By Elaine Hargrove-Simon, Silha Fellow and Bulletin editor
Cybersquatting is defined in Black's Law Dictionary as "the act of reserving a domain name on the Internet, especially a name that would be associated with a company's trademark." In recent weeks, two men in different parts of the country have been ruled to be cybersquatters. One of them considers it a matter of freedom of speech; for the other, it is a matter of profit. New York resident John Barry has arguably been cybersquatting for profit.
Operating a company named "Domains for Sale," Barry has eight rulings against him: three with the World Intellectual Property Organization (WIPO) and five with the National Arbitration Forum. In Nielsen Media Research, Inc. v. Domains for Sale, Inc., filed with the WIPO, Barry reportedly wrote Nielsen Media Research, Inc. that
William Purdy, Jr., of South St. Paul, Minn., has been targeting domain names similar to well-known brand names and newspapers, where he then posts anti-abortion information. He claimed he legally obtained the domain names and that the issue is one of free speech. He said he had specially targeted the Washington Post and the Minneapolis Star Tribune because of their pro-abortion stance.
According to an article posted on wired.com, Purdy was inspired by Barry's entrepreneurial spirit and modified Barry's methods to suit his goals. Purdy reportedly negotiated with Barry so that visitors to www.minneapolispublicschools.com would be directed to an abortion site. The school system obtained ownership of the site on July 16, and now visitors are redirected to its official Web site at www.mpls.k12.mn.us.
A July 23, 2002 ruling against Purdy was handed down by United States District Judge Ann D. Montgomery in Minnesota District Court. Besides prohibiting Purdy from using domain names similar to famous trademarks on the site, Montgomery also told Prudy he must notify domain registrars and instruct them to take action to stop his sites from functioning. She further ordered Purdy to transfer ownership of the domain names to the proper trademark holder. Montgomery gave Purdy five days in which to file a report with the court as well as with the plaintiffs in the case, telling them that he had complied.
This case was not the first time that Purdy had come before a judge for creating a Web site with a name confusingly similar to a well-known company. In 1993, after his involvement in a train accident while working for Burlington Northern Railroad, Purdy began using the service mark "BSNF" (standing for "Bringing Safety Now First"). He created a Web site promoting railroad safety. In 1993, Burlington Northern Railroad merged with Santa Fe Railway, thereby creating BNSF Corporation. In 1996, the U.S. Patent and Trademark Office granted Purdy use of the service mark "BNSF," but two years later, a federal court in Texas ordered the patent office to cancel the registration. The Fifth Circuit affirmed the lower court's ruling, and Purdy sued in federal court to determine his rights to hold "BNSF."
A third cybersquatter, Thomas P.A. Fitch, who lives in Florida, runs a web site with a name similar to that of the Wyoming Tribune-Eagle which also takes visitors to an anti-abortion web site. According to a story in the Wyoming Tribune-Eagle, Fitch also obtained the domain from Barry. To date, no suit has been filed by the newspaper against either Fitch or Barry, although Scott Walker, vice president of marketing and operations at the newspaper, said they may try using WIPO to arbitrate a solution to the situation.