November 10, 1997 12:55 PM PST
Microsoft in trademark dispute
Attorneys for the software giant sent a letter dated November 5 instructing the owners of Windows.net to stop using the domain name, even though the site has existed since 1995.
Robert Boyle, who founded one of the first Internet services based on Windows NT, said he encountered so much trouble trying to configure the operating system to run on the Net that he started an informational site to help others trying to do the same thing.
"While we appreciate your enthusiasm for Microsoft's Windows products, Garden Networks' use of windows.net as a domain name is likely to cause confusion with our client's Windows trademark and therefore dilutes and infringes our client's rights," the letter states.
Boyle said the demand came as a slap in the face.
"As far as the NT community is concerned, I think what they're doing is a mistake," said Boyle, founder of Garden Networks in Newton, New Jersey. "I provide a valuable service, and we got a lot of people to use NT for Internet servers before Microsoft was actually doing anything" with the Internet.
Boyle said Windows.net is a nonprofit endeavor and is entirely separate from Garden Networks. He added that he has removed all the information from the former site while he gets legal advice and attempts to negotiate with Microsoft.
Microsoft's action in policing its Windows trademark comes two months after other Web sites using "NT" in their domain names reported receiving similar notices. (See related story)
In addition to demanding that Boyle abandon the rights to Windows.net, Microsoft also is requiring that he stop using three of its logos on the site, even though Boyle said he registered online to use them more than a year ago.
Representatives from Microsoft were not immediately available for comment.
Microsoft appears to be taking advantage of a change in federal law that makes it easier for trademark holders to sue parties that dilute or tarnish their marks. But attorneys disagreed whether Microsoft's inaction for more than two years would hurt its chances of success.
"My initial view is that this statute creates a new means of attacking these uses," said Robert Laurenson, a trademark attorney at Lyon & Lyon in La Jolla, California. "Since the statute wasn't around before, Microsoft would argue that they're not guilty of improper delay."
But Neil Smith, an intellectual property attorney at Limbach & Limbach in San Francisco, said a number of cases have held that the new law is not retroactive, meaning that if the domain name existed before the law took effect in early 1996, then the law cannot be used against the domain name.
In any event, he added, the case law surrounding the new law is not yet cast in stone, and Microsoft probably has other ammunition with which to attack Boyle.