, December 29, 1998, REDMOND, WA — Microsoft announced today that it filed suit against trademark domain name pirates for trademark infringement arising out of their registration, use and attempts to sell various Internet domain names which are identical or similar to Microsoft’s trademarks and product names. The case, filed last week, alleges that the defendants, doing business under the names
“TrademarkDomains.com,”
and
“TexasRGV.com,”
are infringing Microsoft’s trademark rights, and are confusing or enabling others to confuse Internet users looking for Microsoft’s websites. Microsoft is seeking a preliminary and permanent injunction against the defendants’ continued infringement of its trademarks.
Microsoft attempted to resolve the dispute without court intervention, but was forced to take legal action when the TrademarkDomains.com and TexasRGV.com refused repeated requests that they stop their infringing activities. The defendants instead tried to blackmail Microsoft by charging them a large fee to transfer the domain names to the company.
“We’ve worked very hard over the past 25 years so that the Microsoft trademark means something to consumers, so of course we are very concerned when these trademarks are used in an improper way to confuse customers,”
said Steve Aeschbacher, Senior Corporate Attorney at Microsoft.
“Microsoft is one of the most well-known and admired companies in the world. No one, on the Internet or off, should be permitted to benefit from using Microsoft’s trademarks to mislead the public. That type of behavior is not permitted under the law,”
Aeschbacher continued.
“Trademarks are vital pieces of intellectual property and are critical to the clear communication of information to individual consumers, businesses and others regarding a product’s source, quality, and compatibility. Trademarks must be protected on the Internet as well as in the rest of the world for all companies to ensure that consumers and the market place are not confused by the false or misleading use of domain names by”
cybersquatters
“who ride the coattails of others’ goodwill.”
Aeschbacher pointed out that Microsoft has a vigorous program in place to defend its trademark rights, and will seek the assistance of the courts as necessary to enforce those rights.
“The courts are applying traditional trademark principles to Internet domain names. The case law on this subject is clear,”
Aeschbacher noted.
“We believe that once the Court has had a chance to review the facts, it will agree that the defendant’s registration, offer to sell, and use of these domain names is deliberately designed to be confusing to consumers, and is a violation of federal and state trademark law. We look forward to presenting our preliminary injunction motion to the Court.”
TrademarkDomains.com and TexasRGV.com have registered at least 10 known domain names that infringe Microsoft’s trademark rights: microsoftwindows.com; microsoftoffice.com; microsoftpress.com; microsoftkids.com; microsoftfrontpage.com; mskids.com; mspublisher.com; windows5.com; wwwindows.com; and windowsfiles.com
The defendants have also registered and are offering for sale domain names including many other well-known names and trademarks such as: AirborneExpress.com; AlamoRentaCar.com; AmericanExpressOptima.com; AssociatedPress.com; BellTelephone.com; Chrysler-Plymouth.com; CitibankMasterCard.com; HewlettPackards.com; Hollywood-Video.com; KiwanisClub.com; Motorolas.com; Olympics.com; Packard-Bell.com; TravelersInsurance.com; and Wall-Mart.com.
The Internet’s growth has provided many opportunities, but also significant challenges. One of the challenges is domain name
“pirates.”
Domain name pirates register and/or use other companies’ names or trademarks (or close misspellings of those names) as domain names on the Internet, seeking to divert online customers looking for the trademark owner’s actual Internet
“web site.”
This tactic has been made popular by many pornographic web sites, which generate substantial revenues by misdirecting Internet traffic to their sites and which often include advertisements for and Internet links to yet other pornographic sites.
Other similar Internet companies stockpile domain names comprised of other companies’ trademarks or corporate names and attempt to sell them to others. Such activities are aimed not only at web site operators who can use the domain names to profit from misdirected Internet traffic, but also to the owners of the trademarks in the hopes that they will be forced
“buy back”
their own names. This practice is often referred to as
“domain name piracy”
or
“cybersquatting.”
The case was filed in the U.S. District Court for the Southern District of Texas, Houston Division last week.
CONTACT: Adam Sohn, Microsoft (425) 882-8080
