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Type in the Web address www.atlantajournal.com and you will be taken to the Atlanta Journal-Constitution’s Web site. But type in the same name with the extension dot-net and the page tells you the Web site is under construction. Cyber surfers will find that to be the case for numerous publications nationwide, including the Detroit News, and for Florida publications such as the Boca Raton News, Florida Trend and the Gainesville Sun. What they also will find is that those titles, along with many others, have been registered by one person — Robert Kerrigan. In the past year or so Kerrigan, a Pensacola, Fla., plaintiffs’ lawyer, has gobbled up more than 100 Internet domain names. They range from the generic — Privatemessages.org — to the specific � Conniemack.org. Precisely why Kerrigan, of Kerrigan Estess Rankin & McLeod has, registered the names is unclear. In a brief interview, he alluded to developing the Web sites as some kind of public forum that would allow those who have had stories written about them to tell their side. But Kerrigan declined to be more specific saying: “It’s none of your business what we are trying to do.” Online use of trademarks that belong to others isn’t new. The practice, called cybersquatting, has been around ever since the Internet became a favored vehicle of commerce in the mid ’90s. What is new about cybersquatting, however, is that it’s illegal. In November 1999, President Clinton signed into law the Anti-Cybersquatting Consumer Protection Act. The law allows a trademark owner to sue any person who registers, traffics in or uses a domain name that is identical to or confusingly similar to that owner’s trademark and who has a bad-faith intent to profit from that trademark. It allows those affected to seek actual or statutory damages of up to $100,000 per name, plus attorney fees as well as forfeiture of the name. The law applies to domain names that were registered before and after it was enacted. There are allowances, of course, such as the fair use doctrine, which permits those other than the holder of the copyright or trademark to use the name in a “reasonable manner” without consent. But in his case, Kerrigan “can be exposing himself to some serious risk by using registered trademarks,” says James Gale, a patent and trademark attorney with Feldman Gale & Weber in Miami. Among those challenging Kerrigan is Diario Las Americas, a 47-year-old Spanish-language newspaper in Miami. Attorney Angel Castillo Jr., of counsel to Morgan Lewis & Bockius, sent Kerrigan a letter in April advising him to “cease and desist” from using the paper’s name. He had registered diariolasamericas.net. Kerrigan has not responded to the demand. Castillo said he found that Kerrigan not only had registered his client’s trademarked name, but the names of at least 19 other newspapers. In addition, Kerrigan’s domains incorporate the names of sports figures, including the University of Florida’s head football coach (Stevespurrier.net); auto makers (chryslerproblems.com); and colleges (Notredameboosters.com). Each of the Web sites is said to be “under construction.” Often, those whose names fall victim to cybersquatters are unaware that their trademark is being used by another. Thomas Monaghan, director of web administration for the University of Notre Dame, was surprised to learn his school’s name had been registered by Kerrigan. “My role is to help identify if our name is being used on-line,” said Monaghan. “I will send an e-mail to our general counsel and our licensing group. They will have to determine if it becomes an issue or not.” Cox Interactive Media, which registered atlantajournal.com, was unaware that Kerrigan had registered the name with a dot-net suffix. A spokesperson for the company said they would look into it, but declined to comment. Media conglomerate Cox Enterprises has trademarked the name Atlanta Journal. Although there is no indication Kerrigan has ever attempted to sell any of the names he has registered, attorneys say he still can be considered a cybersquatter by virtue of having registered trademarked names. “Suppose I have the formula for Coca-Cola and you come along and steal it from me and put it into a safety deposit box. You are not using it, but you are depriving me of the right to use it, to own it, to market it and to capitalize on it, and it’s my property and not yours,” said Gale. The problem begins at the time of registration. The companies that do the registering don’t screen names, says Cheryl Regan, a spokeswoman for Network Solutions. “It’s first come, first served. It would be inappropriate for us to make judgments on who can register domain names. It’s up to the courts and trademark holders to defend their marks.” Regan said. Logistics is another problem. There are some 14 million registered domain names, five million of them registered in the first quarter of 2000 alone, said Regan. Disputes can either be handled in the courts or by mediators. On Jan. 1, the Uniform Domain Name Dispute Resolution Policy was adopted by the Internet Corporation for Assigned Names and Numbers (ICANN), which had been picked by the Clinton administration to take over management of the Internet’s domain name system. The new policy applies to all state and common law trademarks as well as to nationally registered trademarks. It allows complainants to include any domain name that is either identical to or confusingly similar to their trademark. Kerrigan, for example, registered Idahopatatoes.com, dot-net and dot-org. spelling potatoes with an “a” instead of an “o” Spelled correctly, the site belongs to the Idaho Potato Commission. “That’s a real no-no. Typosquatting is just as punishable,” said Scott Austin, an intellectual property attorney at Bilzen Sumberg Dunn Price & Axelrod in Miami. It falls under the “confusingly similar” category. “It goes to the person’s intent to divert consumers.” Other names Kerrigan has registered misspelled include Bobgrahm.com. Spelled correctly, the Web site belongs not to U.S. Sen. Bob Graham, but to a real estate broker by the name of Bob Graham in Jackson Hole, Wyo. Kerrigan registered 1700pennsylvaniaavenue.com — the White House is at 1600 Pennsylvania Ave. In an e-mail response to questions, Kerrigan downplayed the relevance of his registering misspelled domain names. “If we are to communicate with purpose,” he wrote, “you must tell me why a potatoe [his spelling] is important to the story or relevant for anything of interest to anyone but me.” Jose Rojas of Holland & Knight in Miami, a former chairman of the computer law committee of the Florida Bar, says that when he first came upon cybersquatters who were purposely misspelling names, he was baffled. “I couldn’t understand why they were doing this,” he said. “It turns out that in the industry of adult content there is a payment system where it’s paid by hits on the site.” So if someone is trying to go to a legitimate site and strikes the wrong letter on their keyboard and comes upon a porn site, it counts as a hit for that site, regardless of whether they stay or leave. (Note: None of the misspelled sites registered by Kerrigan are being used as adult sites.) Should the Idaho Potato Commission or any other organization choose to challenge Kerrigan’s use of their name, there are several organizations to which they can turn: The National Arbitration Forum in Minneapolis, Disputes.org/eResolution.ca Consortium in Montreal, Quebec, and the World Intellectual Property Organization Arbitration and Mediation Center (WIPO) based in Geneva, Switzerland. All are approved to hear disputes. WIPO, for example, reports 242 domain disputes since the policy went into effect six months ago. Of them, 197 resulted in a transfer to their rightful owner, 45 were denied. The National Arbitration Forum reports 203 domain names transferred and 47 denials. All told, ICANN reports 637 transfers, 144 denials and 641 pending cases. Examples of names that were transferred include chicago-tribune.net. WIPO ruled that “The Chicago Tribune is the name of a well-known daily newspaper and is instantly recognizable across the United States.” It also found that the person who registered the name “had no rights to or legitimate interests in respect of the domain name at issue.” In some instances a cybersquatter has prevailed, generally when it’s clear that the site is in no way connected to the company. Rojas gives the example of Bally Fitness Centers, which lost a lawsuit against a man who created ballysucks.com. A California judge dismissed Bally’s trademark infringement suit ruling that the site was clearly anti-Bally and could not possibly be construed as connected to the company. “If it’s obvious it’s a parody, then it’s fair use,” Rojas said. “If someone goes to Ballysucks.com, they know it’s not the Ballys site.”

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