BY SIMSON L. GARFINKEL
Special to the Mercury News
All Philip L. Giacalone wanted was a home of his own on the Internet, an e-mail address that was uniquely his, an electronic domicile he could pass down to his 3-year-old son.
So early this year, Giacalone applied for his own Internet domain name. It was granted Jan. 9 by SIAC Network Solutions, the company that administers the Internet domain system under a National Science Foundation contract.
According to court papers, Giacalone, a computer consultant and Internet expert who lives in Salinas, picked the Internet domain Ty.com, named after his 3- year-old son. He then built a modest Web site, called TechYard, which demonstrated his Web programming prowess. And that's when the problems started.
Unknown to Giacalone, there was another Ty: Ty Warner. Ten years ago, Warner started a company in Chicago that makes stuffed animals for children. The company is also named Ty.
In late January, Ty Inc. asked Network Solutions for the same domain name, Ty.com. Since the name already had been handed out to somebody else, the request was turned down. So Ty Inc. went to Giacalone and offered to buy the Ty.com domain for $1,000.
''He told them, "I'm not interested in selling it. It's my son's name. Maybe someday I will give it to him when I'm through with it,''' said G. Gervaise Davis, Giacalone's attorney.
Before the lawsuit, NSI handed out domain names on a first- come, first-serve basis. As a result of that lawsuit, which was settled out of court, Network Solutions adopted a formal dispute policy, which it amended last year.
On May 6, Network Solutions sent Giacalone a letter reminding him of the rules to which he had agreed when he applied for the name. Once the InterNIC, the white pages of cyberspace, receives a complaint from a company that holds a trademark, as it did, the domain holder has three choices:
If the holder has a federally registered trademark or service mark, he or she can simply send it back to Network Solutions and continue using the domain as before.
But if the domain name holder does not have a trademark, as was the case with Giacalone, the domain holder can either immediately ''relinquish the disputed name and agree to transfer it to the complainant,'' obtain a new name and use ''both names simultaneously for up to 90 days, to allow the opportunity for an orderly transition from the disputed name to the new name,'' or refuse a new name.
''In that case,'' said Network Solutions' letter, ''the disputed name will be placed in a "hold' status, where no one will be able to use the name until the dispute is resolved.''
Giacalone chose a fourth option: He sued both Network Solutions and Ty Inc., demanding a declaration from the court that his use of Ty.com does not infringe on Ty Inc.'s trademark; an injunction against Network Solutions to prevent it from assigning the domain to Ty Inc.; an order canceling Ty Inc.'s trademark registration on the letters ''Ty'' as they appear in a heart on the company's logo; as well as court fees, legal fees and $100,000 in damages. The case is pending in U.S. District Court in San Jose.
''It seems that Mr. Davis has turned (this) into a trademark infringement case, based on the papers that he has filed,'' said an attorney for Ty Inc., Sidney Katz, who plans to argue that the case isn't about trademarks, but contracts. ''The question is one of a contract arrangement that everybody is a party to with Network Solutions Inc.''
Nevertheless, he says, the fact that there have been only six lawsuits, when there are now more than 400,000 registered domains, and the fact that the lawsuits have been evenly split between trademark holders and domain holders ''suggests that the policy that we have may be a reasonable one under the circumstances.''
Larson also criticized Network Solutions, saying that the company has been ''secretive'' and ''autocratic'' in how it formulates its policies.
''The policies are never discussed in advance.'' says Larson. Instead, she says, NSI has simply posted its new policies on the Internet, saying essentially, ''This is the new policy, it goes into effect in a month, take it or leave it.''
Recently, Network Solutions asked the court to dismiss the Roadrunner lawsuit, saying Warner Bros. no longer contests Roadrunner Computer Systems' use of the domain name. But Larson is pressing on, asking for damages to pay more than $20,000 in legal fees.
One of Larson's objections to NSI's handling of her client's case is that Roadrunner Systems obtained its domain in May 1994, before the new policy came into use.
''For people to do business on the Internet, they need some level of certainty,'' she says. ''They need to know that if they are going to make an investment of time and energy and money and corporate good will, it's just not going to get snatched away from them ... The current policy lets somebody just come in and take a domain. They don't get to use it, but they get to take it away from you.''
| Mercury Center Home | Index | Feedback | NewsLibrary |
©1996 Mercury Center. The information you receive on-line from Mercury Center is protected by the copyright laws of the United States. The copyright laws prohibit any copying, redistributing, retransmitting, or repurposing of any copyright-protected material.