February 1, 2000 3:55 PM PST
Coca-Cola objects to fan site domain
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Web site administrator Randy Martin of Maxistore.net said that the site originally was founded in a "goodwill gesture" as a place for Coca-Cola fans to display their collections of vintage Coca-Cola merchandise.
But on Jan. 5, Coca-Cola sent Maxistore a cease-and-desist letter asking the site to discontinue using the Coca-Cola trademark and to either assign the domain name to Coca-Cola or abandon the name immediately.
"I was completely shocked," Martin said in an interview. "Never in a million years did I dream they would be offended by a site that said great things about their products." He added that no merchandise was exchanged on the site and that no one was making money off the project.
The Coca-Cola dispute follows several others that have arisen since Congress passed anti-cybersquatting legislation in November that is designed to protect businesses from those who register company trademarks as Internet addresses in "bad faith" and try to sell them for profit. The cybersquatting law carves out exceptions for legitimate uses, however, such as a fan club that refers to an organization but does not use the trademarked name for profit.
Last week, online retailer eToys settled a domain name dispute with art group etoy--a case that critics of the cybersquatting law had watched closely, as they feared that the law would not do enough to protect small-business owners. In that case, the judge ruled in favor of the lesser-known company. Other recent disputes have involved the publishers of Teen Magazine, sports Web site Quokka.com and automaker Volkswagen of America.
A spokeswoman for Coca-Cola said the company sent the letter to Maxistore because any time it finds a Web site that uses the name "cocacola" in its domain, it must contact the site to protect its trademark if it doesn't want to lose the rights to it.
"We often have fan sites by people who like Coca-Cola; we don't have any problem with that," Kari Bjorhus, a Coca-Cola spokeswoman, said in an interview. But she said that the problem wasn't so much the content of the site as the fact that the name "cocacola" is part of the domain.
"If people see our trademark (in the domain), they may think we're responsible, and we can't monitor sites every day to see what could be on them," Bjorhus said. "If people have a negative experience going to the site...they might attribute that to us."
In Martin's letter to Coca-Cola, he states that he was careful to display on each page of the site a disclaimer that only genuine Coca-Cola merchandise was depicted and that the site did not claim ownership of the Coca-Cola name.
But Bjorhus said that it doesn't matter whether people have disclaimers on their sites, because it's not the content displayed but the domain name that's at issue.
And now, instead of a Coca-Cola fan site, Martin has turned Vintagecocacola into a discussion forum for domain name issues that includes a link to the Domain Name Rights Coalition and his written response to the cease-and-desist letter.
Bjorhus said the company isn't sure what steps it will take next, although it "is still concerned that Maxistore.net appears to be using the site to market its (Web) services."
"Certainly we don't have an interest in getting into some kind of protracted (situation)," she said, "but most people looking at the situation would understand that the company needs to protect its trademark."
Sally Abel, a partner with law firm Fenwick & West, said that under federal anti-dilution law, famous trademarks are protected from use by others--even when they're used in connection with unrelated goods. But for the Coca-Colas of the world to be protected by this law, they are expected to show that they've been actively policing use of their trademarks.
Thus, the question to ask is, Where do trademark owners' policing obligations stop?
"This sort of case is a public relations nightmare for Coca-Cola, as it is for many trademark owners," Abel said today. "They are obligated to protect their trademarks under the law, but they obviously don't want to upset their loyal fans, either.
"Coca-Cola made a choice that it's willing to suffer negative press in the short term for confidence that it has done everything it can to ensure its trademark rights are protected in the long term," she added.
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