eToys.com, the US internet toy retailer sued a Swiss art group with
the domain name eToy.com for trade mark infringement. But eToy.com
had its domain name first. After a long battle in the courts and on
the web, the case has been dropped.
A long running battle between US based eToys, with the domain name
etoys.com and the Swiss based eToy, with the domain name etoy.com,
appears to have reached a conclusion.
eToys, the on-line toy retailer which is one of the largest
e-commerce companies in the world, went to court in the US to force
eToy to hand over their domain name to the toy retailer. On the
face of it, it may sound like a classic case of cybersquatting, the
practice of registering a name in the knowledge that someone else
will want it, usually with the intention of holding them to
ransom.
However, etoy.com was registered as a domain name some two years
before the US company registered its domain name. The Swiss group
of a dozen or so members, create what have been described as
anti-corporate internet art projects. They once won a prestigious
electronic arts award for a work which fooled search engines into
sending visitors to their site.
eToy were approached by eToys with offers to sell the name for
over $500,000. eToy declined and eToys took them to court instead.
eToys said it was concerned with what it described as “offensive
material” at the eToy site which would upset its customers if they
entered the incorrect URL. One example pointed to was a photo of
the Oklahoma City bomb site accompanied by the headline, ‘Such work
needs a lot of training.’ eToy said this example was out of context
– site visitors who understood what eToy represented would not take
it seriously.
eToys accused eToy of trade mark infringement, trade mark
dilution and unfair competition. The US company had registered a
trade mark in the US in 1997. eToy counterclaimed, arguing that
eToy, not eToys, should be entitled to have a trade mark in the US
and that the eToys mark should be invalid because eToy were using
the name first.
On 29th November 1999, a Los Angeles court granted the US
company an injunction which ordered eToy to stop using the domain
name or risk fines of up to $10,000 per day. Network Solutions took
the side of the US company and blocked e-mail services to eToy,
although this was not ordered by the court. In doing so, Network
Solutions were running a risk that eToy would sue them if blocking
the e-mail could amount to a breach of the contract between eToy
and Network Solutions.
Many saw this as commercial bullying of the ‘traditional’
internet community and an uprising followed, led by a hacker group
known as ®tmark, pronounced ‘artmark’. The hackers tried to
interfere with eToys’ traffic count and server operations, numerous
other web sites were launched which supported eToy and a public
protest was staged in New York, designed to drive down the eToys
share price. Many others took the less extreme approach of
e-mailing eToys to express their views.
eToys finally dropped the case against the Swiss group and paid
them $40,000 towards legal expenses. Accordingly, eToy dropped the
counterclaim. Whether the eToys retreat was due to fears of the
counterclaim, bad publicity or hacker damage is unclear. It appears
that this very unusual internet case has reached its conclusion.
The etoy site is worth visiting to see it's celebrations.
