Kaplan Education Centers v. Princeton Review

Princeton Review, a provider of training for standardized tests, registered two domain names, "review.com" and "kaplan.com." Kaplan Education Center is Princeton Review's primary competitors. When Kaplan decided to set up a web site, it discovered that Princeton had beaten it to the punch. The matter went to arbitrations, and ultimately Princeton relinquished the domain name.

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McDonalds

Joshua Quittner, a writer for WIRED magazine registered the domain name "mcdonalds.com," to demonstrate the problems with NSI's registration system. After some prompting by Quittner, McDonald's donated money to a charity in exchange for the domain name.

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Council of Better Business Bureaus, Inc.

Mark Sloo registered the domain names "bbb.com" and "bbb.org" in an attempt to force the Council of Better Business Bureaus (commonly referred to as "BBB" or "CBBB") to buy the domain names. CBBB brought an action for unfair competition and trademark infringement in U.S. District Court in Kansas City — Council of Better Business Bureaus, Inc. v. Mark Sloo, No. 95-0473-CV-W-2 (Filed May 8, 1995). Until the lawsuit settle, the Better Business Bureaus used the domain name "cbbb.org." Upon settlement of the lawsuit, the domain name changed to "bbb.org" because the Better Business Bureaus felt that "bbb" was more recognized by the public, as well as, easier to remember and access.

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Avon

Carnetta Wong Associates registered the domain name "avon.com." Avon brought an action in the United States District Court for the Eastern District of New York (CV 96 0451). The complaint accuses Carnetta Wong Associates of unfair competition, trademark infringement, misappropriation, trademark dilution, and deceptive acts and practices. Avon's case marked one of the first suit alleging a count under the new Federal Trademark Dilution Act. Avon has successfully reclaimed the domain name "avon.com."

Not on the Internet: See, AVON Suing — Antidilution Trademark Law Gets First Court Case: Personal care company sues to retrieve computer domain. Voorhees Report, Information Law Alter: February 9, 1996, Section: No. 2, Vol. 4; ISSN 1068-8129.

KCRA

KCRA, a Sacramento, California television station registered the domain names "kvie.com," "kpwb.com," and "ktxl.com" — the call letters of three of its competitors. The general manager stated that he requested his local provider register the domain names "for fun." The local provider asked NSI to withdraw the registrations once it discovered the domain names "conflicted" with the other TV Stations.

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NovaStar

NovaStar, Inc. is a Peoria, Arizona computer company that recently became an Internet service provider. When it tried to register the domain name "novastar.com," it found that the name was already registered to PrimeNet, a Phoenix-based Internet service provider. Curiously, PrimeNet registered "novastar," in addition to Novastar, who has an Arizona state trademark registration, brought suit against PrimeNet in Maricopa County Superior Court. NovaStar claimed that its Arizona common law rights gave it the right to the use of "novastar" as a domain name. Judge Rebecca Albrecht disagreed and dismissed the case.

MTV v. Adam Curry

Adam Curry, while employed by MTV as a "VJ," registered the domain name "mtv.com." Curry registered and maintained the site at his own expense and MTV originally showed little interest in the site. MTV claimed right to the domain name upon Curry's departure from MTV. MTV brought action in Federal Court. The parties eventually settled for undisclosed terms.

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Dole96

"Robert Dole" alias Brooks Talley, a computer test developer, registered the domain name "dole96." The web site "www.dole96.org" features a page labeled "An Official World Wide Web Internet Site." However, the site does suggest that it is not actually the "official" site by claiming that Bob Dole is the "ripe" man for the job.

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micros0ft

Zero Micro Software, an Austin, Texas computer software company registered the domain name "micros0ft.com" (microsoft with a zero instead of the second "o"). NSI asked if it could delete the registration, but Zero Micro Software refused. Subsequently, NSI placed the domain name on hold.

Microsoft Corporation sent Zero Micro Software a cease and desist letter claiming that the use of the domain name "micros0ft.com" is likely to confuse consumers and dilute Microsoft Corporation's trademark. Microsoft Corporation allows alleges that Zero Micro Software's company name will also cause confuse and dilute Microsoft Corporation's trademark. Microsoft demanded that Zero Micro Software stop using the domain name and abandon the domain name registration. Microsoft Corporation also demanded that Zero Micro Software also cease and desist its use of the name "Mirco Software" in its company name.

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KnowledgeNet

Allegedly without knowing "KnowledgeNet" was a registered trademark, D.L. Boone & Co. registered the domain name "knowledgenet.com." KnowledgeNet, Inc., the registered trademark owner complained to NSI, but NSI refused to reassign the name. Subsequently, KnowledgeNet, Inc. brought an action against NSI and D.L. Boone. D.L. Boone settled before there was any judicial ruling on the merits.

For more information on KnowledgeNet:

The Gap

The Genesis Project Ltd, the first commercial internet service in Northern Ireland registered the domain name "thegap.com" as an acronym for its internet service name "the genesis access point."

The Gap, Inc. complained to NSI about the registration and use of the domain name. InterNIC sent The Genesis Project Ltd. a letter informing Genesis that unless it possessed a federal trademark registration for name "the gap", the domain name would be placed on hold. The letter included a copy of NSI's retroactive Domain Name Dispute Policy Statement.

In March 1996, NSI placed the domain name on hold. However, after a week NSI restored the domain name. The Genesis Access Point and The Gap, Inc. are "working" on "an amicable agreement."

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Apple's Newton

In 1994 Mark Newton registered the domain name "newton.com" for his bulletin board which offers computer advice. Apple Computers contacted Newton and informed him that he had registered Apple's trademark and that it had rights to the name. Newton refused to relinquish the name so, Apple complained to InterNIC. "newton.com" has been placed on hold until the matter is resolved.

Candyland — Hasbro v. Internet Entertainment Group

Internet Entertainment Group (IEG) registered the domain name "candyland.com" for its adult entertainment site. Hasbro, Inc., the makers of the trademarked game "Candy Land" sought a preliminary injunction, claiming that IEG's use created a negative image in connection with the Candy Land trademark. Although IEG agreed to change its name provided it was given 6 months to change over, it argued that neither the Federal Trademark Dilution Act nor the Washington State trademark dilution statutes protected against tarnishment.

Judge Dwyer, U.S. District Court Judge in Seattle granted the preliminary injunction and enjoined IEG from using the name. The preliminary injunction permits IEG, for 90 days, to refer visitors who access the "candyland.com" web site to its new web site "adultplayground.com."

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Sun

After Sunriver Corp. began using the mark "Sunriver" on products similar to those produced by Sun Microsystems, a California federal court granted a preliminary injunction preventing Sun River's use of any "sun"-based mark in any manner, including as an Internet domain name. Sun Microsystems, Inc. v. Sunriver Corp., 1995 U.S. Dist. LEXIS 19012 (N.D.Cal. Sept. 28, 1995).

Not on the Internet: Sun River Ruled Likely to Infringe Sun Microsystems Trademark, The Computer Lawyer, Current Developments; Proprietary Rights Section; Vol. 12, No. 9, pg 31, September 1995.

wired.com and wire.net

Operators of a computer network established to encourage women to be more active on the Internet registered the domain name "wire.com." Wired magazine, one of the most widely read magazines reporting on Internet issues, claimed that the registration was likely to be confused with Wired Magazine's Web Site, and demanded that the Women's Wire stop using the name. Eventually, with some assistance by Wired Magazine the domain name was changed.

For more information on Wired or WWire:

roadrunner.com

Roadrunner Computer Systems offers Internet services. In December 1995, Warner Brothers, Inc., the owner of the registered trademark "Road Runner" complained to NSI about Roadrunner Computer Systems, Inc.'s registration and use of the domain name "roadrunner.com." After NSI informed Roadrunner that it would place the domain name on hold, Roadrunner applied for and received a trademark registration in Tunisia. However, NSI still refused to allow Roadrunner to keep the domain name.

Roadrunner filed a complaint against NSI in U.S. District Court for the Eastern District of Virginia (96-413-A). Roadrunner also filed a motion for a preliminary injunction which would prohibit NSI from placing the domain name "roadrunner.com" on hold during the pendency of the litigation.

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Inter-law v. Interlaw

Interlaw, Ltd., an international legal organization complained to NSI about the use of the domain name "inter-law.com" by The 'Lectric Law Library, a comprehensive and commonly referenced site. Although Interlaw registered and uses the domain name "interlaw.org," it still wants The 'Lectric Law Library to relinquish the domain name "inter-law.com." Jeff Liebling, the operator of The 'Lectric Law Library claims its domain name does not infringe Interlaw's trademark. He filed a suit in federal court against Interlaw seeking damages and a declaratory judgment.

The history of the dispute, correspondences and the complaint are located at The 'Lectric Law Library's Web Site. The site notes that "its domain name is/will be changing to 'www.lectlaw.com'." Meanwhile, a third-party registered the domain name "interlaw.com."

Teubner & Associates, Inc.

Teubner & Associates, Inc. is a high-technology software company. American International Facsimile Products (AIFP) is one of its direct competitors. AIFP registered a domain name using "Tuebner," a common misspelling of Teubner's name. AIFP also registered the domain name "www.faxgate.com," which is the name of Teubner's product which directly competes with AIFP's Hostfax. Teubner's lawyer's issued a cease and desist letter. All three domain names now take you to Teubner's Home Page.

For more information on Teubner:

Arab.net

Arab.net, the Internet site serving the Middle East, has sent out warning concerning the registration of domain names such as, Islam, mosque, jihad, Muhammad, and Muslim. Arab.net is concerned with these registration and uses because it wants to ensure that only correct information reaches the Muslims on the Internet.

Taiwan.com

The domain name "Taiwan.com" was registered by Xinhua, the official Chinese news agency, whose affiliate, China Internet Corporation. Needless to say, Taiwan is not too happy about this registration.

For more information on Taiwan.com:

ROADKILLS-R-US

Roadkills-R-Us, formed on Usenet in 1988, exists solely in cyberspace. Nevertheless, TOYS-R-US has threatened to sue Roadkills-R-US because the "R-US" conflicts with TOYS-R-US registered trademark. The battle with TOYS-R-US has spurred a number of R-US sites including "TORTS-R-US," and "CANS R US."

For more information on RoadKills-R-Us:

Banana Republic

The Gap, Inc. finds itself involved in an Internet dispute over the use of the name "Banana Republic." Banana Republic Embroidery does not use the domain name "bananarepublic.com," or any of approximately 31 domain names The Gap, Inc. registered in the U.S. Nonetheless, The Gap, Inc. and Banana Republic, Inc. have threatened legal action.

Not on the Internet: Communication Gap, Information Week, Front Page, December 18, 1995.

Intel v. Robert Collins

Robert Collins posted a home page entitled "The Intel Secrets' Home Page." He states that the purpose of this page is "to providing information about the Intel Architecture processors." Intel contacted Mr. Collins, informing him that Intel Secrets' logo infringed its trademark. Robert Collins claimed that his Intel Secrets' logo did not infringe Intel's trademark. He also claims that any use of Intel's logo is fair use because his Intel Secrets' logo is a parody. Despite his position, Robert Collins changed his Intel Secrets' logo to make sure Intel recognizes that his use is a parody.

For more information on Intel:

Fry's Electronics, Inc. v. Frenchy Frys

Fry's Electronic, Inc., a retail electronic chain based on Palo Alto, California, brought an action against Frenchy Frys, a Seattle seller of french fry vending machines and the Internet service provider who requested the domain for Frenchy Frys after Frenchy Fry's registered the domain name "frys.com." (Fry's Electronics, Inc. v. Octave Systems, et al., No. C95-2525 CAL (N.D. Cal.)) In its complaint, Fry's Electronic alleged that Frenchy Frys wrongfully appropriated the Fry's trade name. Because Frenchy Frys was first to register and Fry's Electronics did not have a federal trademark, NSI would not get involved. You will find Frenchy Frys at "frys.com."

For more information on Fry's:

PETA

People Eating Tasty Animals started a web page as a resource for people who enjoy eating meat, wearing fur and leather, hunting, and the fruits of scientific research. People for Ethical Treatment of Animals sent Mike Doughney, the creator of the page, a letter demanding that he turn over the domain name "peta.com." Currently, People Eating Tasty Animals still has the domain name "peta.org."

For more information on PETA: