Originally created 08/23/96

Businesses target domain names



SAN JOSE, Calif. - When Johnson Wu was looking to identify himself on the Internet, he chose a name he felt reflected some of his interests and personal traits. Thus, snoopy.com was born.

"I'm a big fan of the Peanuts comic strip," said Mr. Wu, a 30-year-old Sunnyvale, Calif., software engineer.

"And I also wanted to represent my inquisitive skills as a free-lance network consultant, my use of the SNOOP program to diagnose network problems," he explained, "and my sometimes nosy and busybody character."

Mr. Wu registered snoopy.com on the Net in December 1994. His web page went up the following summer and, as a background to it, Wu used pictures he had taken of his prized collection of Snoopy plush dolls.

All was well ...

Until July, that is, when Mr. Wu was contacted by United Feature Syndicate Inc., which owns the trademark rights to the famous cartoon beagle and the other characters in the comic strip. He was told to relinquish the name or plan a date in federal court.

In the immortal words of Charlie Brown: "Good grief!"

Mr. Wu tried compromise. He voluntarily removed the pictures of his plush dolls "to avoid any misconception that the site was owned and run by whoever operates the web site for the comic strip," and he offered to give up the site name - www.snoopy.com - but not the domain name.

But it was the domain name that the syndicate really wanted.

The company's attorney, John D. Parker, said that although he doesn't believe Mr. Wu is out to rip off his clients, the use of snoopy.com is a clear infringement of a famous trademark owned worldwide for more than 20 years. He's written Network Solutions Inc., the company that regulates names on the Internet, asking it to suspend Mr. Wu's use of that domain name.

"I've never tried to capitalize on the comic strip and I feel that's very clear," Mr. Wu said in a recent interview. "I was shocked."

He shouldn't have been.

Mr. Wu is a recent inductee into the corps of computer users now fighting an electronic war of attrition over the use of registered trademarks in domain names. The ranks also include everyone from renowned Silicon Valley public relations specialist Regis McKenna to a Salinas, Calif., man who dubbed his web site after his 3-year-old son only to be challenged by a Chicago stuffed-toy manufacturer with the same name.

For you civilians out there, perhaps a little explanation is in order. In the cyber world, domain names are like customized license plates for computer users. They point to a specific location on the Net. In short, it's your spot. A web site, for instance, is part of the computer user's "domain."

And, this war over domain names will only escalate as large companies become more protective of their trademarks on the Internet as the availability of names for sites continues to shrink, experts say.

There are more than 500,000 names on the Net and that number is growing by about 50,000 a month - which only increases the potential for confusion and conflict regarding the question of "What's in a Name?" Using one's own name, or employing common or generic words like window, apple and java doesn't mean domain name holders won't find themselves in a hassle with a trademark holder.

Mr. McKenna filed suit in U.S. District Court in July seeking to retain the regis.com domain name he has used on the Internet since 1993. Regis Corp., a national hair products manufacturer in Minneapolis, has applied to use that domain name.

The battle involves the rights of registered trademark holders against the property rights of domain name holders such as Mr. Wu and Mr. McKenna. And the question boils down to whether a domain name constitutes a trademark infringement and harms a trademark holder's business.

"Just because someone has a registered trademark doesn't mean that mark is famous or that somehow they own exclusive rights to that mark in all goods and services," said Mr. McKenna's attorney, Robert Hawk of Palo Alto, Calif. "Mr. McKenna has been associated with particular goods and services for years."

In the business world, there can be a dozen companies that have the same name but clearly offer different goods and services. There can be shoe companies in California and Maine with the same name, but there's no confusion because they're in different states.

But on the Internet, there can be only one name and it makes no distinction about geography or the types of services and products one can expect to find there.

It's also an issue that stems from the earliest days of the Net when enterprising - and, some would say, unscrupulous - web heads gobbled up the names of famous companies with the expectation of forcing the companies to pay them for those domain names. Now, some major companies are turning their big guns on offenders, no matter how unwitting or innocent their actions may seem.

New York attorney Bruce P. Keller, an outside counsel for the International Trademark Association, said businesses are focusing more on the issue of trademarks and domain names on the Internet.

"Companies are genuinely concerned and are going to spend the money necessary to protect their trademarks," he said.