Red Hot Battles For Cool Cyber Names

Ray Van Eng (09/10/96)

What's in a name? Well, a symbol and a recognition of an intagible quality, and in the case of Harrods, that would most certainly translate into status, class and expensive good taste.

So Harrods, the British luxury department stores, is running all over the place these days trying to keep its name within its own domain (on the Internet and otherwise) for its own exclusive use. Who could blame them when you have a name that has the drawing power to entice the rich and powerful to fly thousands of miles across the Atlantic just for a weekend of shopping at your premises.

With the advent of the global Internet, Harrods is very busy snuffing out other people's desires to register and use the domain name "harrods.com" as an Internet address.

This has been the first time in the UK for a company trying to protect its brand name on the information superhighway. Previously, Harrods has taken action to stop its name from being used on the Internet and has resulted in an injunction prohibiting US companies from using the Harrods name as a domain address.

Back in the US, Yahoo, a high profile Internet search company is facing infringement charges. In this case, the plaintiff is a Texas bakery shop, the Miss King's Kitchens, who has been using the Yahoo name since 1980 fror their cookery products and has the name trademarked in 1989, long before Yahoo, the search engine began its existence in cyberspace and have the name trademarked for Internet use in 1995.

A comparison of the Yahoo Internet logo and the Texas Yahoo cake logo would look strikingly similar, the Texas baker claims and therefore they are asking the court to impose an injunction to stop Yahoo, the Internet comapny from using the name and the logo.

According to Geoffrey Crowley, president of Miss King's Kitchens, he wasn't aware of the infringement until Yahoo, the search engine has gone public and become so successful that they are planning to "brand out their logo well beyond the confines of the Internet."

Crowley further stated "We've enjoyed a lot of really great reactions from the public about our unique logo and we're...afraid that our customers will be confused and think that our products are actually Yahoo's products."

The $5 million Texas bakery shop has filled for trademark infringement and dilution but the primary focus of the lawsuit according to the plaintiff's attorney is to stop Yahoo the search engine from using the logo.

Now, here is another interesting case. The legendary New York Blue Note jazz club has just lost a trademark protection lawsuit against a local Missouri college nightclub who is using the Blue Note name on the Internet to draw customers.

Although both the New York club and the Missouri nightclub have their own web sites on the Internet, Richard King, the owner of the Missouri club was using the Blue Note name for his joint since 1980 and the Blue Note Nightclub registered the Blue Note name much later in 1985. By common law, King would have the right to use the name in the Missouri area.

In ruling the case, Sidney Stein, the Manhattan judge stated that he was satisfied with the evidence that King did 99% of his business with local patrons despite the fact that King's web site did have a calendar of musical events of what's happening around the country, ticketing information and a telephone number for ordering.

"The mere fact that a person can gain information on the allegedly infringing product is not the equivalent of a person advertising, promoting, selling or otherwise making an effort to target its product in New York," Stein said.

To King's credit, his web site also contains a disclaimer stating that it "should not be confused in any way, shape or form with Blue Note Records or the jazz club, Blue Note, located in New York."

So really, how much is a name worth and how much would a company pay for a name? Microsoft has reputedly paid $10,000 for the right to use the "slate.com" for a content site they are building on the Internet.

On the other hand, we bet that MTV would have paid a much higher fee to one of its former employees who has the foresight to register the "mtv.com" name before the all-music channel did. MTV sued, and the case was eventually settled out of court for a non-disclosed amount.