[agenda] Attempt to monopolize registration of domain names?

[Vratislav Kuska <abcint@fox.nstn.ca>]

To:
The World Intellectual Property Organization (WIPO)
The Internet Corporation for Assigned Names and Numbers (ICANN)
The Federal Trade Commission (FTC)




Protect domain name holders' rights! Stop reverse-hijacking.


"Accordingly, we renew our demand that you transfer ownership of domain
names with the second level domain "register" to Register.com, Inc."


>At 17:55 +0000 1/15/1, A. S. wrote:
>As you may know, register.com has been chasing all owners of sites with
>>register in the name and "asking" them to hand over their domains.


>At 06:48 -0800 1/16/1, F.B. wrote:
>No, we have not been contacted by Register yet. Please
>do NOT give them our name. We do not have the money to
>fight them. However, if you should get into a class
>action suit with them, we will join.


>At 10:01 -0800 1/7/1, J. C. wrote:
>I say let the lawyers come and we all fight them.


Knowing that lawyers fees alone could be in the hundreds of thousands of
dollars, many small businesses are transferring for free valuable domains
to companies threatening them. Sometimes it also means handing over the
entire business.


According to a letter from the law firm Skadden, Arps, Slate, Meagher &
Flom LLP (Skadden.com)* acting on behalf of Register.com, Inc.,
Register.com, Inc. seems to claim ownership of all Internet addresses
(domains) with the word "register" in them:

>
>"...we demand that you notify us in writing that you will (i) take down
>the Infringing Web Site, and (ii) transfer ownership of the Infringing
>Domain Name to Register.com, Inc., as well as any other domain names with
>the second level domain "register".
>
>"...a finding of intentional service mark infringement could entitle
>register.com to, among other remedies, enhanced damages and attorney's
>fees under United States federal law, and punitive damages under United
>States state law.
>
>Accordingly, we renew our demand that you notify us in writing that you
>will (i) take down the Infringing Web Site, and (ii) transfer ownership of
>the Infringing Domain Name to register.com, as well as any other domain
>names with the second level domain "register". If register.com does not
>receive your written assurances by January 2, 2001, register.com will have
>no option but to take all necessary action to protect and vindicate its
>valuable rights." (end of quote)
>
>
>
*>With more than 1,550 attorneys, Skadden, Arps, Slate, Meagher & Flom LLP and
>its affiliates (collectively referred to as "Skadden, Arps" or the "firm")
>is one of the largest law firms in the world.
>http://www.skadden.com/onefirm/default.html
>
>Intellectual Property Group - Trademark Litigation, Licensing
>and Prosecution Practice
>
>Part of our 50-lawyer domestic intellectual property practice, the Trademark
>Group in the New York office of Skadden, Arps, Slate Meagher & Flom LLP and
>affiliates ("Skadden, Arps" or the "firm") concentrates in all areas of
>trademark work, including  extensive federal court litigation involving
>trademark infringement, dilution, breach of license agreements and
>cybersquatting issues. http://www.skadden.com/onefirm/default.html

xxxxxx

Registering a generic business name or Internet address (domain) could be
considered erroneous as far as the protection of name and acquisition of
trade mark is concerned. Generic names can not be trademarked because  they
are not unique and could be confused with similar generic business names or
Internet addresses.

Generic names which could not be trademarked could not be also claimed as
lawful service marks in an attempt to prevent others from employing widely
used generic words.


Quote:

 "To qualify for placement on the federal register, a trademark must be
distinctive enough to identify the business as the only source
of the goods or services. Ordinary names (including descriptive, laudatory,
geographical, personal, and generic names) do not qualify for federal
registration and exclusive use by a single entity." (end of quote)


I have received confirmed information that lawyers for Register.com, Inc.
are sending demands to transfer to Register.com, Inc. ownership of domains
with the word "register" in them to many owners of such internet addresses
(domains). If so, it could be an attempt to monopolize the business of
domain registration and put most domain registrars out of  business.

Register.com, Inc. has been attempting to obtain trademark to the word
"Register" since April 26, 1999, and apparently was not successful.
Nevertheless, it is trying to intimidate rightful owners to obtain transfer
of ownership of domains with the word "register" in them to Register.com,
Inc. (incomplete search revealed 11,445 domain names with the word
"register"). In my opinion, this might be a very questionable, perhaps not
entirely legal, business practice.

To be protectable as a trademark, a name has to be in some way distinctive,
not what the courts call "ordinary" or "merely descriptive" or "generic". A
trademark could not be obtained and a service mark could not be used to
protect the common name of a product or service - say, the name "Directory"
(a generic term), or the phrase "Telephone Directory" (a description of a
category of directories).

(quote): "A service mark is any word, name, symbol, device, or any
combination, used, or intended to be used, in commerce, to identify and
distinguish the
services of one provider from services provided by others, and to indicate
the source of the services."

How the word "Register" distinguishes the Register.com, Inc. services from
the services of other registrars and thousands of "Registers" (Lloyd's
Register of Ships a register published annually since 1766, Military
Register, Birth Register, Marriages Register, Church Register, City
Register,  Sailors Register etc.)  is a mystery. It could only be true if
one believed that the owner of the domain Register.com automatically owns
all rights to the word "Register" (owns the word "Register") and thus also
automatically owns all the domains with the word "register" in them, all
11,445 of such domains.

Would anybody let Register.com, Inc. gain that much advantage? Would
anybody wait till they own most of the domains with the word "register" in
them?

To intimidate small businesses by threats of lawsuits is usually
successful. Many small businesses are giving up valuable domains because
they could not spend hundreds or even tens of thousands of dollars and
weeks or months of valuable time to fight "financial giants", threatening
(quote):

>>>>
"among other remedies, enhanced damages and attorney's fees under United
States federal law, and punitive damages under United States state law."
<<<<

>>>>
"If register.com does not receive your written assurances by January 2,
2001, register.com will have no option but to take all necessary action to
protect and vindicate its valuable rights." (end of quote)
<<<<

Knowing that lawyers' fees alone could be in the hundreds of thousands of
dollars, small businesses are giving up (transferring for free to the
companies threatening them) valuable domains. Sometimes it also means
handing over the entire business.

If Register.com, Inc. succeeded in obtaining most domains with the word
"Register" in them, it could eventually obtain the domain R.com and demand
that all domains with the letter "R" in them must be transferred to the
Register.com, Inc. After that, Register.com, Inc. could obtain domains
A.com, B.com, C.com etc. and in a very short time it would own the
Internet...


> Here are the latest results from the TARR web
>server:
>Serial Number: 75691042
>Registration Number: (NOT AVAILABLE)
>Mark (words only): REGISTER.COM
>Current Status: An office action suspending further action on the
>application has been mailed.
>Date of Status: 2000-06-30
>Filing Date: 1999-04-26
>Registration Date: (DATE NOT AVAILABLE)
>Law Office Assigned: TMO Law Office 112

(http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=75691042&action=Reque
st+Status)


(Mr.) Vratislav Kuska
ABC International
117 Westmoreland Rd.
Kingston, Ontario
Canada K7M 1J6
Tel. (+1-613) 545-3885
Fax. (+1-613) 545-9458
Mailto:Kuska@Canada.com
http://www.NatNews.com

Concepts and scripts of effective
Internet presentations. Evaluation
and improvement of existing sites.

Double the number of visitors to your web site in twelve months with our
proprietary, unique method.



(Mr.) Vratislav Kuska
Manager
Kuska House
117 Westmoreland Rd.
Kingston, Ontario
Canada K7M 1J6
Tel. (+1-613) 545-3885
Fax. (+1-613) 545-9458
Mailto:Kuska@Canada.com
http://www.travel24.com/adressenweltweit/default_adressenweltweit.htm
(Authors)

Concepts and scripts of effective
Internet presentations. Evaluation
and improvement of existing sites.

Double the number of visitors to your web site in three months with our
proprietary, unique method.