Trademarks Ride Into the Wild West of the Internet: A Landmark Ruling of Cyber Infringement in The Comp Examiner Agency, Inc. v. Juris, Inc.

Journal of Intellectual Property Law Volume 4 | Issue 2 Article 6 March 1997 Trademarks Ride Into the Wild West of the Internet: A Landmark Ruling of Cyber Infringement in The Comp Examiner Agency, Inc. v. Juris, Inc. Kimberley J. Hale Follow this and additional works at: https://digitalcommons.law.uga.edu/jipl Part of the Intellectual Property Law Commons Recommended Citation Kimberley J. Hale, Trademarks Ride Into the Wild West of the Internet: A Landmark Ruling of Cyber Infringement in The Comp Examiner Agency, Inc. v. Juris, Inc., 4 J. Intell. Prop. L. 399 (1997). Available at: https://digitalcommons.law.uga.edu/jipl/vol4/iss2/6 This Recent Developments is brought to you for free and open access by Digital Commons @ Georgia Law. It has been accepted for inclusion in Journal of Intellectual Property Law by an authorized editor of Digital Commons @ Georgia Law. Please share how you have benefited from this access For more information, please contact . Hale: Trademarks Ride Into the Wild West of the Internet: A Landmark Ru TRADEMARKS RIDE INTO THE WILD WEST OF THE INTERNET: A LANDMARK RULING OF CYBER INFRINGEMENT IN THE COMP EXAMINER AGENCY, INC. V. JURIS, INC. I. INTRODUCTION The Internet, which began as an information superhighway, is the latest commercial frontier. Thus, many companies have rushed to take advantage of this new market by submitting their trademark names to Network Systems Institute (NSI) as a domain name for their web page.' However, some of these companies have been unpleasantly surprised when they find that another has already registered their name. NSI's general policy has always been first-come, first-served, and, unlike trademarks, only one party may use a particular domain name.2 Therefore, the trademark owner who finds its name taken has typically been out of luck or forced to use a slight variation of its mark.3 In light of this uncomfortable situation, an increasing number of lawsuits have been filed both against these domain 'NSI, a private company, was awarded a contract from the National Science Foundation (NSF) "to organize, manage, and administer a system of Internet addressing." Richard Raysman and Peter Brown, DomainNames: ProtectingTrademarkson the Internet, N.Y.L.J., June 11, 1996, at 3. NSI has always registered domain names on a first-come, first-served basis. Domain names were created as a preferred manner of addressing the Internet sites. Such names are easier to recall than the string of numbers that the computer uses as the actual "IP" address. Domain names are generally composed of at least two levels moving from the most specific on the left to the more general on the right. For example, 'juris.com" has a second level, "juris", and a first level, ".com", which simply represents the type of service (i.e. commercial). Persons wanting to register a domain name need only complete an Internic registration form, which may be done by E-mail. Id. As of last year, users must also pay an initial fee of $100 for the first two years and a $50/year fee for maintaining that domain name. 2The Lanham Act allows more than one trademark owner to use an identical or similar trademark name so long as each mark pertains to different products or entities that will not confuse the consumer. Lanham Act, 15 U.S.C. § 1052(d) (1996). For example, CADILLAC is a trademark for dog food and for automobiles. 3 For example, Juris, Inc., who owns the trademark "JURIS," registered "jurisinc.com" after finding "juris.com" already taken. See Logical Choices? Part I-Someone Else's Trademark, (Last Visited March 1997) <http'//www.law.georgetown.edu/lc/internic/domainl.html> (providing a summary of all major domain name disputes). 399 Published by Digital Commons @ Georgia Law, 1997 1 Journal of Intellectual Property Law, Vol. 4, Iss. 2 [1997], Art. 6 400 J. INTELL. PROP. L. [Vol. 4:399 holders and NSI involving claims of both trademark infringement and dilution. Across cyberspace, in local newspapers and legal journals, hundreds of articles appear discussing and often supporting the application of trademark law to domain names. However, opponents of this movement reject such a proposal as many Internet users seek to maintain the liberal, open environment under which this vast information system evolved. Since its beginnings, the Web has been an interface between people and entities across the world and has been easily and generally cheaply available. Further, the Internet is a place where "anything goes." You can find your favorite celebrity's chicken marsala recipe, order clothes from a popular designer, or look for love in one of the many chat rooms. In keeping with this openness of thought, many Internet users believe that the domain name is nothing more than an address and as such should be outside the restraining binds of trademark law.4 Nevertheless, a recent decision in a U.S. District Court in California marks the further movement of trademark law into the wild Internet frontier as the court found cyber-infringement for the first time regarding a domain name. 5 II. FACTUAL BACKGROUND In 1993, Mr. Ren Folse, a lawyer specializing in workers' compensation law, registered the domain name "juris.com" with NSI. He then assigned the name to The Comp Examiner Agency, d.b.a. 25th Century Internet Publishers [hereinafter TCE]. TCE sells software for Internet access to different professional groups, including the legal community.6 However, Juris, Inc. [hereinafter Juris], a Tennessee-based company that makes popular law office 'Raysman and Brown, supra note 1, at 4. 'The Comp Examiner Agency, Inc. v. Juris, Inc., No. 96-0213, 1996 WL 376600 (D.C. Cal. Apr. 26, 1996). Earlier, in Hasbro, Inc. v. Internet Entertainment Group, Ltd., 1996 WL 84853, 40 U.S.P.Q.2d (BNA) 1479 (W.D. Wash. Feb. 9, 1996), a court granted an injunction on trademark dilution grounds. However, The Comp Examiner Agency is the first case finding trademark infringement in relation to a domain name. 'The site welcomes users as "the Internet's online home for legal, insurance, forensic, and related professions." Memorandum of Points and Authorities in Support of Defendant and Counterclaimant Juris, Inc.'s Reply Brief in Support of Its Ex Parte Application for Temporary Restraining Order, Order to Show Cause Why A Preliminary Injunction Should Not Issue and Order for Expedited Discovery at 2, The Comp ExaminerAgency (No. 96-0213). https://digitalcommons.law.uga.edu/jipl/vol4/iss2/6 2 Hale: Trademarks Ride Into the Wild West of the Internet: A Landmark Ru 1997] COMP EXAMINER AGENCY V. JURIS 401 automation software, had registered its name, "JURIS," as a trademark in 1988. 7 In 1994, Juris, recognizing the growing commercial market on the Internet, sought to register "juris.com" as its own domain name. Juris's application was denied because the name had already been assigned to TCE. Juris, unable to use its trademark name, registered "jurisinc.com" instead and then wrote t (...truncated)