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Sent from: peterb@psc.edu (Peter Berger) Here's a follow-up to last week's forward from the gentleman "auctioning" off domain names that he registered solely for that purpose. TRADEMARKS FACE A BRAVE NEW WORLD -- THE INTERNET By SIMSON L. GARFINKEL Special to the Mercury News BRIAN Cimins is really sorry. Like many people, the 19-year-old student at Stockton State College in New Jersey thought the Internet represented a wonderful opportunity to make money. Last year, he designed a site on the World Wide Web to advertise backpacks. Riding on that success, he started looking around for other companies that weren't yet on the Net -- companies for whom he might be able to create custom-built Web sites, taking advantage of the Web's ability to combine graphics, video, sound and text into interesting areas for people to visit. It wasn't hard. In no time, Cimins found a whole slew of companies that hadn't yet registered their names in cyberspace -- companies for whom there was no ''.com'' address, which essentially is the Cyberspace surname for profit-oriented companies. So on Feb. 6, Cimins submitted registration forms to the InterNIC, the Internet's Network Information Center, claiming for himself the names billclinton.com, canadadry.com, bdalton.com, bauschlomb.com, readersdigest.com and capitolrecords.com. For each name, Cimins paid the Network's nominal $100 registration fee. ''I picked up some names I thought were pretty good names,'' Cimins said. ''I didn't have any negative intentions of doing anything with these names. I wanted to start a forum for these businesses, and possibly be an Internet provider for them. I could design their presence and provide their (Web) site.'' But Cimins' entrepreneurship ran head-long into a growing problem on the Internet: Who owns the names? STATE SENATE STEPS IN In California, the issue has reached the Legislature, where on Feb. 14, State Sen. Charles M. Calderon, D-Montebello, introduced a bill that would prohibit the unauthorized use of trademarks as ''a user identification or electronic mail address on any computer bulletin board, information network, or information system which accepts and relays electronic mail into computers situated in this state,'' according to a statement issued by the California Senate Rules Committee. The bill would also prohibit the unauthorized use of trade or registered names and trademarks on the Internet or the World Wide Web. The bill provides for civil penalties of $1,000, plus court costs and attorney's fees. (A full text of the legislation is available on the California Senate's Web site at http://www.sen.ca/ .) ''What is the state government trying to do regulating the global Internet? That's crazy,'' said Jim Warren, a columnist for MicroTimes, who closely follows attempts by governments to regulate the Internet. One of the problems with the legislation, says Warren, is that a company in another country might obtain a domain name that conflicts with a trademark that is owned by a California corporation. ''My half-baked, knee-jerk reaction is that we don't want to emphasize national borders on the Net,'' he said. The state bill reflects how important the ''name game'' has become on the Internet. NAMES FOR SALE Cimins allegedly offered to sell some of the names to the highest bidders - - -- prompting protests from Internet advocates who consider such antics unscrupulous. For companies, the names often represent their corporate identities or some of their most well-known products. For individuals, the domain names often are their names. Meanwhile, for profit-minded individuals like Cimins, trading in the names offers a chance to make a quick buck. In the case of billclinton.com, it turns out Cimins made a good business decision. Shortly after the domain was registered, Cimins discovered a company that was selling a ''Billy-Bob Clinton Bobbing Head Doll.'' As luck would have it, the company decided to take the plunge and set up a Web site using the domain name. ''I bought it (for) quite a bit of money,'' said Marc Cortez, marketing director for Cortrade in Huntington Beach. Cortez said he paid between $1,000 and $10,000 for the rights to the billclinton.com domain and to set up the Web site. But what about the other names -- the names for companies that already exist? In the case of the capitolrecords.com domain, Cimins said he wanted to build a Web site that had links to Capitol Record's recording artists. In the case of B. Dalton, he wanted to design a ''virtual store.'' There was just one problem: he didn't ask the companies' permission first. TRADEMARKS IN CYBERSPACE Over the past year, the Internet has been struggling with the role trademark law should play in cyberspace. The problem is that while Apple Computer Inc. might want a name like newton.com for a Web site to help promote its Newton personal digital assistant computer, Nabisco might want newton.com to advertise its Fig Newtons. Complicating the matter still is Mark Newton, a computer enthusiast in Brighton, Mich., who runs a bulletin board called the Newtonian BBS. Newton obtained the domain name newton.com in April 1994. For years, Internet domains were registered on a first-come, first-serve basis. Last summer, Network Solutions Inc., the company that runs the InterNIC, decided to change the policy. The InterNIC rules are complicated. But they work roughly as follows, according to David Graves, NSI's business manager: A person or company can register any domain name not already taken. But if another person or company then says it holds a ''valid and existing trademark that is identical'' to that domain name, and if the trademark was registered before the domain name was awarded, the party holding the trademark has the right to get that name. The party that registered the domain name first then has the right to prove that it also has a federal trademark on the name. Assuming the party that registered the domain doesn't hold the federal trademark, NSI gives that person or company ''the ability to register a different name, and will give them 90 days of simultaneous use. The purpose for that is to give them the opportunity,'' to migrate to the new name, said Graves. In the case of newton.com, both Newton and his Internet service provider, Innovative Concepts of Ann Arbor, Mich., say they have been contacted by Apple, which has threatened a lawsuit unless they relinquish the name. ''I haven't done anything wrong,'' Newton said. ''Do I need to trademark my last name to use it?'' Furthermore, Newton believes Apple doesn't need the newton.com address, because the company is already using newton.apple.com. Apple never comments on threatened lawsuits, said Lynne Keast, a company representative. CIMINS CHANGES PLANS Back in New Jersey, Cimins is worried he might soon be receiving legal threats himself from the companies whose names he registered. Complicating matters is a piece of electronic mail, Cimins allegedly sent Feb. 21, in which the author claimed that ''these corporations will pay big bucks for these names.'' Cimins denies sending the message, saying it might have been sent by one of his employees who was using his own account. In fact, Cimins said he now plans to ''dump'' the domain names he has obtained. HOW BAUSCH & LOMB SEES IT At Bausch & Lomb, senior trademark counsel Gregg Marrazzo doesn't take kindly to the idea of anyone trying to sell the company its own name back. ''Our corporate name as well as our product names are very valuable property to us. This fellow was able to get some property and try to sell it back,'' Marrazzo said. ''We would equate that to some extent if someone took something off your front lawn and tried to sell it back to you.'' Marrazzo said the company has a ''hard time keeping up with all of the registrations of all the different corporate names and trademarks.'' The Internet complicates the program, because a Bausch & Lomb brand such as Ray Ban might be registered under many different names, including rayban.com, ray-ban.com, or even ray.ban.com. To the computer system, each of those names would be unique. In the case of bauschlomb.com, said Marrazzo, Cimins should expect to receive a ''cease and desist'' letter in the mail from the $2 billion corporation. Indeed, Cimins said he submitted a series of new requests last week to the InterNIC, asking that all of the domains that he had obtained for other company's names be deleted. ''I'm sorry,'' he said. When Marrazzo heard that Cimins was studying marketing, he burst out laughing. ''I think that he has a very bright future,'' the attorney said. MERCURY CENTER ID: me10010d Transmitted: 96-02-26 05:02:40 EST