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Sun, domain holder in trademark hot water

Sun Microsystems is actively promoting a new service dubbed DataCenter.com, despite the fact that it doesn't own the domain name.

Sun Microsystems is actively promoting a new service dubbed DataCenter.com, despite the fact that it doesn't own the domain name.

Over the past few months, Sun has taken out ads in trade magazines and newspapers such as the Wall Street Journal to pitch the package of enterprise services it is calling "DataCenter.com." Sun says it registered the name as a trademark, but that is no consolation to the person who owns the real Net address.

"They're beginning to brand the domain name, and it will be known as Sun's," said Eric Woodward, who registered "DataCenter.com" with Network Solutions in October 1997.

Woodward said he was contacted by Sun in February, which the company confirmed. But he said no one ever followed up with him about possibly giving up the name. Now Woodward isn't sure whether he will pursue the business he was planning to market at "DataCenter.com," offering storage space for companies' servers.

"Sun is spending a lot of money marketing a domain name that we own," Woodward said. "I don't know what they are thinking."

What Sun is thinking is simple. The tagline ".com" is synonymous with the Net these days, and Sun said DataCenter.com is a perfect name for its program to put clients' internal data centers online for e-commerce and other applications.

Sun's DataCenter.com advertisements point people to a page on its corporate Web site, "www.sun.com/datacenter," although the company admits the signals could be confusing to some. Sun also owns the trademark ServiceProvider.com as well as the domain name, which it bought from a German company.

"We're not trying to brand the programs with [Net addresses] you can go to but to focus on the '.com' strategy," said John Loiacono, Sun's vice president of corporate brand marketing. "We got the ServiceProvider.com domain name only at a convenience--it wasn't available for DataCenter.com."

Sun's branding strategy underscores an international policy headache over how to balance the rights of trademark holders and domain name registrants. For example, multiple trademark holders can register "acme" for use in numerous markets and for products that don't compete. But on the Net, there can be only one "acme.com."

This issue is at the heart of a proposal under consideration by the Internet Corporation for Assigned Names and Numbers (ICANN), the nonprofit corporation that has been recognized by the Commerce Department to administer the Net.

At its Berlin meeting next week, ICANN could vote on a World Intellectual Property Organization proposal that aims to limit "cybersquatters," who register scores of domain names in hopes of reselling them to top bidders.

Under Network Solutions' current policy, if the ownership of a name is disputed, it can be put on hold until a court decides who is entitled to the name. But the WIPO proposal also includes a controversial provision that gives special rights to "famous" trademark holders around the globe, which observers say could be problematic.

Legal experts say that because DataCenter.com is Sun's trademark, Woodward could face restrictions regarding his use of the domain name.

"They can't challenge his ownership of the domain name, but they can keep him from using the site in a way that could cause consumer confusion," said Lynn Perry, a trademark attorney with Townsend and Townsend and Crew.

Others say ICANN's policy on domain name disputes--which will be carried out through its agreements with future domain name registries--could dramatically impact the rights of trademark holders and domain name registrants.

"This is so controversial, and there is a lot of money at stake," said David Maher, a trademark attorney who is heavily involved in domain name issues through his work with the Internet Society.

"The most ICANN can do is say that the WIPO has a good scheme and that it will require domain name registries to adopt WIPO's proposals," he added. "They're making law in a sense through these contractual agreements with registries."