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Domain decisions favor plaintiffs

Microsoft and a lecture agency are the latest victors in a series of disputes involving domains and trademarks.

As domain name disputes proliferate, two separate courts have ruled in favor of trademark holders.

In the trickier of the two cases, U.S. District Judge T.S. Ellis in the Eastern District of Virginia ruled in favor of the Washington Speakers Bureau, an Alexandria, Virginia-based lecture agency whose clients have included Colin Powell, Margaret Thatcher, and Ronald and Nancy Reagan. The WSB had sued Leading Authorities, a competing speakers bureau located in Washington, which had registered the domains "washingtonspeakers.com," "washington-speakers.com," "washingtonspeakers.net," and "washingtonspeakers.net."

In his decision, Judge Ellis found that although the WSB didn't register its name as a trademark, it still enjoyed some protection as a "descriptive" trademark. Under trademark law, "descriptive" trademarks are considered comparatively weak. But they are enforceable if they have gained a "secondary meaning" that causes consumers to associate the mark with a particular source or vendor.

In a more clear-cut case, a Texas judge this month sided with Microsoft in its battle with two so-called cybersquatters who registered 11 domain names including "microsoftwindows.com" and "microsoftoffice.com."

The trademark issue is on the minds of many who deal with domain policy. By the end of next month, the World Intellectual Property Organization (WIPO) is scheduled to submit its final policy proposal for dealing with this long-standing problem. Then a new nonprofit corporation anointed to oversee the Net's address system, the Internet Corporation for Assigned Names and Numbers, is expected to implement the blueprint as directed by a Clinton administration white paper.

Like all trademark claims, the Washington Speakers suit depended in part on the likelihood that use of the mark by another party would confuse consumers who encountered it. In this instance, Judge Ellis pointed to a number of "facts of Internet life" in finding that the domains in question were confusing in the hands of Leading Authorities.

"Searches may yield hundreds or even thousands of Web sites, if the user's keywords commonly appear in Web sites," the judge wrote. "Thus, a search engine can be an unwieldy and cumbersome tool. To facilitate access to their Web sites, individuals and companies typically prefer to have a domain name that is memorable and that may even be surmised by users who do not know their exact Web site address.

"A company that owns an intuitive domain name owns a potentially valuable asset," the judge continued. "The value of this intuitive name is magnified by the fact that there is no exhaustive, central listing of Internet domain names equivalent to a phone book."

In its defense, Leading Authorities had argued that it was not attempting to siphon off Web users hunting for the WSB. Instead, it argued that its domains--which include "us-speakers.com," "canadaspeakers.com," "newyorkspeakers.com," and "washingtonmeetings.net," among many others--were descriptive in nature.

But Ellis called the firm's motivations into question by citing another example of its domain holdings: "empirespeakers.com."

That domain "bears a striking resemblance to the California speakers' bureau representing entertainment personalities known as Empire Entertainment," Ellis wrote. "While Leading Authorities could conceivably have registered such domain names as 'celebrity-speakers.com' or 'american-speakers.com' in a simple good-faith attempt to describe its services, without the intent to attract customers seeking the services of Celebrity Speakers or American Speakers Bureau, it is difficult to imagine an analogous good-faith descriptive function performed by the domain name 'empirespeakers.com.'"

Ellis therefore ruled that Leading Associates probably had acted in "bad faith."

Ellis ordered Leading Associates to relinquish the names to the WSB. He did not award damages.

In the suit involving Microsoft, a Houston federal judge earlier this month ordered car dealer Kurtis Karr and fly-fishing guide Kenny Brewer to give up the names, according to a report in the Houston Chronicle. An attorney for Karr and Brewer said the men's cybersquatting careers were over.

"We were just glad to conclude the problem and get on with our lives," the attorney was quoted as saying. "It's not a lot of fun fighting Microsoft, as the U.S. government will tell you."

Attorneys specializing in trademark and Internet law say that courts are universally frowning on cybersquatters--those who buy up popular brand names in order to withhold them from or sell them to the firms that own the brands.

"With cybersquatters, there's a pretty clear precedent that they lose," said attorney Eric Goldman at Cooley Godward. "With people who go out and registers someone else's name in order to get a little bit of cash, it may be that they never have won a case."

Goldman said that trademark cases such as the one decided between Leading Authorities and the WSB were more complicated, and presented even thornier issues than the courts recognized.

Goldman noted that once a court decided between two parties with competing claims on a domain, it was merely forestalling future conflicts between the winning party and others with claims on it.

"Think about the example of 'Sun.com,' and everyone who might have an interest in that name. If a court decides that Party A can have it and Party B must give it up, then Party A has to deal with Plaintiffs C through Z who want the name, too. It's a perpetual-motion machine. The winner may just be winning themselves a lawsuit."