Gartner analyst Audrey Apfel says that despite progress in the area of domain name dispute resolution, struggles and conflicts over domain names and trademark law are still occurring.
The ruling is unusual because it reverses an earlier decision by an arbitrator from the Uniform Domain Name Dispute Resolution Policy (UDRP), run by the Internet Corporation for Assigned Names and Numbers, the entity in charge of administrating domain names.
ICANN's dispute resolution procedure has come under fire for being overly sympathetic to trademark holders, so any victory by a smaller Web site, such as eReferee, is considered especially solid. However, as eReferee discovered, such decisions are not binding and can lead to a retrial in federal court.
"That's bad news," Jamie Love, director of the Consumer Project on Technology, said upon learning of the injunction. "To just give people rights to the English language and let them own certain words is not what trademark laws are about."
In issuing the court ruling, Wisconsin federal Judge C.N. Clevert sided with Referee magazine, a periodical holding the trademark to the word "referee" for the purposes of publication.
In a suit filed in November, the magazine blew the whistle on eReferee, saying the addition of the letter "e" to the word "referee" was "likely to cause confusion or mistakes or to deceive the public" into thinking the Web site was affiliated with Referee magazine. In addition, the magazine argued that eReferee's logo--which featured a whistle and stripes--was confusingly similar to its emblem.
In issuing his ruling last month, Clevert went beyond even the remedy requested by Referee magazine. He not only banned Right Sports from using eReferee.com and other related domain names, he also prohibited the company from using the term "referee" at all, "either alone or with other words" in its "domain names, directory names or other such computer addresses."
Advocates of domain-name rights and free speech are blasting the ruling, saying it's overly broad and gives a trademark holder unprecedented rights to a commonly used word.
"It's unbelievable," said David Post, an associate law professor at Temple University and organizer of ICANNWatch.org, a Web site that tracks ICANN. "You just don't want to let someone own the word 'referee,'" regardless of whether eReferee actually violated trademark law, he said.
In arguing before the UDRP arbitrator, eReferee executives pointed out that several sites have the rights to domain names with the letters "e" in them, even though they're not affiliated with sites that do not use the letter. For example, they said eGolf, which sells golf equipment, is not affiliated with Golf magazine. The arbitrator ruled that the word "referee" is a weak mark and that the eReferee Web site has every right to remain operational.
Playing the domain name game
In most of the UDRP findings so far, sites using generic words, such as eRadio.com, have not had to turn over their domain names; sites that have taken well-known marks such as eNike.com or E-ComputerWorld.com have been stripped of their addresses.
Sites that use celebrities in their domain names also have typically lost such disputes. British rock star Sting is one of the few famous personalities to lose a domain name fight. In that case, arbitrators ruled that as his name is found in the dictionary and isn't the one he was born with, he did not have strong ownership rights.
Neither eReferee nor Referee magazine would comment on the record for this story, except to say that their opponents are distorting the facts.
Referee magazine's site, Referee.com, contains little content and is used mainly as a vehicle to sign up subscribers to the publication, which costs $39.95 per year and has 33,000 paid subscribers from the officiating world.
In contrast, eReferee.com was a fully functioning Web site targeted at referees, complete with news stories, advice columns, and forums where people could trade refereeing tips and vent about rule changes. Its content has since been moved to Officiating.com, and visitors to eReferee.com are redirected there.
As a result of the brouhaha, several referees have jumped onto Officiating.com's message boards in support of the company. Some want to organize a boycott of Referee magazine. Others said they are canceling their subscriptions.
"Next thing you know, they will be telling us that we can't use the title referee," wrote one poster who went by the name Mr. Sportsman.
To further complicate the case, Referee magazine is adding such messages to its list of gripes about the Internet start-up. The magazine's lawyers have threatened to go after Right Sports for monetary damages if it loses business because of a boycott.
In addition, Referee magazine on Wednesday filed a contempt of court motion against eReferee, saying the site's decision to redirect traffic to its Officiating.com site is flouting the judge's order. The magazine is asking that Right Sports be fined $5,000 per day for each day it continues redirecting traffic from the eReferee.com domain name.
eReferee has appealed the injunction, which will remain in place pending a trial unless it's overturned, saying it stands to lose more than $4 million if the prohibition is upheld.