How.com to play the name game on Net

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What's in a name? Say, a name like HealthNet. For some people, it signifies a worldwide communication network. For others, it's a well-known HMO in a particular state. But what happens when the same name applies to both the communication network and the HMO - and both want to use the name on the Internet?

SatelLife, a nonprofit organization based in Watertown, Mass., had been operating a service called HealthNet since 1989. The service, based on an idea by a Nobel Prize-winning physician, uses satellites and the Internet to send medical information to physicians in 135 countries via affordable technology like e-mail.

In August, SatelLife received a letter from Health Net, a California HMO. It used the URL healthnet.com for its Web site and wanted SatelLife to stop using the URL healthnet.org because it dilutes the value of the company's trademark. The HMO also pointed out that it had registered the name Health Net in 1981, which meant that it had rights to the name.

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SatelLife refused to comply, arguing that since its audience was a nonprofit global one and Health Net's "fame" was based solely in California, there was little chance of confusion. Currently, the dispute is moving toward the courts, with both sides remaining firm in their original positions.

So how will these disputes be resolved? In some cases, the resolution is straightforward. President Clinton recently signed into law legislation that makes it illegal for someone to try to steal or pirate a domain name of a well-known trademarked company and then sell it back to them for an outrageous sum.

In other cases, current trademark legislation will determine how names are allocated. For instance, if someone registers a domain name without checking to see if it has already been registered, it's likely - but not always the case - that the courts will find in favor of the original registrant.

It's the third kind of case that will be more difficult to resolve. These cases involve, as Rod Berman (one of the lawyers representing the California-based Health Net who specializes in trademark issues) puts it, "a righteous dispute over a domain name."

One such conflict involved the office-supplies company Avery Dennison. It sued a man who had registered 12,000 names for an e-mail business. Dennison argued that the e-mail owner's use of avery.com or dennison.com would infringe the company's trademark. The e-mail owner argued that he was just using people's last names and wasn't even in the same business as Dennison. While Dennison won in lower court, it ultimately lost the case in appellate court.

We're likely to see more of these third kind of cases as companies based in the United States or other industrialized nations expand to the Internet and discover that someone in another country is using a similar domain name.

Then again, this is the Internet, and sometimes other forces come into play. One example is the battle between etoy.com and etoys.com, the first an online artists' co-op in Europe, the second the online toy merchant. Although legally etoys.com probably had the "first filed" right to the name, the specter of a huge e-commerce company "threatening" a smaller, nonprofit group bothered many in the Net community. Several online activist groups singled out etoys.com for a protest, which was so effective that etoys.com essentially backed off.

What can you do to protect yourself? Do your homework. If you think you've got a really cool name for a Web site, do the leg work and make sure it's not being used by someone else. Most states or provinces charge between $35 and $75 for a name check. If you spend the money now, you may not have to spend a lot more later.

*You can e-mail Tom Regan at: Tom@csmonitor.com

(c) Copyright 2000. The Christian Science Publishing Society

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