Decisions in Domain Name Dispute Cases Demonstrate Inconsistencies According to Law Offices of Stephen H. Sturgeon & Associates, PC

WASHINGTON--(BUSINESS WIRE)--Nov. 19, 2001--Two recent decisions involving the domain names "rentright.com" and "datatrail.com" show that arbitrators utilize different legal analyses that result in contradictory holdings in domain name dispute proceedings, according to Stephen H. Sturgeon, a Washington, DC lawyer who represented the defendants in both of the disputes. "The decisions demonstrate some inconsistencies in the decision-making process. In both cases we submitted identical legal arguments regarding the issue of whether the other parties had trademark rights in the names. The decisions in the two cases demonstrate that the arbitrators used different considerations in evaluating the issues and in making their decisions. Although my clients won in both of the cases, the decisions on the trademark issue were contradictory."

In a recent presentation before the annual meeting of the American Intellectual Property Law Association, Mr. Sturgeon described the inconsistencies in domain name dispute decisions as being frequent and unfortunate. He pointed out that "initiatives are being undertaken to modify the domain name dispute resolution process to bring about more uniformity and predictability."

In the "rentright.com" case the arbitrator determined that the complainant did not have rights to the disputed name since a secondary meaning had not been proven - despite the fact that there were more than 7,000 users of its RentRight product as a result of extensive advertising since 1997. The arbitrator stated that "(t)o have protectable common law trademark rights, Complainant must prove secondary meaning or inherent distinction."

In the second case of "datatrail.com", the arbitrator decided that the complainant did have protectable rights in the word "datatrail" although the word had only been used in a limited capacity for three months. The decision did not make any mention of the issue of secondary meaning.

The full text of the decisions can be viewed at

http://www.arbforum.com/domains/decisions/99675.htm

http://www.arbforum.com/domains/decisions/99767.htm

The website for Stephen H. Sturgeon, attorney for the successful domain name owners is http://www.domainnamedisputelawyers.com/

The website of ICANN, the governing body of the Internet is http://www.icann.org/

    CONTACT: Law Offices of Stephen H. Sturgeon & Associates, PC
             Stephen H. Sturgeon, Esquire, 202/393-8033