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By an unexpected twist of fate, Lexis, Inc., a pioneer and leader in the world of electronic legal publishing, may be stepping on the toes of state bar associations across the country. As part of a legal settlement, Lexis now owns the state bar dot.com names for 23 states — and may have positioned itself to make interesting new domain name law, to add to its vast database of court cases. Lexis could simply donate the various domain names to their respective state bar groups as a supreme act of public relations goodwill. But if it chooses to hang on to the names, it may end up having to defend the motives of the company that just weeks ago was its despised adversary. Currently, the Web address ctbar.com has no connection with the Connecticut Bar Association. Instead, a polite disclaimer says: “This site is not affiliated with any state bar or state bar association.” It offers free legal research materials and “information of interest to the bar” with a link to the site for Jurisline.com. That’s the company founded by two Ivy League law grads who attempted — with Icarus-like results — to test whether the federal copyright law would trump a state contract, when the subject matter was originally copyright-free. Jurisline founders Lee Eichen and Kendrick Chow put a collection of Lexis CD-ROM law disks onto a free Web site in an entrepreneurial experiment Lexis considered wholesale cyber-piracy. In its settlement of dual state and federal lawsuits against the law firm of anti-Microsoft warrior David Boies, Lexis was represented by Stephen Rackow Kaye, of New York’s Proskauer Rose. The digital law giant won 48 domain names, including lawforfree.com and the dot.com names joining the official two-letter state abbreviation and the word “bar” for Pennsylvania, Iowa, Kansas, Kentucky, Maine, Minnesota, Mississippi, Montana, North Dakota, New Hampshire, New Mexico, Oklahoma, Oregon, South Carolina, South Dakota, Tennessee, Utah, Vermont, Wisconsin, West Virginia and Wyoming. It also includes the less trendy dot-org names for AK, AL, AR, HI, ID, LA, NE, RI and the dot-net names for CA, CO, FL, IL, MA, MD, NJ, NV, NY, OH, TX, VA and WA. In theory, the dot-org names are for non-commercial organizations and the dot-net names are for networks. INTENT AND QUALIFICATION TEST Peter Costas, a partner in the Hartford offices of Pepe & Hazard, is an intellectual property attorney and a former president of the CBA. He said the 1999 federal anticybersquatting act requires the party opposing a purported “squatter” to prove a level of wrongful intent on the part of the domain name holder. If the name is legitimately a name used by the individual or business, a giant corporation would not be able to wrest it from a smaller company with the same name. “Aetna, Inc. wouldn’t be able to take aetna.com from, say, the Aetna Diner, if the diner got it first,” said Costas. The anticybersquatting amendments to the Lanham Act provide a list of bad-faith elements, which must be shown to some degree to invoke the anticybersquatting remedy from a pure speculator, he says. The key test is the intentions and qualifications of the person obtaining the domain name. In the Jurisline case, an issue would be whether Lexis stands in the position of Jurisline for anticybersquatting purposes, or whether Lexis’ own rationale for having a statebar.com name would be relevant. “This is a case of first impression, as far as I know. I know of no case where the motivation of the subsequent owner might be at issue,” says Costas.

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