September 20, 1999 -- Newsletter #46

By Joe Burns

September 20, 1999 -- Newsletter #46
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Greetings, Weekend Silicon Warriors,

Ever heard the term "so smart, he's dumb"? That's me. Last week I wrote that I would follow the spam artist's guidelines and reply to messages with the word "Remove" in the subject line. Well, gobs of e-mail showed up telling me that I was simply falling into the spammer's hands by alerting him or her that they had sent their mail to a working e-mail address. Darn. I should have caught that one.

Did you hear?

>SEGA has released their new Dreamcast game player. It's the future of computer speed processing at 128-bits. There are problems. Apparently some lower bit rate games are not playing well with the machine, if they're playing at all. No problem. Soon SEGA will simply forgo the machine and implant the games directly into your thumbs.

>The great state of Pennsylvania has called for a license plate recall. Governor Tom Ridge wants to get out the new plates bearing the state's Web address: I guess he wants to be ready when Internet access finally comes to a dashboard near you.

>Search your hard drives. You're looking for a file named "W97M/Thus.A." That's the so-called "Thursday Virus" that is expected to explode on December 13th. (Yes, I know that's a Monday. I didn't name it.) Check your virus software company's home page for update software.

Now, onto today's topic...

The Domain Game (sung to the tune of "The Name Game" by Shirley Ellis):

Let's do Wendy's!

Wendy's Wendy's Bo

Bo-nanny Fanna Bo

Fee Fi Mo


Oh sure, Dave Thomas might seem like a good guy, but mess with his company name and he'll come down hard.

The hamburger chain Wendy's is suing Brendan Hofstadter and his Dallas company, Beswick Adams Corporation, over the use of the Wendy's name... although he's never used it. Wendy's claims that Hofstadter registered the following domain names:





This in an effort to use the names to extort money from the 99-cent menu. (In case you're wondering, Wendy's actual Web domain is

At this point, let me stop and ask your opinion. Good idea (buying the domains, I mean) or bad idea (Wendy's should be suing)? The law is on the side of the business because of trademark violation concerns, but is it all so cut and dry?

Wendy's argues that this is a case of extortion. Hofstadter wants money or he may sell the domains to someone who hates Wendy's hamburgers. I didn't know there was such a person. I love their chili!

There is something to the argument as Hofstadter's company did send a letter to Wendy's CEO, Gordon F. Teter, asking for him to buy the domains. In addition, Hofstadter has purchased other domain names that relate to Taco Bell, Subway, Coke, Ameritech, State Farm Insurance, and others. (This is what lawyer types call a "pattern." I watch "Ally McBeal" and "The Practice," I know lawyer stuff.)

So, is Hofstadter a bad guy or a guy who thought he had a good idea that is about to blow up in his face? I'll bet it's a little of both. I say that because the smallest amount of research would have turned up a February 11 decision by a Texas Judge that made two men turn over the domains "" and "" from pulling a similar scheme. Heck, there's even a name for the practice of buying domain names and reselling them: cyberpiracy.

I can't tell you how happy I am that they didn't call it e-piracy.

I guess I understand why this is a problem and why companies wouldn't want this type of thing to occur. What I want to know is how in the world Hofstadter and these two guys in Texas got these domain names. I mean,! That was left hanging out there for someone to buy?!

I'm about to go into uncontrollable questioning mode...

Can a company, say Wendy's, really stand behind the trademark law and claim that any and all incarnations of the business title belong to them? And will that only include domains they dislike? What about ""? Would they be upset at that, too? Does this also extend to altering the title? What if I owned "," a site that had funny pictures of cows playing with computers? Have I infringed there, too?

I own "". Should I be upset over the guy who owns ""? It's out there.

There's also a "". Can I claim more celebrity and get the name? Hopefully, no. But what if it was "" owned by Alec Baldwin, auto mechanic from Bangor, Maine? Can the Baldwin brother sue to get the name? Hope not.

What if a family, The Browns, bought the domain Can the city of Cleveland file suit? Hope not, again.

Does this also extend to .org and .net suffixes? What if The Browns bought ""? Better yet, what if a town was raising money for a little girl named Wendy who needed an operation and they attempted to buy Hopefully, Wendy's restaurants have made a point of buying up all of the similar suffixes at this point.

Hopefully, the trademark law will take into account the intent of the people who purchase the domain. Yes, yes, I too believe Hofstadter set out to suck money out of Wendy's till, but what will happen when a not-so-cut-and-dry case comes up? It's going to happen soon. I guarantee it.

Should the law focus less on the straightforward purchasing of the name and more on what the user does with the name? You see, if I bought from Hofstadter then set out to be a real jerk and defame the Wendy's logo and name, I would be guilty of so much more than simply trademark infringement. That sets me up for big, big fines that are easily supported in court.

But by suing at this point, with none of the domains even live, Wendy's is going on the prospect that this is extortion and that if they don't buy the domains, those may be sold to bad people just waiting to draw a moustache on Wendy. That's a bit of a leap, but do you think it's justified? So far, that's been the thinking and it has held up.

I offer this argument because it seems like once the name of the company is in the domain name, then all free speech bets are off. Let's say I dislike Wendy's hamburgers for one reason or another. (I don't, by the way -- it's my fast food of choice.) I get a site on an ISP and post why I hate Wendy's hamburgers. Can I be sued for that? I would suggest that I couldn't.

Now, a lawyer can dispute this, but it sounds like free speech of my opinion: The site is definitely not a Wendy's site and I am not misrepresenting myself as someone from Wendy's Incorporated. The same type of discussion just came up over the posting of some sensitive documents taken from Ford. The documents were allowed to remain posted over many of the same points noted above. Plus, Wendy's would look like such a bully if they went after one person posting their views on square hamburgers.

So, it must be the name, which also bothers me a bit. The world has become Web savvy. Someone looking for Wendy's on the Web would find it by reading the URL off something from the restaurant, entering "Wendy's" into a search engine, or by trying if they just decided to take a shot at the address. I do not see anyone putting in or to get to the site. You'd really have to be looking to get that by mistake and believe it's a Wendy's endorsed site. Now we're back to the argument of what I do with the site rather than simply grabbing the name.

So, what do I suggest? If you run a business and want to go on the Web, grab all the domain names you can think of that deal with your company. In other words, do what Hofstadter did, but do it first. Yes, it will cost a bit of cash, but probably less than a lawsuit. I only offer that suggestion because that's what my wife and I did when we bought the domains for her business idea. We bought four altogether, thinking that any further altering of the name would be so far-fetched it couldn't been done by accident.

Hopefully, we got them all and we don't hear from a Hofstadter in the near future.


And that's that. Another newsletter comes to an end. Thanks for reading!

Joe Burns, Ph.D.

And Remember: In weather forecasting, technically there is no such thing as "partly sunny." There is always sun (except at night... picky, picky, picky). The correct term is "party cloudy."

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