Newspapers Sue over Net Domain Names

Article excerpt

Action comes after Maryland entrepreneur registers 'ChicagoTribune.com and "TampaTribune.com'

The Chicago Tribune and Tampa Tribune have filed a lawsuit against a Maryland company that has Registered the Internet domain names "ChicagoTribune.com" and "TampaTribune.com."

In a joint lawsuit filed on Sept. 17 in Federal District Court in Maryland, the two newspaper companies allege that Internet Services Incorporated (ISI) of Bethesda, Md., is infringing and diluting their trademarks. The newspapers are asking the court to issue an injunction preventing the domain names from being used. They are also asking for unspecified monetary damages. No court date has been set.

Massoud Chaharbakhsh, who owns ISI, registered the ChicagoTribune.com and TampaTribrine.com domain names earlier this year. He also conducts business under the name "Internet Newsstand."

New area of intellectual property rights law

Internet legal experts say this appears to be one of the first times newspapers have taken legal action over the issue of domain names. In 1996, the Houston Chronicle filed suit against a local online publisher who registered the domain "HoustonPost.com," the name of a newspaper that had earlier been purchased and then closed by the Chronicle. The Chronicle claimed that it still owned the defunct newspaper's trademark. That case was settled before it went to court; the defendant publisher agreed to cease using the "HoustonPost.com" name.

Ten other newspapers and media companies

Along with ChicagoTribune.com and TampaTribune.com, Chaharbakhsh has also registered at least 10 other domain names of news media companies, including "LosAngelesTimes.com," "TimesMirror.com" and "Izvestia.com," as well as those of some radio and television stations in the Washington, D.C., area.

An online search for domain names registered by Chaharbakhsh turned up several that are on "hold," a designation meaning that a dispute has arisen over the use of the domain name.

Domain names are registered with Network Solutions Inc. (NSD of Herndon,Va., under contract from the National Science Foundation. Thc names are doled out on a first-come, first-serve basis. There is a $100 registration fee and an annual $50 fee to maintain the domain name. David Graves, NSI's director of business affairs, said the company approves more than 125,000 domain names

monthly. "It [the Internet] was never envisioned to become a network over which people would - conduct electronic commerce," he said.

"We register names on a first-come, first-serve basis and it is the responsibility -- and it always has been -- of the trademark owners to police their marks. We have no way of knowing what they consider to be infringement of their intellectual prop erty rights," said Graves.

The issue of domain names and trade-mark law is relatively new but important because of the rapidly increasing commercial value of such designators. Domain names on the Web are the address a user types into an Internet browser to get to a certain Web site. They are also known as Uniform Resource Locators (URLs) and have emerged as critically important brand identifiers in Internet-related promotions. For instance, Toyota has spent huge amounts of money to promote the URL, "Toyota.com," in its national television and magazine print ad campaigns.

Underestimated importance

When they launched Web sites, most newspapers registered the name of their online edition which was usually different from the name of their print edition. The Web site of the Philadelphia Inquirer, for instance, has the domain name of "PhillyNews. …