams as "Attorney at Law"

        The way things are going these days, that can only be a good thing.

    • I forgot to say that the judge here did not mention the issue of prejudice in the opinion so 41(b) is invoked (or would be if Plaintiff sought a new trial on the same claim) :)
  • The very fact that this got as far as it did shows a ton about our legal system. A company with relatively deep pockets is able to force a guy to go to court and pay two lawyers to fight a frivilous lawsuit.

    If I were him, I would file a countersuit. He registered the domain in 1990, and since the company didn't file for the trademark until 1997, he might have a lawsuit for *them* for trying to name their company to take advantage of his domain's popularity. ;-)
  • by Anonymous Coward
    So instead of losing the domain, he just gets slashdotted.
  • The thing.. (Score:5, Insightful)

    by Heem ( 448667 ) on Tuesday February 05, 2002 @11:37AM (#2955479) Homepage Journal
    The thing that bothers me the most about this is how much time and money it cost Chip just to defend himself. How many of us have those resources? If someone came after one of my domains, I'd fight as much as I could on my own, but in the end would probably be forced to give up. Thats what these corporate types want. they have the money and the resources to do this. There needs to be a law to protect US from this behavior.

    • It's called tort reform. In many countries, if you sue somebody and lose, the courts can rule that you must also pay the victor's legal fees. Unicom would never have sued Chip if they thought they would end up paying Chip's legal fees as well as their own, because I doubt that their lawyers ever thought the case was all that strong. In the US, it's not whose case has the strongest merits, it's who has the most money.

      The anti-reform people say that the US system is good because it guarantees that the little guy gets his day in court. The problem with that stance is that the little guy can't afford his time in court anyway.
    • The thing that bothers me the most about this is how much time and money it cost Chip just to defend himself.

      This bothers me too. Chip, how 'bout it? Care to disclose how much this has cost you? I'd like to know. Personally, I think the plaintiff should be forced to reimburse Chip for all of his expenses + some percentage of that for wasting his time. Otherwise, what's to stop companies from simply dragging things out until you can no longer afford your legal bills? I for one find it bullshit that Chip should have to spend a single penny of his own money on this.

      If someone came after my domain, I don't know what I'd do. I don't have many thousands of dollars laying around to defend myself. I suppose I could go into debt and spend the next 10 years paying it off, but how fair is that?
  • ./ time... (Score:3, Informative)

    by tomknight ( 190939 ) on Tuesday February 05, 2002 @11:59AM (#2955617) Homepage Journal
    I followed the "Reply-to Munging Considered Harmful" link, and after about 20 lines, the page stops loading. Press refresh, and I see a 404....? Huh?

    Try the main page, and I see it now says:

    I am Slashdotted

    Sorry ... this web site is Slashdotted at the moment.

    Here is the Google cache version of my main page.

    Until my new shipment of bandwidth arrives, you may want to visit the Save Unicom.Com web site.

    Okay, the google cache for his main page is at: http://www.google.com/search?q=cache:ta1nhhNpbHMC: www.unicom.com/+&hl=en [google.com]. If you really want a good read, look at the Save Unicom.Com web site [unicom.com] he mentions.

    Tom.

  • So what we have here is an individual claiming his rights to a .com(mercial) address which he himself claims not to be using commercially ?

    Shouldn't a commercial company like Unicom have the rights to the Unicom.com address, rather that an individual exploiting the weak control of .com addresses? As far as I'm concerned, he is a squatter in some sense. Or should we change the meaning of .com to .common ?

    And with a new top domain like .biz, one has to ask whether that will be under better control than .com. Or will .com-owners claim ownership on .biz domains with the argument that "customers" shouldn't be confused when visiting both unicom.biz and unicom.com ?
    • It's a valid argument, but a) there is no TLD specified for personal sites and b) whether or not it was first intended for commercial use, it certainly HAS become the generic or "common" domain.
    • You have to remember that in 1990 when Chip registered UNICOM.COM, there were few TLD's available. .EDU, Nope not a school. .GOV, nope not part of the Gov't. .NET, nope again not a network provider/company. .ORG Nada not a non-profit. that leaves only .COM.

      I seem to recall reading Chip's posts on usenet back then and UNICOM.COM was his address and the address of his 'company'. That alone gives hime the right to register and use unicom.com.

      One of the 'rules' for sitenames even back then was All the good names are taken.
    • So what we have here is an individual claiming his rights to a .com(mercial) address which he himself claims not to be using commercially ? Shouldn't a commercial company like Unicom have the rights to the Unicom.com address, rather that an individual exploiting the weak control of .com addresses? As far as I'm concerned, he is a squatter in some sense. Or should we change the meaning of .com to .common ?

      A squatter, as has been pointed out, is one who takes the name of a company in hopes to sell it. Obviously, in this case, the term does not, in any streach of the imagination, apply.

      The problem with .com is not the fault of Chip Rosenthal, but rather the management of domain names. An interesting example is Microsoft. Go to either http://www.microsoft.com [microsoft.com] or http://www.microsoft.net [microsoft.net]. Both result in the same site, both are commercial sites, but one is .net.

      Unicom.com also can justify being a .com in that it is a service to the commercial community. I came across it while seeking information on mailing lists (granted, by the time I ran across it, it was slashdotted, and I can't see the article).

      As to Unicom having a right to the domain, there is no justification for that. They waited all this time to set up a website, they made no attempt to take care of this facet of their interests, and in no way affected Rosenthal's decision to register the address.

      I'm also rather disgusted by the reasoning behind the Squatter rulings. The issue is not that they tried to profit from the URL, but copyright/trademark infringment. Take for instance AltaVista.com. It was registered before the search engine, the owner had legal claim to it, yet he sold it. This is no different from companies buying a valuable piece of real estate they have no intention of developing. They take the risk and expense on themselves, and profit if it pays off.

    • The Website belongs to Unicom Systems Development, Chip's professional alter ego, so it's definitely a valid registraion. The Crazy Finn
  • For those who can't access the site, here it is:

    I am Slashdotted Sorry ... this web site is Slashdotted at the moment. Here is the Google cache version of my main page. Until my new shipment of bandwidth arrives, you may want to visit the Save Unicom.Com web site to read about the lawsuit.

    Now how's *that* for Karma Whorin! ;-)

  • Priority? (Score:4, Informative)

    by markmoss ( 301064 ) on Tuesday February 05, 2002 @12:35PM (#2955878)
    If you read through Unicom Systems, Inc.'s first filing, you'll see that they claim to have been using "Unicom" as a trademark since 1989 -- which seems to give them priority, except...

    Lots of other companies have used trademarks including the word "unicom". Rosenthal says he searched the federal trademark registry and found more than 20 registrations besides unicomsi's 3. Or in a search I just ran myself, Thomas Register (http://www.thomasregister.com/, registration required) lists 3 companies whose names start with "Unicom", not including Unicom Systems Inc. There's a maker of industrial air filters in Oregon, a printer in Alberta, and a "LAN products manufacturer" in California. I wonder if that one has heard from Unicomsi?

    IANAL, but it certainly looks to me that, no matter when unicomsi registered their various trademarks, they've never had priority to just the name "unicom", or even to that name in a computer-related market. According to Rosenthal, unicomsi's registered marks are graphic designs including the word "UNICOM" -- that makes the whole mark a valid trademark (assuming the graphics are unique), but it hardly gives them the right to the name itself. And if they did own the name as related to software, still they failed to defend it for 11 years.

    Anyway, this round was only about whether u-si could sue a Texas website in a California court. If u-si wants to hire a Texas lawyer, they can start over again in Texas -- of course, this is more expensive for them, and I'd certainly be amazed if they won in _any_ court on the facts I know of.

    If they do continue in Texas, a suggested settlement: Rosenthal puts their banner ad at the top of his web page "Were you looking for Unicom Systems, Inc., support for legacy...". Not that he couldn't beat them entirely, but it would save time and money.

    The great thing about that decision is that it tends against all the various silly lawsuits claiming that because your web site can be seen, or is mirrored in, or links to sites in some other jurisdiction, you can be yanked into court in a different state or country.
  • Prior prior use (Score:2, Interesting)

    by netringer ( 319831 )
    The U.S. Federal Aviation Administration defines the term UNICOM [bldrdoc.gov] as the radio handle of the managing authority of an airport, usually the airport's Fixed Base Operator (FBO), the airport's local "service station." That use goes back to the earliest days of aviaton radio in the 1920s.

    At O'Hare airport [airnav.com] UNICOM is on the 122.95 frequency.

    Fighting over the first use of the term UNICOM is like fighting over who owns "home page."
  • Interestingly enough, the unicom site is slashdotted, but the www.unicomsi.com site is not. (But gee, those pages sure are loading slowly. I plan on checking the page-load speed several times today to see if it gets any worse.)

  • There is a case to be made that there is nothing wrong with cybersquatting. From my point of view, its no different than when some smart investors back in the day bought lots of worthless land and held onto it because they knew eventually railroad companies would need it. Nothing wrong with that -- they had foresight, the railroad companies didn't. Similarly, a wise person today would buy land about a block back from the beachfront on California. Why? Because the average water line is advancing. In about 40 or so years, land that is now "beach front property" in California will be underwater and land that is now worthless and a little bit back, behind the current beachfront property, will be beachfront property. Nothing wrong with that either. In both of these cases, there is nothing wrong, even if the individual only bought the land to later sell it to the railroad company or hotel company at a high price.

    However, consider a reverse case. Consider if a smart large bank -- like JP Morgan and Co -- buys tons and tons of land, which is now cheap. Despite the land now being cheap, it will eventually be valuable, as the US population is increasing and more space will be required to house future populations. Once over-crowding starts occuring, and people experience the need to perhaps live on the inter-city land that populates our expressways/highways/throughways/whatever, the banks will be in prime-time position to sell that land at outrageous prices. That doesn't seem so fair, and for good reason. Why? Because it is the powerful using their resources to take advantage of the disempowered.

    Though these cases are relevant to the internet-case of cybersquatting and reverse-cyber-squatting, they don't map directly. These cases deal with real-world examples, real world property. The internet is more metaphysical, abstract: in the realm of ideas.

    (1) Cybersquatting is registering a domain name with no intent to use it, but simply the intent to use the name as leverage to get a company, organization, or person to buy it at the highest price possible; alternatively, the site may be used for some constructive purpose, but aa temporary location for that constructive purpose, with the end goal being using that domain name to extract maximum money from another entity.

    a. Against a company. An example would be my registering the domain name www.ibm.org and never using it for anything, but simply hoping that IBM would pay you money to get the rights to it. This brings up an important point. As IBM already has a website -- ibm.com -- its claim to take that site from the original owner based solely on cybersquatting is diminished. IBM already has a recognizable domain name which will bring most people to it: in fact, the most recognizable domain name. Company.com is what you type as a standard to get to a companies home page. A case where the company would have a strong claim would be where it had no internet site before, and someone put up site wwww.company-that-previously-had-no-site.com, and put nothing on it, its clearly to extract money. However, if they put up such a site and provided a message board about company products, criticisms, etc, as well as information and hints from ppl who've bought their products, then its not cybersquatting and the organization has no claim.

    b. Against an organization. For example, registering the domain name www.naral.net in hopes of extracting money from NARAL. Again, the same as above applies. NARAL has the most obvious most recognizable website for what they are, so their claim is diminished. But if someone puts up a site wwww.organization-that-previously-had-no-site.com, and has no intention of using it for any purpose, but only trying to extract maximal money, that's cybersquatting. But if they put up such a site and use it constructively -- i.e., perhaps they have their own organization/group abbreviated by "ORGANIZATION", or perhaps they with to criticize said organization, or perhaps they want to make it an informal "fan page" -- then its not cybersquatting and the company has no claim.

    c. Against a person. This hasn't occured much yet, but it may in the future. For example person A, named John Doe, puts up a website named www.janedoe.com. He has no intention of using that website, but knows Jane Doe is rich and will eventually want to have her own website after her own name; so he simply holds onto the website, in hopes that eventually he can squeeze her. This is cybersquatting. But if another woman with the same name, Jane Doe, puts up a website and uses it, its not cybersquatting. Finally, if a company or organization puts up a website with a persons name -- unless it be an organization member -- that's cybersquatting. Organizations/companies have no business putting up sites named with people's name. The only exception would be if that person is a member of the organization, or if they want to use that person as a positive example; i.e., an anarchist organization putting up the domain name KattieSierra.com to honor her. There's nothign malevolent about that; though, of course, if she doesn't want it, she has the rights to claim it. Every individual should be able to claim a domain name named after them. In cases where individuals share the same first, middle, and last names, first come first serve (unless one David Cassidy puts up a website titled David Heinrich to try to extract money from all the other David Heinrich). These are the easy cases. What about the hard cases. What if someone who hates you puts up a website with your first, middle, and last name -- johnxdoe -- and spews about how much of a jerk you are, makes hateful remarks about you, and otherwise demeans you on the site. Or worse, what if said person puts up a website with your name and pretends to be you, except misrepresenting you? I think that these cases are unacceptable. And I realize that's iffy. If someone wants to put up a website trying to masquerade as me or insult me, they should have to in some way put "anti" or something similar in the address: i.e., www.antidavidheinrich.com. This is a minor restriction on freedom of speech which serves to prevent misrepresentation.

    Now, back to the comparisons with people hoarding potential rail-road land back in the day, or buying "2nd tier" beach property in California. There is a clear difference between those cases and stategic registration of domain names. Those cases apply for physical property and must be strategically made; one can't simply buy all land. Furthermore, one is actually abstracting the real value the land will hold in the future. That property is in fact that valuable, and would cost that much to the hotels. But if I squat a domain name, the company might have to pay me a million dollars for something that would've costed only a few bucks otherwise.

    Its not that I'm for big corporations. Its that this type of game-playing demeans the usefulness of the internet and domain names. And its not to say that big corporations don't play this game to.

    Corporations usually don't engage in cybersquatting; though they could if they wanted to. Cybersquatting is really a riskless activity, as I believe it should be. Do you really want to fine someone or put them in jail for that? The worst that can happen is the person loses his domain name, and doesn't get to sell it to the corporation for a high price. But back to corporations -- what they do do is distort cybersquatting norms to allow them to strangle competition or prevent sites from displaying that are critical of them, and otherwise abuse domain-name norms.

    A site opens up with the domain name, www.anti-riaa.com, and uses it to harsly criticize the RIAA. The RIAA sues for "cybersquatting". Plainly ludicrous. Cybersquatting implies that the "target" had the intent or motive to want to use the domain-name. The RIAA would never use that domain-name. Yet, they want to claim it in order to prevent criticism. This is a kind of reverse cybersquatting. It furthermore diminishes the functionality of domain names. People expect that if they type in such a domain name, they'll get a website against the RIAA, not a blank page.

    Another case is where companies try to take away competing companies domain names, or individuals domain names based on "trademark similarlities". Prime example, Lindows.com. Do they really think that people will confuse Windows with Lindows? Most intelligent people wouldn't. But even if they would, that's not Lindows fault -- that's the fault of ppl who are so dumb. Furthermore, Lindows intent isn't to confuse people, making them think its an MS product. Its simply to let them know that it should work fine with MS software. If anyone is confused, they'll be straightened out once they look at the sight. More disturbing is the implication by MS that they have trademark rights to anything that rhymes with Windows, or if of a similar sound.

    I think its obvious to most COMMON-SENSE people that something is or is not cybersquatting when they see it. But that ridiculous definition of "I'll know it when I see it" doesn't do. The public has a right to know EXACTLY is and is not acceptable; EXACTLY what is an is not, for example, "PORNOGRAPHY" (one of the more brilliant quotes by one of the 9 wise men, "I can't define it, but I'll know it when I see it"). If we cannot define precisely what is not an acceptable activity, we have no right to expect people not to do it. People need to know the rules of the game before they play. There's no reason why norms, laws, customs, etc can't be as precisely defined as the rules of chess.

    For example, in chess, there are a few official rules, clearly defined, and there are also some "unofficial" rules which any two professionals understand:

    (1) The official rules. I.e., how each piece moves, exceptions to the normal movement of pieces, conditions in which the king must move, stalemate conditions, and checkmate conditions.

    (2) The unofficial rules. A typical set goes something like this: 1 You touch a piece, you have to move it; 2 No taking back moves; 3 No talking; 4 No motions, positions, etc that would distract the opponent and detract from his/her ability to think.

    The rules in chess are clearly defined. There is no ambiguity.

    The rules governing law and domain-name resolution should be the same: precisely clear. I will attempt to propose some here. I do not pretend that they are perfectly clear, nor that they are comprehensive. But I will try to make them as much so as I can. Obviously, a real set of rules needs to be thoroughly thought out. Each rule must be stated as clearly as possible, as elegantlty as possible, and with as few words as possible. There must be a sufficient number of rules to cover all "inappropriate activity". Here's my rough draft:

    1. IF someone registers a domain name (entity-name.com) BEFORE entity-name does, assuming entity-name exists at the time of registration, AND that someone has no intent of using that domain name, but only trying to extract money from entity-name, THEN it is cybersquatting. The entity-name should be able to obtain entity-name.com from the cybersquatter at the price of domain-name registration.

    2. IF someone registers a domain-name (entity-name.com) BEFORE entity-name does, AND actually uses it for some purpose, whether connected to the domain-name or not, AND has no intent of using it to extract money from entity-name, THEN that is not cybersquatting. Entity-name can always register the domain-name Entity_name.com.

    3. IF someone registers a domain-name (entity-name.com) BEFORE entity-name does, AND uses it for some purpose, whether connected to the domain-name or not, BUT has the intent of never-the-less using it to extract money from entity-name, AND is thus simply using that "purpose" as a front, THEN that is cybersquatting. The individual can copy the web-site content to his hard drive and post it at another domain-name. Meanwhile, entity-name should be able to get entity-name.com from that individual by paying him the cost of registration.

    4. IF someone registers a domain name (entity-name.com) before entity-name exists, THEN no matter the post-entity-name existance activity of that someone, it is not cybersquatting. Whether or not the indivual makes use of that domain-name, it is clearly not his intent to use the domain-name to extract money from entity-name. Simply because the person has not yet used entity-name.com by the time entity-name comes into existence does not mean the person should be deprived of his site. There has been no planned extortion. Should entity-name offer the individual money to get that domain-name, so be it.

    5. IF entity-name already owns a domain-name (entity-name.com) AND an individual creates a site with a similar domain-name (i.e., entity_name.com), AND that individual's end intent is to extract money from entity-name for entity_name.com, THEN that is cybersquatting. However, entity-name hasn't as strong a claim to have the domain-name taken away. Entity-name already has the best domain name possible (as they themselves have affirmed by registering that as their domain-name). They have no real need obtain entity_name.com when they already have entity-name.com.

    6. IF entity-name already has a domain-name (entity-name.com) AND an individual creates a similar domain-name (i.e., entity_name.com or anti-entity-name.com), AND uses that domain name either to offer useful information about entity-name from a member/customer's pov, or to criticize entity-name, THEN that is not cybersquatting. Entity-name has no claim to take away that domain-name.

    7. Dormancy time limit. I believe that all "intellectual property" -- if we are to have such a draconian thing -- should last a maximum of five years. Thus, for non-users of a domain-name, the domain-name is automatically relinquished from their control after 5 years if they do nothing with it. "Nothing" is a very high standard. If an individual uses the domain name for nothing other than saying, "I like blah blah blah blah blah", then that is NOT nothing. Nothing means either no page has been put there, or its just been a "for sale" sign for 5 years, or its just been an "under construction" sign for 5 years.

    8. Assumption of innocence. The party brining the complaint must prove beyond a reasonable doubt that the other has done what is alleged.

    9. The power tilt modifier. Naturally, in resolving disputes, the balance should be tilted towards the side of the less powerful, as the less powerful is more likely to be the innocent side in any given case, and the side less able to defend itself. If the less powerful is the person bearing the complaints, then its tilted towards them. If the less powerful is the person brining the complaint, then its tilted towards them. This does not overturn rule #8, but only modifies it slightly.
  • by Animats ( 122034 ) on Tuesday February 05, 2002 @02:33PM (#2956802) Homepage
    It's not that hard to get a trademark. It can be done entirely on-line [uspto.gov] now. Base price is $325.

    Trademarks can be registered on either the "principal" or the "supplemental" register. Trademarks on the principal register can be enforced against others. Trademarks on the supplemental register can't be enforced against others, but prevent others from claiming you are infringing their trademark. If your application for registration on the principal register is rejected, you can often get a registration on the supplementary register, for which the standards are lower. In particular, you can usually get a supplementary register trademark on a commonly used word, which is valuable for domain purposes.

    Either way, you get to use the ® symbol, and you're protected against any trademark-related claims on a domain.

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

    Because of they way the Internet is being mismanaged, conflict is impossible to avoid.

    Virtually every word is trademarked, be it Alpha to Omega or Aardvark to Zulu, most many times over.

    MOST share the same words or initials with MANY others in a different business and/or country. For example, the World Trade Organization (WTO) shares its initials with six trademarks - in the U.S. alone.

    The solution to exclusively identify all trademark domains was always self-evident.

    It was ratified by honest attorneys - including the honourable G. Gervaise Davis III, UN WIPO panellist judge.

    I truly believe that the United Nations World Intellectual Property Organization and the United States Department of Commerce hide it for reasons of money and power - that they are corrupt.

    They wish to abridge peoples right to use these words - they violate the First Amendment.

    Please visit WIPO.org.uk [wipo.org.uk] to see the simple solution - no connection with United Nations WIPO.org ;-)
  • This case was dismissed because the defendant A) wasn't in california and B) didn't talk to californians, as far as I can see.

    Did the kid who wrote DeCSS in another country have any contact with California? (Which is where I thought the DeCSS case was litigated...)

    Is there a way that they can use this ruling?

Men occasionally stumble over the truth, but most of them pick themselves up and hurry off as if nothing had happened. -- Winston Churchill

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