Richard Schiff thought he found a perfect Web address for his startup Webzine: thenewyorker.com. The New Yorker magazine, however, disagreed.
Like so many start-up Web publishers, Schiff, CEO of Gilford Graphics Advertising, immediately gave in when a bigger, more powerful company objected to his choice of domain names.
He's not alone. Web site publishers are giving up domain names too easily when there are conflicts, according to Michael H. Davis, an intellectual property law professor at Cleveland State University's College of Law. "People are rolling over left and right because the people with the money and resources are overreaching," Davis said, and they may not always have legitimate claims.
But fighting is easier said than done. Schiff, who began publishing his Webzine, The New Yorker Gazette, at his Netgazettes site in August, said he was shocked and frightened by the strident, intimidating letter he received from the New Yorker's lawyers in October. It accused him of "trademark infringement, unfair competition, and dilution under both federal and state law." Worse yet, it threatened severe punishment including monetary damages, interruption of his Web site, and plaintiff's attorney fees.
The letter demanded that Schiff "immediately cease and desist from all further infringing use of The New Yorker, change the name of your Internet site, assign the thenewyorker.com domain name to our client, and destroy all advertising and promotional materials bearing the mark."
Schiff did it all. "We were totally shaken by this," he said. "We're a little tiny company in New Jersey. They got very heavy with us and accused us of trademark infringement as if we were trying to imitate The New Yorker magazine."
The New Yorker magazine could not be reached and the magazine's law firm refused comment.
"The minimum advice I would have given him is hold onto [the domain name] unless [The New Yorker] is willing to pay for it. This guy just rolled over and got nothing," Davis said.
Not only did he get nothing from the name, but Schiff complained that he got less than nothing. "They treated me as though I was a criminal not deserving of even my $100 dollars back" for registering the domain. Then there's the matter of his attorney fees. "I have yet to get the bill."
Ironically, Schiff's major beef is not with The New Yorker. It's with the InterNIC. He thinks there should have been some place where he could have searched for all registered names. But there is no such site. InterNIC's policy is to put names on hold when trademark disputes occur.
As for Schiff, he wants to do the public a favor. "I really believe people should be informed that they can get in a lot of trouble by registering other people's names on the Internet. I found out myself."