Ajax.org wins trademark fight

In what may sound like a hybrid between Greek and Hebrew stories, Ajax.org has slain its Goliath.

The nonprofit site recently became the target of Colgate-Palmolive when trademark lawyers from the household products giant and maker of the Ajax cleanser requested that the independent site yield its domain name.

"Our Ajax trademark has come to be associated by the general public with the Colgate-Palmolive Company, and has acquired considerable and valuable goodwill," wrote Colgate-Palmolive attorney Bret Parker in an email message posted to Ajax.org.

"In addition, the mark is famous and entitled to the full protection of the law. Your use of the Ajax.org domain name will undoubtedly dilute the significance of Colgate-Palmolive Company's trademarks and will result in consumer confusion with respect to any products and/or services which you may provide," Parker continued.

Parker went on to suggest that Ajax.org could be "subject to an injunction, damages, reasonable attorney's fees and costs, and other penalties and fines" if it failed to act. Parker requested that Ajax.org relinquish the name.

In a subsequent correspondence, Ajax.org owner Benjamin Kite scrappily defended his position.

Kite argued his ownership and use of the name on a number of points, noting that he had registered a ".org" domain meant to designate organizations rather than corporations and that the name Ajax was used by dozens of companies in industries that did not pose the threat of consumer confusion--a key test in trademark disputes--with household cleansers. Plus, he pointed out, the name has been in use by poets and playwrights for thousands of years.

Ajax is a hero from Greek mythology who was killed in the Trojan War.

"I suggest that you dig up Sophocles and Ovid and sue them, since they have written poems and plays bearing the same name," Kite wrote.

In his correspondence with Colgate-Palmolive, Kite offered to relinquish the name in exchange for a payment of $5,252.52 to cover his costs in changing the site's name and address.

Colgate-Palmolive declined the offer and threatened to invoke its trademark to have domain name arbiter Network Solutions suspend Ajax.org.

In response, Ajax.org launched a public relations offensive that both Kite and legal observers credit with its victory in getting Colgate-Palmolive to back down.

A petition linked to from news and advocacy site Slashdot.org generated more than 1,300 signatures in a 24-hour period. Ajax.org prepared a news release, solicited the pro bono advice of a number of trademark attorneys, and mustered its resources to get the word out about the threat from Colgate-Palmolive.

Last week, Colgate-Palmolive ended the fight.

"I am happy to report that I have concluded that your current use should not cause confusion with our Ajax trademark," wrote Scott Thompson, vice president and associate general counsel for Colgate-Palmolive. "Consequently, I have informed Network Solutions that a resolution has been reached and it will not be necessary to suspend the use of your domain name under current circumstances."

Colgate today acknowledged the authenticity of the correspondence posted to Ajax.org and released a statement confirming that the company had withdrawn its request to Network Solutions to have the site suspended. The company declined further comment.

"I think it's clear they realized they had stumbled across a hornet's nest of bad publicity," said Cooley Godward attorney Eric Goldman. "They didn't want another Pokey.org. Even if you can win that kind of case, it still doesn't mean it's a good suit to bring."

Goldman was referring to the brief battle in March in which the Prema Toy Company, which owns trademarks on the claymation character Gumby and Pokey, challenged the use of "pokey.org" by 12-year-old Web designer Chris Van Allen. The company's action turned into a public relations disaster, and it subsequently withdrew the challenge.

Goldman said Colgate-Palmolive's case would have been far from assured had it pressed its claim. A name such as Ajax, which has scant generic relation to its industrial category, is considered a fairly strong trademark within the category, Goldman said. But outside the category of household cleansers, "it's not going to travel very well," Goldman said, echoing Kite's observation that industries from air conditioning to Dutch soccer uses the name.

While this is good news for whoever has to fend off a trademark infringement claim from Ajax (provided that person or firm isn't selling bathroom cleanser), it may be bad news in terms of attracting additional trademark actions from the other firms of the same name.

"Trademarks of this sort are very interesting in the domain name context," Goldman said. "Usually someone who gets the name gets 500 potential lawsuits along with it. And there's not a whole lot we can do about that. That's the fun thing about trademarks and domain names--it's a perpetual motion machine."

The Ajax.org owner said he was not concerned about a rash of new trademark actions against him.

"There are all those other Ajaxes out there, and its certainly possible that they will horn in on this particular domain," he said. "But this battle should show them that we faced down the Ajax with the most resources, and we're not going to back down so easily."