Thousand Oaks Firm Fighting to Keep Internet Domain Name
In a prelude to what could be the first cyber-infringement trial ever, a Thousand Oaks computerized legal information and referral service has lost the latest round in its fight to retain its Internet name, but company leaders vow to continue the battle.
The Ventura County company, 25th Century Internet Services, which operates as 25th Century Internet Publishers, last month was prohibited by a U.S. District Court in Los Angeles from continuing to use juris.com as its Internet domain name, pending trial in July.
Juris Inc., a Tennessee-based manufacturer of law-related software, had sought a preliminary injunction against 25th Century, claiming its use of juris.com infringed upon the software company’s trademarked business name.
At issue is whether there is a likelihood of confusion between the 25th Century domain name and Juris Inc.’s business trademark.
“The position we’ve taken is that there is no confusion because ‘juris’ is a generic term. Anyone can use it to mean law,” said Lyn Woodward, the Thousand Oaks attorney representing 25th Century.
The local company is trying to raise about $100,000 to take its case to trial.
“[25th Century] has been using ‘juris’ since early 1994,” Woodward said. “In Internet domain time, that was quite early. Juris Inc. would like the name and in essence is using trademark law to see if they can get it.”
M. Thomas Collins, president of Juris Inc., said clients and prospective clients searching the Internet expect to find his business under the juris.com name.
“We have a very prominent position in the industry, we advertise very heavily and we recognize that a trademark is something we have to defend,” Collins said. “We would proceed against anyone addressing our market and using the Juris trademark, if they are using it as a product name, as part of their business name, if they are using it as a logo, or as in this case, if they are using it as a domain name.”
The dispute surfaced last summer when Juris Inc. tried to register juris.com with the InterNIC Registration Service.
InterNIC is operated by Network Solutions Inc., a private company in Virginia established in cooperation with the federal National Science Foundation to maintain a registry of domain names. There are currently about 340,000 names on the registry.
After Juris Inc. was informed that juris.com was already being used, the company alleged trademark infringement and asked Network Solutions to suspend use of the domain name until the dispute was settled. Network Solutions, however, allowed 25th Century to continue using the name pending resolution.
Last January, 25th Century sued Juris Inc., trying to establish its rights to continue using the name indefinitely. Part of that suit involved attempting to have Juris Inc.’s trademark registration canceled. Juris Inc. has been trademarked since 1986.
In April, Juris Inc. filed in U.S. District Court for a preliminary injunction citing trademark infringement. Late last month, Chief Judge W. Matthew Byrne ruled in favor of Juris Inc., preventing 25th Century from using juris.com.
Until the dispute is resolved, 25th Century is using the domain name thelegalcafe.com.
“It was the first court to apply trademark principles to domain disputes,” said Morgan Tovey, a partner in the Oakland law firm of Crosby, Heafey, Roach & May, which is representing Juris Inc.
“There are two schools of thought about what a domain name is,” Tovey said. “One is that it is nothing more than an address and the other is that it is something with which a consumer can identify goods and services with the source of those goods and services, and in that case the domain name serves as a trademark.”
The Tennessee software company currently holds the Internet name jurisinc.com and ultimately, said company officials, would like to take over the name juris.com.
Lonce LaMon, president of 25th Century, formerly known as The Comp Examiner Agency, said the allegation of infringement is more a case of jealousy.
“A domain is like a place, a piece of real estate. A cyberspace domain corresponds with a real estate address and this has been our address for two years,” LaMon said. “We don’t have a trademark issue here. They just want to steal our name.”
Juris.com was established initially as an in-house Internet bulletin board for firms at the law building at 101 Moody Court in Thousand Oaks. LaMon said the bulletin board now has about 2,000 users seeking general legal information covering areas such as workers’ compensation and legal legislation.
“We’re not causing any confusion,” LaMon said. “They market legal business software and we market information. We don’t have anything to do with software.”
LaMon said her company’s only involvement with computer software has been to include a start-up software disk for new subscribers.
David Graves, Internet business manager for Network Solutions, said domain names are registered on a first-come, first-served basis. In a number of cases, Graves said, a domain name request has been the same as a federally registered trademark.
“The basis of dispute is who has the right to the domain name. It’s a dilemma that exists because this is a new frontier of law and there is no legislation or case law that addresses it,” Graves said. “I think it was inevitable that we would see an increase in the number of cases where there is alleged infringement.”
Last July, Network Solutions established a Domain Name Dispute Policy for such instances.
Under the policy, a company facing trademark-infringement allegations can transfer the domain name to the trademark holder; register a different domain name and use both for a 90-day transition period, after which the original name goes on hold or is transferred to the trademark holder; or put the domain name on hold until the case is arbitrated.
Since the policy went into effect, Graves said, there have been about 500 alleged infringements.
“But I’m aware of less than a dozen cases where a lawsuit has been filed,” he said. “And there have been no cases where the case has gone the full route through the courts.”
