May 2002

You can guess from the caption that it’s about trademarks.   A Ninth Circuit case to cite when attempting to overcome a geographically misdescriptive objection: JAPAN TELECOM may not necessarily refer to Japan, but to the business’ Japanese-speaking customers.   

The Court of Appeals for the Sixth Circuit issued an interesting decision, Bird v. Parsons.  The Court exercised personal jurisdiction over defendant Dotster, an ICANN-accredited registrar, based on the assumption that because Dotser sold 233,000 domain names in the U.S., 1/50 of those (4,666) were likely sold in Ohio, so Dotster had minimum contacts with Ohio. 

The FTC has fined John Zuccarini, also known as The Country Walk, JZDesign, RaveClub Berlin, and more than 22 names incorporating the word “Cupcake,” including Cupcake Party, Cupcake-Party, Cupcake Parties, Cupcake Patrol, Cupcake Incident, and Cupcake Messenger over $1.8 million for various transgressions involving over 5,500 domain names.  I have actions pending against him, maybe

Ben Edelman of Harvard has become the Charles Kuralt of the Domain Name world, releasing offbeat reports on strange happenings.  Check out his report on intentional whois fraud at http://cyber.law.harvard.edu/people/edelman/invalid-whois/?d., as well as abuse of “dropped names” at http://cyber.law.harvard.edu/people/edelman/renewals/   This one on a possible lawyer/squatter exploiting the new .biz names is particularly disturbing:

The Second Land Rush will begin soon for.info domain names.   Some of these names were the subject of fraudulent sunrise applications.  Others were challenged by Afilias because the applicant had made fatal errors on its application – for example, applying to register ACMESYSTEM.INFO when the underlying trademark registration was for ACME SYSTEMS.  More info at

The 1-888-MATTRES case, In re DIAL-A-Mattress, 244 F.3d 88 (Fed. Cir. 2001) suggests that domain names in the form [DESCRIPTIVE TERM].COM or [GENERIC TERM].COM are registrable as trademarks (at least in the U.S.), but what scope of protection should they be accorded?  A hint that the answer is “not much” is a WIPO decision