Visa vs. evisa.com In Vegas

wessman writes "In October 2002, Visa (the credit card company) convinced a Las Vegas federal court to prevent the small business JSL Corp. from using the term 'evisa' and the domain 'evisa.com' for its website offering travel, foreign language, and other multilingual applications and services. The court ruled that the website--run by Joe Orr from his apartment-- 'diluted' Visa's trademark, even though the site uses the word 'visa' in its ordinary dictionary definition, not in relation to credit card services. Now, the Electronic Frontier Foundation is helping JSL with an appeal. The EFF has a press release available."

Comments

Overzealous...

[Anonymous Coward]

That's like San Fransisco suing eBay...

First post?

Re:Overzealous...

[mbogosian]

That's like San Fransisco suing eBay...

Actually, it's more like eBay suing San Francisco. The term visa was here long before the corporation of the same name was.

Re:Overzealous...

[mbogosian]

> That's like San Fransisco suing eBay...

Actually, it's more like eBay suing San Francisco.

Technically, I guess it wouldn't be San Francisco at all...it'd be more like Oakland.

You can't trademark dictionary words!

[Junior J. Junior III]

I hope that Visa gets e-visa-rated in the ensuing lawsuits.

Re:You can't trademark dictionary words!

[ndogg]

http://www.m-w.com/cgi-bin/dictionary?va=eviscerat ed

That's absurd.

[mindstrm]

I mean, I know this is slashdot, and a million people are going to say the same thing...

but that's rediculous. A VISA is a very, very common international term NOT related to credit cards.
If the site was about any kind of financial transaction providing, I'd say this was completely justified.....

Re:That's absurd.

[azaroth42]

As per the wired article, I agree with the defendant that Visa just wants the eVisa.com domain name.

Visa has no more right to the dictionary word 'visa' than Apple has on the fruit. Especially when the word is used in its -correct- context.

I'm trading in my Visa for MasterCard. How about you?

-- Azaroth

Re:That's absurd.

[bumby]

Ehm, I have a trademark "is". So could you please remove those from your post.

Re:That's absurd.

[Anonymous Coward]

I'm trading in my Visa for MasterCard. How about you?

What? Why would you trade an endorsement that allows you to stay in a country for a credit card?

Re:That's absurd.

[i-sob]

If you exchange your Visa for a MasterCard, you won't really be boycotting Visa:

Visa and Mastercard are really two names for the same economic enterprise, i.e. a group of 6000 banks. Of these, the same 50 or so big banks own, govern and make all of the competitive decisions for the brands called Visa and Mastercard.
From PBS

Visa and MasterCard are being sued by American Express and the DOJ for antitrust and by a a group of retailers for antitrust related to debit cards.

Well

[damiam]

I hate to say it, but I think Visa's got a case. My first thoughts when I see evisa.com are "electronic Visa". There is legitimate potential for confusion here (unlike the Lindows case). Now, you can argue that Visa shouldn't be allowed to trademark dictionary words, and you're probably right, but legally Visa's on solid ground.

Re:Well

[Tyler Eaves]

Frankly, bullshit.

That's like saying Microsoft could sue 'ewindows.com', a site that sells windows, of the glass variety...

Re:Well

[Daniel Dvorkin]

Hmmm. My first thought when I see "evisa.com" is "Oh, another made-up company name." (Avaya, Agilent, etc.) My first thought when I see "eVisa" (or, for that matter, "e-Visa") is "government program to allow people to apply for visas over the net." That it's private rather than government doesn't substantially change that interpretation. If I were looking for visa help, I'd be happy to find a company that could provide it.

And you know, like most Americans, I pay for a good half the shit I buy by credit card -- more like 90% if you count using my debit card as well -- and both my credit and debit cards say "Visa" on them. And yet that is waaay down on the list of things I think of.

I I want to contact Visa over the net, I'll go to visa.com, not evisa.com or e-visa.com or whatever. You wouldn't go to eford.com to look at cars, would you?

Re:Well

[damiam]

They could, if they already owned e-windows.com.

Re:Well

[FluffyOne]

evisa.com was registered first according to whois.

Where does that leave us?

Ronny

Re:Well

[stratjakt]

>> Now, you can argue that Visa shouldn't be allowed to trademark dictionary words, and you're probably right

Of course you can trademark dictionary words, or combinations of them.

Are you saying every company should make up some gibberish string of characters for every product or service they want to offer?

How would you like a alvnernmpal digelflorp?

A trademark only applies to the specific product or service, though. And it's only being violated if someone uses it for a similar product or service.

Trademarks are valuable not only to corporations, but to you. If you buy a Ford Explorer, you're getting a Ford Explorer. If I sold you a mo-ped and told you it was a Ford Explorer, I'd be guilty of fraud - because I misrepresented it as a trademarked good. If not for the trademark, I'd be innocent so long as there was a sticker on it saying 'Ford Explorer'.

In this case, if evisa offers credit, or some other financial services, they'd be fraudulently tricking people into thinking they're Visa.

But the name of the company doesnt matter. If you go to the website to apply for a credit card, you quickly realize that it's not the same company at all.

They aren't going to trick you into booking a vacation thinking that there's a gold card waiting in Tahiti for you.

Re:Well

[timeOday]

That's Visa's problem for trademarking such a common word. If they want exclusive rights to all uses of a word they are welcome to use a password generator. It would be stupid of us to give companies exclusive rights to useful portions of our language.

Re:Well

[FFFish]

The trademark laws are pretty clear on this.

As long as evisa isn't offering the kind of products Visa does, it can use the evisa trademark. Were evisa offering financial products of any sort, they'd have to give up the name: there is a significant likelyhood of consumer confusion between the names.

At least, that's how it sensibly works in Canada.

Re:Well

[fireboy1919]

A reasonable person might assume that, but only if their business had nothing to do with travel. The name "evisa" conjures up the image of having to apply for a visa, and all the paperwork therin. The "e" part makes it sound electronic.

In essence, it could be just a marketing tool that comforts people into believing that the trip will be easier to obtain with the help of evisa, whether or not they issue travel visa.

But that's really beside the point. Copyrights apply to a single domain - it doesn't matter what word it is that you're copyrighting. All they have to prove is that evisa does not work in the same domain as Visa. This could be an issue because of the vast area of application by Visa, but I think it'll probably be an open and shut case because copyrights are usually restricted to not what the business does, but to some particular statement on the copyright, in this case, probably to all things credit card.

Re:Well

[Kaz Riprock]

How would you like a alvnernmpal digelflorp?

I already have two! And I love them both! I bought them with my new e-Visa!!

No case needed

[erpbridge]

...unless Visa (credit card corp) is planning on going into the travel visa business with a one-card system (all your info is based on the numbered tracks on your card, which reference a central database). Even then, there is no case at current until Visa owns the travel visa process.

I can't believe they convinced a Las Vegas federal court that it was a legit case. It should have been laughed out by the judge in less than 10 minutes. There is no way this should have gotten this far.

Re:No case needed

[sql*kitten]

...unless Visa (credit card corp) is planning on going into the travel visa business with a one-card system (all your info is based on the numbered tracks on your card, which reference a central database). Even then, there is no case at current until Visa owns the travel visa process.

I don't know much about Visa (I use American Express) but I do know that Amex are a massive travel agency in addition to their charge card business, one of the largest in the world. Diners Club are also heavily involved with the travel industry. It depends on what travel related services Visa provide their customers. If they (Visa) do, then they have a case that eVisa were infringing.

EFF is full of it here

[Anonymous Coward]

Visa is not suing JSL because their website "evisa.com" dilutes Visa's trademark. They are suing JSL because their website dilutes Visa's "e-visa.com" trademark. Which Visa owns. Visa owns the trademarks to both E-Visa and to eVisa. Neither of which is in the dictionary, thank you very much.

EFF should be spending its time on a more worthwhile lawsuit. They'll go down in flames on this one: Visa is dead right.

Re:EFF is full of it here

[csnydermvpsoft]

It was probably already taken... Except, wouldn't that prove that evisa was there first? Hmm... slightly confusing.

Re:EFF is full of it here

[EkiM in De]

From the Whois database
evisa.com : Record created on 27-Aug-1997
e-visa.com: Created on Wed, Apr 22, 1998

evisa.com had been registered just under a year when VISA registered their domain for eVisa (as a product)

A quick search of the US PTO database reveals that VISA did not register their trademark for eVisa and e-Visa until "August 19, 1999".

Though interestingly a search of the wayback machine shows an incarnation of the evisa website from oct 12 1999 (after the eVisa trademark was filed) as a webdesign and e-commerce company, with later additional web directory content. The wayback machine does not have any Visa (as an entry stamp) information as of Sep 25 2001 (its last entry for evisa.com)

Re:EFF is full of it here

[cicatrix1]

They couldn't have, because evisa.com started up in 1997... a full 2 years prior to visa's trademark application.

Re:EFF is full of it here

[_ph1ux_]

you should email this info to the evisa people.

with the links etc....

Proper ruling

[Anonymous Coward]

Judge should rule that unless Visa corp is in the business of distributing entry clearance permits for world nations, they must immediately change their name to something else.

They are diluting the normal outlets for visa applications and work permits.

This just in

[ekrout]

HOLLAND, MI -- Popular geek news site Slashdot (www.slashdot.org) has come under fire recently for featuring articles on the Visa, Inc. credit card company. Visa has trademarked any combination/permutation of the English letters "v", "i", "s", and "a".

Lawyers from both sides have slated a preliminary meeting and hope to settle outside of court.

Slashdot's head honcho, Rob "CmdrTaco" Malda, was unavailable for comments. Members of his site appear to be concerned about dealing with Visa's behemoth legal team, and plan on purchasing hot grit and goat insurance just to be safe.

Stay tuned as further details from this shocking case come to light.

Other addresses at risk too

[goombah99]

if evisa.com is at risk then there is also

ivisa.com and myvisa.com

which are also registered on who-is

and where does it end?

bluevisa.com, redvisa.com...

Re:Other addresses at risk too

[stratjakt]

The point isnt to win.

What they want is for every time you hear the word 'Visa', you think of their credit card, and not something else.

This means doing everything they can to quash alternate uses of the word.

It's the way the system works, and frankly I'm bored of people getting excited every time something like this happens.

I mean, sure, you could go ahead and open a donut shop called "Radio Shack", but you'd just be asking for it.

Re:Other addresses at risk too

[sconeu]

I mean, sure, you could go ahead and open a donut shop called "Radio Shack", but you'd just be asking for it.

Except that:

1. JSL does business dealing with ... visas. You know, those documents that allow you to stay in a country? The thing that the 9/11 hijackers got 6 months after 9/11?

2. JSL owned evisa.com since 1997. VISA applied for TM status in 1999.

Re:Other addresses at risk too

[rmohr02]

So why don't they sue the governments of the US, UK and any other country that uses the word "visa", since Visa owns the trademark to the word "visa".

Re:Other addresses at risk too

[Some Dumbass...]

and where does it end?

bluevisa.com, redvisa.com...

Here's where it will start: cervisa, a website belonging to the Development Director of the EFF. :)

Re:Other addresses at risk too

[NewtonsLaw]

and where does it end?

Avis Rent A Car have announced that they're suing Visa International for an anagramatic infringement of trademark.

Cy Bersquatter, lawyer for Avis, told the media today that his client was deeply concerned that Visa International was causing confusion in the marketplace.

"They even have a Gold Card -- and we have a Gold Car in the carpark -- how confusing is that?"

It is believed that Avis have requested the death sentence.

Visa will lose

[kitzilla]

Visa will lose on appeal. Though eVisa provides SOME services also provided by Visa credit cards, their core business is entirely different and they are using the term "visa" in its common, not proprietary, sense. Unless Visa can produce some proof of eVisa's *intent* to derive value from the Visa mark (through internal communications or similar graphics), they'll lose.

I, for one, cannot imagine how someone might be mislead into thinking that they were utilizing Visa's credit services.

Re:Visa will lose

[aero6dof]

My reaction to this story is a questiom. If evisa weren't being helped by the EFF, would they be able to afford to fully protect their rights against Visa?

Re:Visa will lose

[kitzilla]

To me, this is a simple service mark case. I'm pleased the EFF has an interest, but suits like this are usually adjucated by private concerns.

the definition of visa

[Raleel]

I didn't know it either :)

http://dictionary.reference.com/search?q=visa

my new domain name

[gymbrall]

I hope I don't have any trouble with my new website dedicated to internet macaroni.
I'm calling it e-macs.com or I might drop the dash. But it seems like I've heard that
name before...I think it's a text editor, or maybe an IDE, or a browser...

Oh well, I can just claim that they have dilluted their own trademark.

Re:my new domain name

[MoneyT]

Well, it doesn't look like apple will have a problem with it. But these guys might if you drop the dash

a case perhaps, but a losing one

[dandelion_wine]

Possibility for confusion is the test, but I'll never understand why a jury system is suitable for criminal offences (entailing possible deprivation of liberty -- very serious stuff) and not suitable for trademark issues. If confusion is the test, why not have a dozen or more impartial people decide if they would be confused? Have all the usual jury safeguards -- each side able to object to a certain number of candidates to get as unbiased a sample as possible, and go from there.

Personally, I'd have to agree with the above poster -- I did originally think electronic Visa, as in the card. But you can't trademark a common word unless it's acquired a secondary meaning linked to the product. This isn't like calling all tissue papers "Kleenex" or all snowmobiles "Skidoo". I'm sure visas (the passport related ones) were around before Visa was, and this business is using the word with a minor adjustment.

Another factor is supposed to be the point of sale. Are visas and Visa transactions done at the same place? No. So the possibility for confusion diminishes yet again.

Re: The AC is full of it here

[azaroth42]

Garbage. E-Visa is not a trademark of Visa.
They may have /applied/ for it to be a trademark, but that's not to say it is one -now- for them to be suing under. RTFA.

On the E-Visa.com website, under Legal it lists their trademarks as:

The trademarks, logos, and service marks (collectively the "Trademarks") displayed on the Visa site are registered and unregistered Trademarks of Visa and others. VISA®, the Three Bands Design Mark®, CLASSIC®, the Comet Design Mark®, the Dove Design Mark®, ELECTRON®, ENTREE®, the Impulse Design Mark®, INTERLINK®, the Network Design Mark®, PLUS®, the PLUS Design Mark®, and It's Everywhere You Want To Be® are registered Trademarks of Visa in the United States and other countries

I think Visa may have a point

[ducomputergeek]

In Europe visa offers the Visa Electron card. I could see where evisa could be confusing to people thinking it had something to do with Visa's online varification system or the Visa Electron card.

Next, State Dept to be sued

[hughk]

What are those things called that most non-citizens are supposed to get before they come to come to the US? Is it a blue white and gold thingy? Maybe the department of state should check what they are doing in case they upset the Visa group.

Re:Next, State Dept to be sued

[hughk]

State issue visas to visitors at their consular offices worldwide, who do not benefit from waivers, who applied for and received entry clearence. The visa is a stamp, or now a vignette stamped into a passport (harder to forge). The INS check the visa and approve people at the port of entry. State also issue passports, but I was referring to th thing that visitors require. Sorry that wasn't clear.

Re:Next, State Dept to be sued

[ameoba]

Great, so now we have BOTH Microsoft _and_ Visa suing the state department for diluting their trademarks.

Re:Next, State Dept to be sued

[hughk]

Yes, Satte will settle such that all passports carry wording reflecting that the bearer is the citizen of the United States of America and Microsoft. Visa stickers will appear in gold, white and blue, reflecting the colors of the new trade mark owner.

Who saw this coming?

[Snork Asaurus]

Score of the Technology/Computer/Internet/Communications revolution at half-time:

Technology professionals: massive unemployment

Lawyers: massive employment

Lucy You should go into high technology. That's where the future lies.

Charlie Brown Yeah, right. Just hold the football.

Trademarks only apply to specific trades

[rcw-home]

Visa owns the trademarks to both E-Visa and to eVisa.

Only in the credit card trade, I would imagine. Visa would have to either prove that their eVisa trademark is 'famous', or prove that evisa.com is in the credit card business to win this suit.

Well, if the EFF is involved....

[autopr0n]

This guy is probably screwed, sorry to say. Has the EFF had any actual success at all? I only seem to hear about them losing. I agree with what the EFF is trying to do, but it seems like we're all going to be fucked in the ass pretty soon, the way things are going. I guess I'm just a cynic.

I don't know about you guys...

[MoThugz]

but I believe the eVisa.com guy could still be saved. The content on the previously-known-as-evisa.com site clearly showcases Passport-related items.

I think the best option for him is to buy the domain ePassport.com (if it's still available).

Doh! I forgot, he will then be sued by MS for 'diluting' MS's cross-site authentication trademark...

I guess he's screwed then... too bad.

But then...

[jasonditz]

At first I like the idea of being able to name my company after a fairly common word and then bludgeoning people with the legal system when they use the word... but then I got to thinking:

Won't Apple be able to sue emacs.org?

please to mod down, thnx.

[autopr0n]

Trademarks can't stop people from using the names of things, just calling themselves that thing. I can say "JavaTM" (the name sun insists on using every time they write the word... anyway). I can even say "java java java". If I write a program I can say "I wrote this program in Java". What I can't do is call it "JavaWhatever", in which case sun will get their panties in a bunch.

So if slashdot changed their name to "visa", then they would be in trouble. In the interim, they can talk about visa all they want.

From the article:

[RomikQ]

Visa convinced a Las Vegas federal court to prevent the small business JSL Corp. from using the term 'evisa' by presenting all court official with visa credit cards to demonstrate their ownership of the visa trademark.

Later that day, the judge assigned to the case was seen in a Jaguar dealership, obviously conducting an investigation into the visa case by using the above mentioned cards. He refused to comment.

Re:Of *course* Visa owns the evisa trademark

[Florian Weimer]

Visa International Services Association applied for the mark on August 19, 1999. JSL applied for the mark on October 6, 1999. Visa wins.

Is it that simple in the US? In other countries, a trademark gains some protection by its use, even if it is not registered. If Visa didn't use the trademark back in 1999, it's not obvious who should own the trademark.

Who owns the trademarks?

[autopr0n]

well, according to The US government which won't let me link to search results (just do a search for evisa), they have both owned trademarks since 1999, with visa corp beating JSL by two months.

Visa also owns 'e-visa' and 'e visa', but not 'e-visa.com' or 'evisa.com'. Interestingly, they only own the TM in one international category IC036, while JSL owns it in IC046. I'm surprised VISA didn't register their TM in every single possible field.

Typed Drawing

--
Word Mark EVISA
Goods and Services IC 042. US 100 101. G & S: COMPUTER SERVICES, NAMELY DESIGNING AND IMPLEMENTING WEB SITES; PROVIDING TRANSLATION SERVICES FOR OTHERS VIA A GLOBAL COMPUTER NETWORK. FIRST USE: 19971227. FIRST USE IN COMMERCE: 19971227
Mark Drawing Code (1) TYPED DRAWING
Serial Number 75816558
Filing Date October 6, 1999
Published for Opposition May 15, 2001
Owner (APPLICANT) JSL Corporation CORPORATION NEVADA 3540 W. Sahara #081 Las Vegas NEVADA 89102
Attorney of Record PARKER H. BAGLEY
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

Typed Drawing

---

Word Mark EVISA
Goods and Services IC 036. US 100 101 102. G & S: Broad based financial services, namely, banking, payment, credit, debit, charge, pre-paid, stored value, cash disbursement, travelers cheque, travel insurance, deposit access, automated teller machine, point of sale, point of transaction services; providing electronic funds and currency transfer services; providing transaction authorization and settlement services; dissemination of financial information via a global information network
Mark Drawing Code (1) TYPED DRAWING
Serial Number 75779435
Filing Date August 19, 1999
Filed ITU FILED AS ITU
Published for Opposition October 10, 2000
Owner (APPLICANT) Visa International Service Association CORPORATION DELAWARE 900 Metro Center Boulevard Foster City CALIFORNIA 94404
Prior Registrations 1065272;1071114;1313366;AND OTHERS
Type of Mark SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

Re:Of *course* Visa owns the evisa trademark

[xingix]

Exactly. evisa.com has been around since 1997. If I open a store called epillows.com and don't trademark the name and some big pillow company decides to trademark epillows and e-pillows, there's no way in hell they're taking my domain without a fight.

Visa

[NetGyver]

When I think of Visa, i think of a passport. with I think of a passport, i think of paper with identification info on it that you use to travel from country to country.

Microsoft is whacking Lindows for the same thing. (no news here) Which in a way i can see why, but in another way, I think it's just stupid. There should be a law made where if your company name or product is a word that can be found in the dictionary, you shouldn't allow to register it, period.

Why is it that companies think that they can claim a heavily used word as their own? And why is that every company on earth thinks that someone out there may confuse two similar names?
When i saw the link www.evisa.com, I thought it was a site relating to passports or something along those lines.

*whips out credit card*...humm what's the site for this company. 1st guess: www.mastercard.com. *whips out another card* 1st guess: www.visa.com, and so on. Now if Visa has a credit card named "E-Visa" or "eVisa" then i could see the point for the lawsuit.

Re:Visa

[NetGyver]

What I meant by how it's simuliar to the Visa case is that here you got a company suing another company over yet another trademark/product name dispute, and their not even in the same market. (Unlike Lindows, but that case is *generally simular, TM violations) I realize brand protection is a must. Otherwise, brands like Intel, AMD, Nike, and Coke wouldn't nearly have the same brand recognition like they do now.

Your GrayStation 2 and FameCube examples are so hidiously obvious, with only a letter difference from another brand name. However if those were consoles then I'd see nothing wrong with bitchslapping a company for ripping your name off.

But if your a credit-card company, and some guy is running a travel, foreign language, and other multilingual applications on his webpage, The simuliarities between the two companies becomes very different and very fast. I could also understand why they chose a name with visa in it. After all, Visas and travel go hand in hand (passports)

Imagine for a moment, evisa makes it big...take that a step further and imagine they advertise their services just as much as Visa does such as in magizines and on TV. Do you'd really think you'd confuse the two? Especially when their marketing is likely to be different anyway. Different slogans, narraritive, um...product. :)

Re: The AC is full of it here

[LuxFX]

While USPTO.gov does state that Visa's Trademark application was roughly 2.5 weeks prior to the defendant's, the JSL (the defendant) application includes dates for first use and first use in commerce:

Visa's application: August 19th, 1999
JSL's application: October 6th, 1999
JSL's First Use/in Commerce: December 27, 1997

This handily beats out Visa's information, which doesn't include these dates at all. IANAL, but as far as I know the date of established use trumps date of application.

In fact, it could even be argued that JSL Corporation (the defendant) could sue Visa for dilution of trademark.

-----------------

Re:When will the madness end?

[stratjakt]

>> I thought words in the dictionary weren't copyrightable?

They aren't, but they are valid trademarks. And they should be.

There is no "evisa.com" trademark.

[autopr0n]

See my other comment. There is no trademark on 'evisa.com' or 'e-visa.com'. JSL and VISA both own trademarks on "evisa" in different international categories. VISA also owns a trademark on "e-visa" and "e visa".

Obviously visa should get dibs on the "visa" trademark, but I had never heard of 'evisa' before. Had I seen the word out of context I would have associated it with neither banking or travel, but rather simply thought of it as one of those random company names (accenture, aquent, alcola)

Anyway, in an ideal world, JSL would have evisa.travel, and VISA could have evisa.bank.

To bad ICANN is run by monkies. Ah well.

The atomic particle formerly known as "electron"

[stevejsmith]

ALPHA CENTAURI, Universe--Today when Visa Corp. sued the natural laws of...well...everything in a federal court for infringing on their European trademark of "Visa Electron" the court orded the Universe to cease and desist producing, using, or even acknowlodging the atomic particle formerly known as "electron." Incidentally, the Universe came to a screeching halt everywhere except for Alpha Centauri where the whole Universe is pilled onto one atom with no valence electrons. More news at eleven.

No.

[autopr0n]

JSL has owned the "evisa" trademark in international category ic042 since October of 1999.

VISA has owned "evisa" in ic036 since august of that year. Why they didn't register evisa.com at the same time is beyond me, but in any event, they both have valid claims to the domain name, and JSL registered first.

Re:Other option

[AntiNorm]

*cough* passport *cough* *cough*

You mean MSN Passport?

reply to umm everyone

[shaitand]

I don't know about you guys but personally if I went to visa.com and found a company or organization related to offering actual visa's as opposed to credit cards, I wouldn't be shocked. That's what should actually be there. Now visacorporation, or visacards, or visacreditcards. or some such maybe. It wouldnt' matter if I went there expecting to find information abotu visa credit cards, it's definition is defined in the dictionary, it's comman language word used millions of times daily in it's dictionary context, visa's patent should be wiped from the books. This case isn't the issue. That visa greased someone's pockets to allow them to patent a word in the public domain is the issue.

acbay.net

[GweeDo]

I had this kind of a thing happen with my domain acbay.net. I was using the term bay to mean a body of water and eBay threatened to take me to court over it! I wasn't doing anything with online auctions. I just didn't want people to have to type www.animalcrossingbay.net....that is just too long! This is crazy...legal departments suck!

No, he doesn't have an issued trademark yet

[Animats]

You forgot to click on the "trademark status" button. There's an opposition pending. This isn't a registered trademark yet.

• Serial Number: 75816558
• 
  Registration Number: (NOT AVAILABLE)
  Mark (words only): EVISA
  Current Status: An opposition is now pending at the Trademark Trial and Appeal Board.
  Date of Status: 2001-10-16
  Filing Date: 1999-10-06
  Registration Date: (DATE NOT AVAILABLE)
  Law Office Assigned: TMEG Law Office 107
  Attorney Assigned: DIXON JENNIFER HAZARD
  Current Location: 848 -TTAB
  Date In Location: 2001-10-19
  

Corporate contact info

[Sebby]

available here Tell them what you think.

Read the Court Document!

[Crazy Diamond]

Reading the 26 page court document you'll find that this guy negotiated the sale of evisa.com for $250k and apparently wanted more so Visa went to court. Also according to the court document, this guy also registered:

usadirect-online.com (USADirect is an AT&T trademark)

picturebookmaker.com (Picturebook is a SONY trademark)

Now usadirect.com is not an AT&T website and usadirect-online.com is no longer registered. The picturebookmaker.com was registered in 1995 so there's more to it but either this guy had a horrible attorney or the judge was asleep the day they explained those two domain names.

While this is a small business, it has a total of one employee... the owner. He also has two corporations. You incorporate in Delaware to keep corporation officers anonymous. You incorporate in Nevada to avoid paying income taxes. So what does this guy do? Incorporate two companies. He owns the Delaware one directly (anonymously) and the Delaware one owns the Nevada one. The Nevada one is the company that holds evisa.com and "operates" it.

Re:Read the Court Document!

[jko9]

Wrong about the 250k. They at one time offered 90k. See this page for history of the domain and case.

JSL has a great attorney (Bradley Booke of Las Vegas), and of course he did point out that the "point" about JSL owning picturebookmaker etc. is absurd. Obviously the domain was chosen for the meaning and not for the little-known trademark it "contains". (Anyone here ever heard of Sony Picturebook or ATT USADIRECT before?) I don't see any evidence that the has judge considered *anything* that JSL's attorney has said.

Boring details about corps: Delaware v. NV. These were two separate corps, both owned 100% by Joe Orr (not anonymously). The tax situation is the same for both states - no taxes paid on income created out of state. I had the Del corp first, and then got the NV corp bc someone told me it was a better idea to have the biz location in NV in case I ever have actual employees, which I would have by now, if I wasn't using all my resources defending the company against this lawsuit. I was told that it was simpler just to get a new corp in NV than to get a license for the Del corp. I've now disbanded the Del corp.

Believe me, in the hands of VISA's lawyers, one single overworked person's bumbling attempts to get his paperwork straight while writing 10,000 lines of code per month can look like some kid of fiendish plot...They also cross examined me in my deposition about dates on my resume...unfortunately for them they couldn't find any discrepancies...

-Joe Orr
JSL

Does anyone else think

[MoneyT]

Forget for a moment that the two products are un related

If Visa (the CC company) was to dumb in this day and age to not register Visa.com, VisaCreditCard.com e-visa.com evisa.com and any other variations they might use that they don't deserve to have the domain unless they want to pay the owner for it? I mean seriously, it's not like the internet is a new thing and they didn't know about it. If you're to dumb to get your name space, that's too bad.

perspective

[MSG]

Arguments about first use and trademark applications ignore what the case is really about: big money vs. everything/anything else. Visa is about money, so they can basically bend the law to suit whatever way they see it.

How long can we ignore the obvious?

domain dispute scoreboard

[quark2universe]

Mega-rich-corporation : 1,875,258
Some-guy-at-home : 0

juries and judges

[zogger]

--technically, you are entitled to a jury trial for any dispute involving more than 20$. Just another one of those pesky constitutional "theories" that "modern law" ignores in a lot of cases. As to these trademark disputes, it would have to be alleged that somehow someplace someone lost more than 20$. The evisa domain holder could assert that handily. Visa on the other hand would be hard pressed to prove they lost one penny, as evisa doesn't issue credit as a business.

"Amendment VII
In Suits at common law, where the value in controversy shall exceed twenty
dollars, the right of trial by jury shall be preserved, and no fact tried by a
jury, shall be otherwise re-examined in any Court of the United States, than
according to the rules of the common law."

Re:juries and judges

[zogger]

--good luck to you! Visa is way outta line on this one, someone in their legal department musta been bored and got their panties in a wad and needed brownie points or something, "hey, let's whack these little guys, it'll be fun!". Too bad you have to pay cash for this though, perhaps you can recoup somehow, "frivilous lawsuit" whatever.

Re:copywhat?

[fireboy1919]

Whoa...I suck. Using copyright like four times when I meant trademark. Yes, I know that.

Obviously I was referring to trademark in my post.

EFF should not have taken the case

[smiff]

The defendant in this case looks like a sleazy cybersquater. According to page 10 of the court ruling, the defendant has registered a number of domain names with trademarks in them. He registered usadirect-online.com (which has AT&T's USA Direct trademark in it), picturebookmaker.com (which has Sony's Picture Book trademark in it), and jserv.com "which according to the defendant's deposition was supposed to call to mind the COMPUSERVE trademark".

Also on page 10, "JSL stated on its Web site that it provides e-commerce, Web site development, and payment services, including online credit card processing. After Visa International filed this suit, JSL removed the reference to credit card processing".

On page 8, defendant says, "[f]or the right price, evisa.com might be available, but I'll have to check with a couple of people, one of whom is in Japan and one of whom is on vacation." He later admitted that this was a false statement because he did not have to check with anybody. He turned down an offer to sell the domain name for $50,000, instead demanding $250,000.

While I suspect the judge's ruling was based more on the fact that the defendant was a sleazy bastard rather than on the merits of the case, I don't think the EFF should have taken the case. My guess is, if the EFF helps him overturn the ruling, he will turn around and sell the site to Visa. He's just using the EFF to get free counsel for his profit venture.

Re:EFF should not have taken the case

[jacquesm]

mod parent way up please !

Re:EFF should not have taken the case

[jko9]

Wow! Now THIS is really amazing. When VISA made the point about JSL registering "other domains with trademarks in them" and then cited JSERV.COM, PICTUREBOOKMAKER.COM and USA-DIRECTONLINE.COM" I thought that such an asinine point could only serve to backfire against VISA. Imagine my surprise when the judge cited this very point - apropo of nothing by the way, since the current order does NOT rule in favor of VISA's motion for summary judgement on the cybersquatting issue. Imagine my amazement when someone on slashdot other than an anonymous corward repeats this same thing.

JSL has registered a number of domains, all of which are under active development or will be. We have never sold a domain. The domain names above contain ENGLISH WORDS, NOT TRADEMARKS. Can you grasp this idea? Visa simply went and did a trademark search on every word in every domain JSL owns, and then feigned outrage, as if I chose those domains for their resale value. I mean, come on, look at picturebookmaker.com. For that matter look at what used to be on evisa.com. Cybersquatters don't put up hundreds of pages of useful info - they just, well, squat.

But in any case, regardless of whether anyone wants to call me sleazy or not, the EFF is NOT INVOLVED in the cybersquatting complaint. JSL is on its own on the infringement and cybersquatting case (both of which are ridiculous, and we'll no doubt do fine w/o any help). The EFF is only trying to overturn this one ruling which could give VISA rights over the commercial use of domains and business names that contain the word v-i-s-a.

-Joe Orr
JSL

Common usage is another good response.

[Angelwrath]

Words by companies that become so popular that they enter the common language of people also develop certain legal protections for people who want to use them.

For example, the company Xerox became the term for copying a document, such was their popularity. And I recall someone winning a lawsuit over using the word, arguing that people in every day usage said "I'm going to Xerox this document", which turned out to be true, and Xerox lost the suit.

Same with Federal Express. It isn't uncommon for someone to hear "I'm going to FedEx this over", which is why Federal Express now calls itself FedEx, to associate more strongly with the popular contracted use of its name.

So it is always important to assess this avenue when dealing with companie names. Think of all the companies sued by Apple over the name Apple in a product or company title. That has to be the worst example of all - Apple is a word in such broad usage that there is no way they should have won a suit.

Also, again with regards to an Apple product name, Apple didn't deem it fit to sue Compaq over the iPaq product, which has the exact length and format of the iPod name brand.

Obviously there is DEFINITELY a bullying consideration when suing a company, otherwise Apple would have had a strong case suing Compaq over the name, but didn't, but they've sued a bunch of smaller companies in this regard.

Re:it's not one or the other

[passion]

different services isn's the issue, but trademark dillution is.

What if I were to start posting messages on slashdot under the name "HTS" which looks a lot like HT5, people might thinking that we're the same person, and start to really hate you for the things I said (for you).

I'm not defending this ridiculous claim by Visa, but this is the issue that's being debated here.

The Current Court Order and the Lawsuit

[jko9]

There are a couple of stories maybe getting mixed up in this discussion.

The first story is about VISA being involved in a classic reverse-cybersquatting action.

The second story is about the most recent ruling in the case, which involvesonly the "dilution" claim, and basically claims that EVISA "dilutes" VISA because "it contains the VISA mark in its entirety". (See the full Court Order on the eff.org site or on 3Dtree.com.) This ruling if left unchallenged could result in a considerable consolidation of Internet domains in the hands of holders of "famous" common-word marks. This is a separate issue from arbitrary coined words like "Kodak". Allowing "Kodak" to control
commercial use of the word "kodak" is obviously less problematic than allowing VISA to control commercial use of the word "visa". Or it should be obvious.

The EFF is NOT assisting JSL with the lawsuit as a whole. It is only assisting JSL in trying to get the most recent ruling overturned. As for the other charges in the lawsuit as a whole, the EFF is not involved, nor should it be, because: 1. The EFF has its hands full with the continuous assualt on cyber-rights so well chronicled on slashdot day after day, and 2. the fact that a huge corporation is using the courts to try to bankrupt a small company by issuing complaint after complaint, is not news, and in any case not an issue particular to the Internet.

Still, if the EFF was as powerful as, say, the NRA, VISA would never have even filed this suit. Anyone here not join yet?

I for one don't object to Visa defending their trademark. There is nothing per se wrong with a large company sueing a small one. If I'm hurting their mark, then I deserve to be punished, small or large. Not only that, the "dilution" claim is not on its face completely absurd and abusive. This is mainly because the Federal Antidilution Act is so difficult to interpret that even different federal judges have had major differences in interpretation. We believe that EVISA does not dilute VISA, and we'd like to be able to present the facts supporting this position in a trial. We think our position is the correct one. We disagree with the current ruling because it denies JSL the chance to present evidence at a trial, and because it gives VISA and other common word trademark holders broad powers not intended by Congress.

The other charges: cybersquatting and infringement are a blatant abuse of the court system. We have to defend ourselves, and VISA is making this as expensive as possible. They are also refusing to cooperate as much as they can. If VISA really believed they had any kind of case for cybersquatting they could have submitted the case to WIPO at any time for a quick and cheap resolution. However according to the rules, they would have clearly lost. So instead they literally decided to make a "federal case" out of it, 2 years after JSL started development of evisa.com, and 4 years after development of evisa-jp.com. In all of those years, Visa never sent a cease-and-desist letter or in any way complained about JSL's use of EVISA - because VISA was not in fact concerned about infringement. They're just after the domain. Their strategy was to get a registered mark for "EVISA" and then claim that we were infringing that. When we opposed their registration, they sued us within weeks.

As for playing by the same rules, Visa has subpoenaed me and others, but has refused to allow us to subpoena the person or persons most knowledgable on their side. They have demanded hundreds of documents from us, including virtually all business records and emails (which we provided), yet they have simply refused to provide virtually any important documents to us. They have not divulged one single email. Of course, we can then appeal to the judge to make them comply, but the judge then stayed discovery pending ruling on the summary judgement motions.

It would be nice if there was some way of preventing these kinds of tactics, since they give inordinate power to large entities at the expense of the law. But that would be another discussion.

-Joe Orr
JSL