July 17, 2002

Open Group's controversial dispute over UNIX domains

- by Tina Gasperson -
The Open Group will take over the unix.org top level domain on Friday, if
the current owner, Marshall Sorenson, does not file suit by then to stop the
decision by World Intellectual Property Organization (WIPO) panelist Ross
Carson. Unix.net will suffer the same fate -- but Unix.com might not be parted from its rightful owner quite so easily.
The Open Group, formerly known as X/Open, owns the UNIX trademark, which was
transferred to it in 1993 by Novell. Because of this, The Open Group believes it
owns the word UNIX. Recently, the company decided to enforce its rights against
the three UNIX top level domains: unix.com, unix.org, and unix.net, filing
simultaneous complaints with WIPO on April 22, 2002. In these complaints, The
Open Group states that the disputed domain names, which are each owned by
different entities, are identical to its own "UNIX" trademark, and that the
domains have been registered in "bad faith."

Explanation of the process

What's bad faith? Gregory Golla, an attorney who handles domain name
disputes for the Merchant-Gould law firm, says there are four things that
determine bad faith in domain name registration. The number one
clue that a domain has been taken out in bad faith is if it has been purchased
solely for the purpose of reselling that name and making a profit. "Usually
that's shown through offers for sale or unreasonable offers for sale," says
Golla. "There's case law and such that goes both ways on reselling domains, but
obtaining a domain name just to sell it to the owner of the mark will show
bad faith."

The next determining factor in bad faith arguments is whether the domain was
registered just to keep a certain company from obtaining a domain that should
rightfully belong to it. However, "you need to be able to show a pattern of such
conduct," says Golla. "If somebody is continually registering a bunch of
different companies' marks," for example.

Third, if the intent is to destroy a competitor's business by confusing
potential customers into thinking they are actually at that competitor's site,
that's bad faith. The fourth and last factor is commercial gain. If a registrant
is making money off of someone else's trademark, that usually doesn't sit well
with the panelists who make decisions in domain dispute cases.

Tom D'Alleva, v.p. of
marketing for BulkRegister, says he runs into these issues a lot. "From my
perspective [bad faith domain disputes] appear inconsistent. One of the reasons
is because it goes to an arbitrator and the decisions come out all kinds of
different ways." However, statistically, trademark holders do win out more often
then non trademark holders, D'Alleva says.

The process for establishing a domain name dispute is simple. The Internet
for Assigned Names and Numbers (ICANN) set up the Uniform Domain-Name
Dispute-Resolution Policy (UDRP) in 1999 for the purpose of resolving disputes
over domains. If a trademark holder (complainant) feels that a domain should
belong to it, but another party has registered the name, it can appeal to any of
several arbiters approved by ICANN, providing the nature of the complaint and
information about the "respondent" (the party the complaint is against). A copy
of the information is sent to the respondent, and the complainant pays a fee of
about $1,500. A panelist, usually an attorney familiar with intellectual
property law, is assigned to the case, examines the evidence, and makes a
decision. In some cases, a team of three panelists deliberates -- usually when
either the complainant or the respondent requests it and pays the extra costs.

Why is the Open Group trying to take these domains?

The Open Group used to be known as
X/Open. If you take a look at UNIX products in HP or Sun or IBM, you'll find a
trademark notice that credits X/Open. The Open Group says its vision is
"Boundaryless Information Flow achieved through global interoperability in a
secure, reliable and timely manner." The
company has this to say about its trademarks:

Trademarks are important because they:

* identify and distinguish a product or service
* serve as an assurance of consistency of the quality of a product
* assist in advertising and promoting a service or product.

Unlike rights derived from patents and copyrights, which provide protection for
only a limited number of years, Trademark rights can last forever. Trademark
rights can also be lost forever.

Within The Open Group's documentation regarding its trademarks, there are
guidelines for using the UNIX trademark -- for instance, "setting apart" the term
by using capital letters, leading capitals, italics, quotes, or boldface type.
These rules apply to any use of the term, according to The Open Group, including
editorial use. For example, if this article printed the term unix, it would be
in violation of The Open Group's trademark, according to that company. Unless,
of course, NewsForge was referring to the Unix brand of food container from
Japan, or the Unix fire extinguisher, or even Unix modular shelving, or Unix
pens, Unix drying racks, Unix nitro-based anti-fog thinner, Unix fungicide, Unix
TV antenna, and so forth.

The Open Group believes it owns the word UNIX and therefore believes it should
rightfully own the unix domains.

The current owners of the unix domains

Marshall Sorenson owns unix.org. A Canadian attorney
to arbitrate this case decided to take that domain away from
Sorenson and give it to The Open Group. Sorenson has until Friday to file a counter
suit, but says he hasn't the money to fight the decision. He's been a UNIX
systems administrator for about six years. He bought the unix.org domain from
his employer, who got it from an auction on Yahoo! for $5,000. Sorenson used
some of his retirement account money to buy unix.org with the intention of
setting up an editorial site. He ended up going into business for himself,
landing a lot of consulting jobs, and the Web site project hadn't materialized
yet. "I dropped it for a while," says Sorenson. "I had no idea that just by not
using it -- it was construed as bad faith."

Ironically, a misunderstanding about the name of Sorenson's consulting firm,
Byterage, may have contributed to the loss of the unix.org domain. While there
is no functional site at byterage.com, which he owns, if you type "byterage"
into a search engine like google.com, the first several listings are for a computer cracker dude who goes by the name
of byterage. Sorenson says that the panelist apparently went looking for
information about him and assumed Sorenson was the cracker "byterage." Indeed,
the first link in the google search pulls up a typical cracker warez site. The text
of the panelist's decision states, "The home page of Respondent's
corporation Byterage, Inc. includes many commercial links including
astalavista.box.sk having links to a casino." NewsForge's research shows that
this is a blatant error by the attorney assigned to the case. If you look at the
first page in the google search, scrolling down there is a banner ad for
astalavista -- and it is apparent the panelist assumed this cracker site belonged
to Sorenson. Because of this, the panelist made the decision that the domain was registered in bad faith.

The owner(s) of unix.net never responded to
the charges, and the same panelist ordered the domain transferred to The Open
Group. In the decision text, NewsForge finds another error. The panelist states "The word UNIX
is an invented or created word used in relation to an open computer system."
This is wrong because, as noted above, Unix is used as a brand name for many
products -- it was not uniquely created to describe an operating system. In this case, the panelist found that "on a balance of probabilities ... the Respondent has no rights or legitimate interest in the domain name in dispute."

The case against unix.com is still being
disputed. Tim Bass, who owns the Silk Road
consulting firm
, registered the domain in 1993 and still owns it. X/Open has
been around for a long time, but two things are probably working in Bass' favor
right now: the length of time he's owned the domain -- registered well before
X/Open was assigned any trademark rights for UNIX -- and the fact that the site
unix.com is an active forum for discussion of publications dealing with UNIX and
Linux. These factors should make it very difficult for The Open Group to prove the domain was registered in bad faith. Bass' lawyer advised him not to talk about the pending decision.

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