Slashdot Mirror
The Neverending Sex.com Story
fwc writes "This has to be the story which will never end. Back in 1996, Steven Cohen "stole" sex.com from its original owner (Gary Kremen) by forging a letter to Network Solutions asking for the domain to be transferred to him. Subsequently Kremen sued to get the domain name returned. Through what seemed to be a neverending parade of lawsuits and judgements (Documented on slashdot here, here, here and here, and also in several other places), Kremen finally got his domain back and Cohen was ordered to pay $65 million in damages. In the latest twist, Cohen is asking the US Supreme Court to overturn the verdict of the lower courts by claiming that he owned the sex.com trademark prior to Kremen registering the domain. This should prove interesting since it looks like the filing at the USPTO occured two years after the domain was originally registered."
From day one Network Solutions has been horrible. Their customer service sucks. Because of their f-ck ups in the early days it is now nearly impossible to get information changed on an older domain. Compared to other companies, their prices are shit. And because of all this they ended up causing lawsuits. I'm just happy that now(or for the past few years) there is more than one choice for registering a domain name.
according to theregister.co.uk (sorry tired and stressed and cant be arsed to make that a link)
the site generates somewhere in the region of 500,000 dollars a month in advertising space alone
So worth quite a bit by the looks of it
S
Kingdom of Loathing (www.kingdomofloathing.com) Addicted is me
sex.com is a big money maker. The $65 million were awarded based on expected revenue from operating the site from it was stolen. Alexa lists it as the 1669th largest site in the world based on traffic (Slashdot is at 1029th at the moment), and that doesn't take into accounts the partnerships they have for providing pay per click search engine listings to many of the larger search engines for adult searches.
Actually, all he had to do was show that he had used the mark in commerce or had a bona fide intent to use the mark in commerce to file the app. In the latter case, he could have filed up to three year's worth of extensions for time to show use of the mark in commerce.
The USPTO is not the "trademark police". It is the trademark holder's responsibility to police the mark. So when he filed his app, other potentially valid owners should file notices of opposition (to the registration of the mark). While filing for a "domain name" may seem like the more important thing to do... afterall, you have the domain, you own it, right?... a trademark owner can trump your domain name registration with prior use of the mark.
Now, they may have a battle in trying to get the domain name transferred (obviosuly, this case is a battle). The USPTO doesn't "compare notes" with NetSol. In fact, I doubt they all that much give a hoot about NetSol.
The key point is that, even though the guy who forged the letter may have had "bad faith" in acquiring the domain name, if he actually used the trademark first AND filed for the USPTO application first, he is the "senior user" and would theoretically win the "trademark battle".
Domain names are pretty irrelevant to trademark rights. The fact that you reserve one doesn't mean jack to the USPTO nor the courts in determining who owns a trademark (especially if all you do is reserve it and park it!). If anything, you are better off spending that money filing with the USPTO, because the key thing an USPTO application gets you is "constructive notice" (i.e., anybody who uses your mark after you should have known you owned it) and that is more powerful than registering a domain name (which, by itself, is not use in commerce anyway).