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Chip Rosenthal Wins Unicom Domain Name Case
Seth Schoen writes "As seen last month,
Chip Rosenthal (whom many people know for
Reply-to
Munging Considered Harmful, among other projects) was threatened
with the loss of his domain
name unicom.com.
He's now won in court and
will get to keep the domain, at least for the time being."
Mr. Rosenthal secured the domain in 1990. It seemd to be his. How this got that far into the courts mystifies me.
According to the plaintiff's charges, Rosenthal was being accused of cyberpiracy. Why? It's almost like a child throwing a tantrum when he can't get his way.
Unfortunately, this is a limited decision, but hopefully others (like WIPO!) would consider some of this ruling to be reasonable when deciding other domain name battles.
"Pinky, you've left the lens cap of your mind on again." - P&TB
"I can see my house from here!" - ST:
Let me preface this by stating I'm currently a law student (actually in my civil procedure class right now).
The court did not render a judgment stating he had the right to his domain. Rather, they said that suing in California was not permissible due to a lack of jurisdiction over him.
There are several ways to establish jurisdiction over an out of state defendant:
-If Chris had "systematic and continuous" contacts with the State of California
-If his website was of an ambiguous (courts have a nebulous examination standard) level of interactivity and accessible from California (contacts with California established via the Internet)
Because they didn't find either of those, the court determined that he couldn't be tried in that court. This does not preclude the plaintiff from bringing a case in Texas against him.
Basically he just won this battle. It's possible the war is still going on.
the case was tossed out by the judge because Chip was from Texas, not because he was there first or anything to do with trademarks. This was very similar to what LindowsOS is trying to do with Microsoft. MS wants the case tried under Washington state laws, but LindowsOS is trying to get the case tossed because they havent done any business in Washington.
At any rate, Unicom Systems Inc will find a way to keep things going against Unicom Systems Development, we'll here more about this in a few months.
The One Rule Of Chess You'll Ever Need: Don't play someone who carries a kit in their bookbag.
Chip is in Austin, Texas, but the Plaintiff sued him in Los Angeles.
When we responded to the Complaint, we made several alternative motions, one being that a court in California lacked personal jurisdiction over Chip, not only because he's in Texas, but also because he does not have sufficient contacts with California to make it reasonable for him to be dragged into court here.
The Court granted our motion to dismiss for lack of personal jurisdiction. That's a big victory, there's much to be said for the proposition that courts do not have unlimited reach, even when the Internet is involved (think Matt Pavlovich and the California DVDCCA case, for example), but it isn't a ruling on the merits.
If Plaintiff should choose to file a new action against Chip in Austin, we have plenty of ammunition for arguing the merits of his rightful claim to the unicom.com domain name, but readers should not assume that this win addressed that issue. The Court's ruling is here.
No, they didn't go through ICANN. (Allegedly) aggrieved domain name owners can either use the ICANN UDRP or go to court, they're not required to use the ICANN procedures first. These folks chose to go to court first.
As for Chip, he would have no reason to go to ICANN. unicom.com is his domain name, he isn't contesting that the Plaintiff can keep its name, unicomsi.com.
Try the main page, and I see it now says:
Okay, the google cache for his main page is at: http://www.google.com/search?q=cache:ta1nhhNpbHMCTom.
Oh arse
If you read through Unicom Systems, Inc.'s first filing, you'll see that they claim to have been using "Unicom" as a trademark since 1989 -- which seems to give them priority, except...
Lots of other companies have used trademarks including the word "unicom". Rosenthal says he searched the federal trademark registry and found more than 20 registrations besides unicomsi's 3. Or in a search I just ran myself, Thomas Register (http://www.thomasregister.com/, registration required) lists 3 companies whose names start with "Unicom", not including Unicom Systems Inc. There's a maker of industrial air filters in Oregon, a printer in Alberta, and a "LAN products manufacturer" in California. I wonder if that one has heard from Unicomsi?
IANAL, but it certainly looks to me that, no matter when unicomsi registered their various trademarks, they've never had priority to just the name "unicom", or even to that name in a computer-related market. According to Rosenthal, unicomsi's registered marks are graphic designs including the word "UNICOM" -- that makes the whole mark a valid trademark (assuming the graphics are unique), but it hardly gives them the right to the name itself. And if they did own the name as related to software, still they failed to defend it for 11 years.
Anyway, this round was only about whether u-si could sue a Texas website in a California court. If u-si wants to hire a Texas lawyer, they can start over again in Texas -- of course, this is more expensive for them, and I'd certainly be amazed if they won in _any_ court on the facts I know of.
If they do continue in Texas, a suggested settlement: Rosenthal puts their banner ad at the top of his web page "Were you looking for Unicom Systems, Inc., support for legacy...". Not that he couldn't beat them entirely, but it would save time and money.
The great thing about that decision is that it tends against all the various silly lawsuits claiming that because your web site can be seen, or is mirrored in, or links to sites in some other jurisdiction, you can be yanked into court in a different state or country.