September 14, 2006 4:00 AM PDT

Behind Google's German courtroom battle

Google's free Web e-mail offering may be available for correspondence in 40 languages, but efforts at worldwide expansion using the moniker "Gmail" continue to face complications.

Last October, the search giant grabbed headlines--and miffed some British users--when it voluntarily renamed its service "Google Mail" in the United Kingdom, following an out-of-court trademark dispute.

The woes don't end there. Across western Europe, a quiet battle rages on between Google and Daniel Giersch, a German-born venture capitalist who insists he'll never relinquish his 6-year-old trademark registration of "G-mail...und die Post geht richtig ab" (translation: G-mail...and the mail goes right off).

"Google's behavior is very threatening, very aggressive and very unfaithful, and to me, it's very evil," he said in a recent telephone interview with CNET News.com from his part-time Los Angeles home.

A Hamburg, Germany, district court has already handed Giersch victories at both the preliminary and final stages of the litigation. Dismissing Google's arguments that the two names are not confusingly similar, it ordered the company earlier this year to remove all "Gmail" references from its German service and to cease handing out gmail.com aliases to users within the geographic area.

Buoyed by that success, Giersch said he plans new lawsuits to defend more recent registrations of the trademark in Switzerland, Norway and Monaco, where he hopes to expand his electronic postal delivery business that goes by the G-mail (short for "Giersch mail") name. He said he is also considering a suit in the United States based on alleged "investment losses" that the overseas disputes have wrought on the American arm of his venture capital firm. (Google has already encountered competition for the U.S. trademark.)

Google still maintains it has clear rights to use the Gmail name in Germany and in countries throughout the world where it has applied for such trademark rights. It lodged an appeal against the Hamburg district court's decision but claims it has nevertheless been abiding by the orders to restrict all people determined to be German residents to use only of googlemail.com, ever since a preliminary injunction was issued in April 2005.

"In no case do we offer or allow a user to use '@gmail.com' if the user's IP address is German," a company representative said in an e-mail interview.

Giersch
Daniel Giersch

Google has initiated its own actions against the 32-year-old Giersch in other European countries since the German litigation began, asserting it has prior rights to the Gmail name and that Giersch's registration attempts should be blocked. Giersch's lawyers said the company has filed--so far, unsuccessfully--for a cancellation of his Norwegian holding with the country's trademark office. The Google representative would confirm only that a court challenge is pending against the Swiss trademark, adding that "there are a number of cases outstanding against Giersch in Europe."

For the Mountain View, Calif.-based search market leader, the rationale is simple: "Google will take the action it deems necessary to protect our interests in Europe," the company representative said.

Google v. Giersch
Sergey Brin and Larry Page started Google with a home-brewed data center in a dorm room. For Daniel Giersch's venture, it was a backpack and a bicycle.

When he was 18, Giersch founded his first company, a same-day mail delivery service designed to offer a swifter alternative to the Deutsche Post. Within a few years, by his estimation, the company was delivering 80 percent of the mail within his hometown of Itzehoe, a town of about 30,000 residents near Hamburg.

Giersch ultimately sold control of the physical delivery operations and started on a new venture he called "hybrid mail." The idea is to combine the relative security of physical mail delivery with the speediness of e-mail. A sender's document is scanned into Giersch's system at its origin, transmitted electronically to a G-mail office in the destination city, printed out at the other end and hand-delivered to its recipient. Giersch also offers users a "secure" gmail.de address, which they can obtain only by verifying their identities with a passport or other official ID card--a far different business model from Google's Gmail, he said.

In 2000, Giersch registered "G-mail...und die Post geht richtig ab" with the German trademark office. He was still investing in and developing his hybrid mail service four years later (in Germany, one has five years after registering a trademark to commercialize its use), when he saw news reports that Google planned to launch a Web e-mail service named Gmail. Google's e-mail service debuted in April 2004.

"Knowing Google is very powerful, I liked it at the time; I Googled myself everyday. I said, 'you know what? I want to call these guys,'" Giersch said in a telephone interview. "I did my MBA, and I know what a big company is looking for, and that is international growth. I knew sooner or later they would go to Germany."

After rebuffing his initial attempts to talk over the situation, Google eventually offered to buy the German trademark rights for $250,000, Giersch said. But by then, turned off by what he deemed "arrogance" on the search giant's part, he had decided never to settle. When Google started offering the Gmail service in German in 2005, Giersch believed he had grounds under German trademark law to sue the company for infringement, so he did just that.

CONTINUED: Google "ready to talk"…
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30 comments

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that's a tough one.
Doesn't the domain make a difference?
Google uses gmail.com, Giersch uses gmail.de.
You can go to whatever.com/.org/.gov/.net and have 4 different
things, how is this any different?
If Giersch doesn't own the gmail.com domain, how does he have
a case?
Posted by fear_and_loathing (82 comments )
Reply Link Flag
Trademarks don't care about extensions...
It is still cybersquatting if you get target.net, or other trademarks. Just because it is .de does not mean it is a seperate entity. The issue is consumer confusion. Rememeber whitehouse.com vs whitehouse.gov? How many kids have gotten porn thinking they were going to email the president.
Posted by umbrae (1073 comments )
Link Flag
Not the same business.
The two businesses are not the same.

It's like the post office claiming it owned the word MAIL
Posted by disco-legend-zeke (448 comments )
Link Flag
Domain name vs. trademark
No, the domain name does not make the difference. An established trade mark superesedes domain name ownership. This has been clearly demonstrated in *many* cases now, for instance in the case of the guys who had registered cocacola.(***) and the rulings were cut and dry, that no matter whether the Coca Cola Corp ever actually wanted to use those domains did not matter, but somebody else owning and/or using such domains would infringe.
Posted by bigstinker (1 comment )
Link Flag
Gmail
Except that "G-Mail" is confusingly similar to GMail which stood for Gateway Mail and was used to send email through Bitnet before the term "internet" was ever coined.
Posted by Nchantim (10 comments )
Reply Link Flag
Come On
The guy is married to Kelly Rutherford and his life is already charmed give up the fight and let us have our email already, just be sure to get some nice publicity on your way out. Maybe Google can buy the whole company for a few million.
Posted by ccarey (18 comments )
Reply Link Flag
I hope he never gives in
Here is an enterprising young man, who has built a business through his own effort and intelligence. Now a big company comes in and tries to bully him. How can everyone see this as something he is doing wrong. He had the name first. It is his. Let google figure out another name.

I hope he never gives in.
Posted by burlap (8 comments )
Reply Link Flag
I wonder...
David v Goliath...

It would actually be nice to see all the corospondences that has passed between the two camps before judging...
Posted by stevejobless (40 comments )
Link Flag
I was on his side till ...
I read the final line of the article:

"I want this to stop, but not by giving up. I want this to stop only by shutting down Gmail."

So now this guy is trying to put himself over how many people that use Gmail!?

Sorry but if he was truly only out to protect his name he'd have the same consideration for the thousands of Gmail users he's trying to shaft. To say (even if translated poorly) that he wants Gmail shutdown shows that he has more on his agenda than simple trademark right protection.

Until he gets off his high horse I'm going to have to side with Google on this one, as much as that pains me to say (and yes I have a gmail account).

Peace.
Posted by Far Star (82 comments )
Link Flag
You go Mr. Giersch. God bless you! (nt)
(nt)
Posted by Heebee Jeebies (632 comments )
Reply Link Flag
Google should sue them all for extortion!
The domain gmail.com was created on Aug 12, 1995 by the people at garfield.com to be used as a free e-mail service similar to what hotmail was offering and to what GMail currently is. The internet archive shows what there webpage looked like in 1998 and you can see that G-Mail is present.
<a class="jive-link-external" href="http://web.archive.org/web/19981212025151/http://www.garfield.com/" target="_newWindow">http://web.archive.org/web/19981212025151/http://www.garfield.com/</a>
This predates the German man's trademark. Google approached the people at garfield and purchased the domain from then in good faith thereby transferring all rights to GMail going back to 1995 to google. All the people who filed trademark rights to GMail in the U.S. and the rest of the world after google made the announcement that they were starting the service are simply opportunist and should be charged with extortion.
Posted by AnimeFan5 (6 comments )
Reply Link Flag
Countries
We have these things called... countries... nowadays. Trademarks in one country dont usually apply to other countries. The domain could have been registered in 1899 in the US ... that has little to do with whether or not 'gmail' can be used in Germany legally.
Posted by (402 comments )
Link Flag
Names, and Times
If gmail was there first, and a small party business started the
service, they should have the ultimate decision on which Google
is asking to do, even though google was a university project, at
least I hope it was, for the sake of a search engine. Now they
are going into email services, if they have the hardware for it,
and if the people want it in that area. the DNS and netdress
elements should be completely different, google should have
something like "aname@gomail.com" short for
"aname@google.mail.com"

That would solve many problems and restore the peace.

-Alex
Posted by PixelRGB (1 comment )
Reply Link Flag
check out this Giersch job opening
<a class="jive-link-external" href="http://cc.msnscache.com/cache.aspx?q=3990171289098&#38;lang=en-US&#38;mkt=en-US&#38;FORM=CVRE2" target="_newWindow">http://cc.msnscache.com/cache.aspx?q=3990171289098&#38;lang=en-US&#38;mkt=en-US&#38;FORM=CVRE2</a>

To paraphrase:

"I need someone to do all the work for my PhD thesis for me, including raising all the money for the research, as well as act as my personal chaffeur. I expect you to have a first class wardrobe, and oh yeah, I'm only going to pay you 1500 Euros a month."

Gee, what an opportunity! This certainly calls into question the sort of person this Giersch guy is. CNET journalists ought to do more research before they write their articles.
Posted by floobydoo (1 comment )
Reply Link Flag
Re: Check out this Giersch job opening
OK, admittedly that's not good, but is his case against Google wrong?

I don't believe it is - not in the least.

Charles R. Whealton
Charles Whealton @ pleasedontspam.com
Posted by chuck_whealton (521 comments )
Link Flag
Assistant
Still for an assistant about 2000 USD a month canĀ“t be all that bad? And it also says it will be extend if they are successfull.
Posted by andrewholden (17 comments )
Link Flag
"Dont be evil"
Cha, right. Google's proving to be just as 'evil', if not more so, than most other corporations.

Give the guy a billion dollars, Google. Stop being cheap bastards. He beat you to the trademark, so either buy it from him or live with it.
Posted by (402 comments )
Reply Link Flag
evil?
Evil would be starting companies that are the same as his and running him out of business. They offered him 250k for the name, his business is a lot smaller and would definitely benefit from 250k influx of cash. HE is just being a greedy *****.
Posted by dingleberry420 (21 comments )
Link Flag
Google already bought the name once
They should counter-sue him back to the stone age.
Posted by Too Old For IT (351 comments )
Link Flag
Pardon?
"... that he's not out to block use of Gmail on a broad scale."

"... I want this to stop only by shutting down Gmail."

Pardon? Can [Giersch] please speak with a little more of a forked tongue?

Or did he just 'forget' to say *in Germany, Norway, Sweden, and Moranaco?*
Posted by hawkeyeaz1 (569 comments )
Reply Link Flag
Based on this two-faced speech
He should chuck his PhD and go to law school. Or into politics.
Posted by Too Old For IT (351 comments )
Link Flag
The Garfield site is not applicable to this case. The German business was established and running when Google tried, honorably enough, to buy it. He does not want to sell it and this is not a case of cybersquatting, though it may be a bit like Nabaoth's Vinyard. Google should just accomodate itself to not using gmail which is silly anyhow in germany. Tthe problem I have with gmail is it requires a whole extra step as opposed to Yahoo or Hotmail...or aol/aim . There is nothing sacrosanct about it having to be Google's.
Posted by dradzone (4 comments )
Reply Link Flag
 

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