Folks from Glad now in court trying to bag a Web site Trademark disputes in the electronic age

July 24, 1996|By John Rivera | John Rivera,SUN STAFF

Hoping to catch the crest of the latest marketing wave, the makers of Glad bags and plastic wrap decided to create a Web site on the Internet, but found to their chagrin that somebody already had their name.

Glad asked the owners of VirtualNetworksInc., an Internet service provider in Rockville, to surrender the "glad.com" name. When the company refused, First Brands Inc. of Wilmington, Del., which holds the Glad trademark, filed suit last week in U.S. District Court in Baltimore, alleging trademark infringement.

The case is one of about a dozen that have been filed in the country over trademark disputes in assigning names to electronic addresses, which are called domains, on the Worldwide Web. Legal experts say the law is evolving. None of the cases has gone to trial. Most have been settled out of court.

"The courts have to sort this out, but the usual rules of trademark law apply in these suits," said Charles H. Kennedy, a law professor at Catholic University of America. "But it is an area where people are going to have to spend a lot of money to settle these disputes."

The problem, say legal experts, is that the system for naming Web sites can't handle the explosion of interest in them. The National Science Foundation, which had responsibility for assigning domain names, contracted the chore out to a Herndon, Va., firm called Network Solutions Inc.

"They just registered these names on a first-come, first-served basis, and nobody cared," said Carey Heckman, co-director of Stanford University's Law and Technology Policy Center. "And then people started caring. And that's when you get legal disputes."

Some corporations were slow to recognize the commercial potential of the Internet. "Now, they're try to use their legal means to make up for their lack of perspicacity," Heckman said.

In the Glad suit, First Brands is arguing that the ability to use its trademark is a "substantial part of its opportunity to market, promote and sell products and services through this burgeoning medium."

Last July, Network Solutions issued guidelines designed to prevent such conflicts. Now, as a condition of registering a domain name, an applicant must state that it has the right to use the name and that, to the applicant's knowledge, no one else has trademark rights to it. If a dispute arises, Network Solutions can suspend the use of the name until it is resolved.

Disputes started arising about two years ago. One of the first cases occurred in 1994, when journalist Joshua Quittner registered the domain name mcdonalds.com. He notified the burger giant that he had done so, and officials expressed scant interest.

Some months later, McDonald's contacted Quittner and asked for the name back. A settlement was reached in which McDonald's donated computer equipment to a Brooklyn school in return for the domain name.

In the Glad case, the Rockville company says it did not realize that it was using a trademark name. In other cases, an Internet user, or a competing company, in a practice known as domain name "poaching," has registered a trademark as a domain name with the intent of collecting money or annoying a rival.

An example of the latter occurred in 1994, when the Princeton Review testing company registered the name of its chief rival, the Stanley H. Kaplan Educational Centers Ltd., when it snagged the name "kaplan.com." A Princeton Review official was quoted as saying the company used the name to annoy Kaplan. An arbitration panel ordered Princeton Review to relinquish the name to Kaplan.

A similar situation arose when a Sprint Corp. employee registered the domain name mci.com. MCI Communications Corp. was later able to claim the name.

Although none of these cases has gone to trial, a California judge this year issued an injunction in favor of a Tennessee-based company that sells legal software. The firm, Juris Inc., sued a Thousand Oaks, Calif., company that registered the name "juris.com." The judge issued a preliminary injunction that prohibited the California company from using the domain name until the case went to trial. After the ruling, the parties settled, and Juris Inc. received the Web site name.

"It was the first case in which a judge determined that a domain name can cause confusion with a registered trademark," said Morgan Tovey, an attorney for Juris Inc.

In the Glad case, the owner of the computer company said he did not intend to appropriate a trademark. "It's such a common word," Weitzman said. First Brands sued because the computer company refuses to give up the name, said Thomas Curtin, a New York attorney for First Brands.

Pub Date: 7/24/96

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