nettime's_tireless_reporter on Thu, 14 Oct 1999 22:55:11 +0200 (CEST)

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<nettime> hey rog, hey rerun--what's happenin?


   The Dot Com vs. El Punto Com
   by Chris Oakes
   12:30 p.m. 13.Oct.99.PDT
   Call it the battle of the What's-Ups., a news and information portal, sued its Spanish
   counterpart,, Tuesday for infringing on its trademark.
   "The case asks a simple question: Does a Spanish-language trademark
   for an Internet Web site infringe upon its English-language
   equivalent?" said attorney Michael Spadaccini in a
   The case could set a domain-name precedent, since the registration
   process currently has no safeguards to protect Web sites from
   competitors acquiring foreign language equivalents.
   If is successful, it could pave the way for
   litigation between other common word sites. Perhaps would
   have a case against Similarly, might take on, or challenge
   The suit, filed in the US District Court, seeks to prevent
   from using the domain for the words which are the Spanish translation
   of What's Happening. The complete charge against
   trademark infringement, unfair competition, and false advertising.
   A spokeswoman said the company could not comment until it
   had reviewed the suit. said the sites are offering similar Web services and
   that the names could be confused by consumers. offers
   weather, entertainment guides, search services, and horoscopes. said this is too similar to its own Web service.'s service is delivered primarily in Spanish, but it also
   offers an English-language version.
   "The law is well-settled and supports our position," said Spadaccini.
   "Under the doctrine of 'foreign equivalents,' foreign words from
   common languages like Spanish are translated into English in order to
   ascertain confusing similarity with English-language trademarks."
   Does WhatsHappening have a case?
   "Creo que no (I think not)," said domain-name trademark specialist
   Sally Abel of the law firm Fenwick & West.
   "WhatsHappenin seems to have taken an advanced course in trademark law
   and missed the fundamental that descriptive marks are not protectable
   (if they are) absent significant consumer recognition," Abel said.
   Descriptive marks describe the product or service in some way, such as
   its location or in this case, the nature of the service. They are
   generally ineffective as trademarks, requiring expensive efforts to
   gain public recongition beyond the literal meaning.
   That's why Abel believes may have to show that it
   has established this "secondary meaning."
   "There is something called the doctrine of foreign equivalents but you
   don't even get to that until you prove that you have a protectable
   mark. And I don't know that WhatsHappenin can do that."
   Spadaccini countered that the site's visitor traffic totals show that
   consumers recognize the name.
   "We've had 7 million page views since our launch, and we think that's
   adequate to demonstrate secondary meaning if we need to," Spadaccini
   said. The attorney doesn't think the argument will come to that,
   But Abel said the other factor on which the case depends -- the
   similarity between the sites -- may not be as strong as believes.
   "I don't see them as being sites that are going to confuse consumers
   as to where they are -- which is the essence of trademark
   infringement," she said.
   Spadaccini countered that sites are close enough. "Both sites answer
   the question 'what's happening?' They're not exactly the same, but
   they're using the mark as we use it." is a newly public company, while is
   privately held. was among the spate of hot Internet
   initial public offerings in June, shooting from US$7.75 to $19.75 on
   its opening day.
   Recent history in Internet name cases favors, Abel added.
   "There's been a lot of acknowledgement by the courts that it is
   possible to have domain names that are only one letter off -- let
   alone an entire collection of letters off. So I don't see
   WhatsHappenin winning this case."
   Not only does he expect his client to win, Spadaccini expects the case
   to set a precedent. "The case is interesting, and will have a
   wide-ranging precedential effect," he said.
   Abel agreed that a victory by or a plaintiff with a
   similar suit would be groundbreaking. Such a victory would put a
   strong hit one of the fundamentals of trademark law.
   "Are we creating a new type of intellectual property that essentially
   runs counter to the basics of trademark law?" Abel asked. "That is,
   that descriptive marks are not protectable absent secondary meaning,
   and generic marks are never protectable?"
   But cases like threaten to alter the descriptiveness
   rule, Abel said. If a court were to decide, for example, that was infringed by, a first-come,
   first-serve standard could supplant the fundamental descriptiveness
   rule that would make an indefensible trademark.
   If WhatsHappenin finds a judge sympathetic to the first-registered
   viewpoint, Abel could see the company winning. Barring such an unusual
   verdict, Abel said she "would expect the court would find reason to
   hold that there is no infringement here."
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