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Trademark suit pits porn against profits

Internet trademark cases aren't unusual. But a suit filed last week is more colourful than most -- tying an Internet startup, a cyberporn magnate and the Federal Government in a legal tangle.

The edgaronline.com case underscores the growing importance of domain names, and demonstrates just how far Internet companies are willing to go to secure them.

The seeds for the hullabaloo were sown back at the start of 1996. That's when Dan Parisi acquired "edgaronline.com," along with about 200 other domain names, thinking they might end up being important. "I thought taking generic, descriptive names was a good idea," Parisi said. "I thought the price would go up, and I was right."

Such domain grabs are not new, but this is not your average domain homesteader. Parisi, a former environmental consultant based in Seacaucus, New Jersey is also the brains behind whitehouse.com -- the porn site you'll see if you make a wrong turn on the way to President Clinton's official online home, whitehouse.gov.

Last week, Parisi was contacted by Edgar Online Inc. the Internet company that offers access to business filings from the U.S. Securities and Exchange Commission's EDGAR database. Edgar Online's current online address is www.edgar-online.com. Edgar Online, which went public Wednesday, obtained a temporary restraining order against Parisi, and had the edgaronline.com domain name suspended by Network Solutions Inc., operator of the Web's domain name registry. "We believe [he is] impeding our ability to conduct business," said Edgar Online spokesperson Jay Sears. The company declined to comment further.

But the case has some ambiguity, because Edgar Online Inc. doesn't actually have an approved trademark on the Edgar Online name, and, according to some legal experts, may not have the right to such a trademark. That's because EDGAR (short for Electronic Data Gathering, Analysis, and Retrieval system) is already a trademarked term -- by the SEC. Parisi's attorney, Michael J. Calvey, argues that the porn czar has just as much right to the description "Edgar Online" as Edgar Online Inc. For the past few months, edgaronline.com has simply redirected users to the SEC's own EDGAR Web site, as a "public service," Parisi said.

"My client, through his domain name, was simply sending people directly to the SEC's database, and in this respect it is an honest use of the term Edgar Online," Calvey said. The case illustrates the growing importance of domain names for companies looking to protect and extend their brands. The battle often brings companies into conflict with private name holders, and for the most part, companies with trademarks are winning.

Trademarks are essentially about preventing consumer confusion, according to legal experts, and in most cases courts have found that a domain name that is too similar to a trademarked name is in violation of the trademark -- regardless of the nature of the Web site.

Some legal experts in the U.S. agree that the SEC appears to have first rights to the EDGAR mark, and could claim it from Edgar Online Inc. if it chose. "I would question the validity of their trademark, when it's so similar to ... the Federal government's trademark," said attorney William Turner, who frequently handles Internet-related cases.

But the government isn't starting such a dispute; in fact, Edgar Online is one of several companies with a license to use "Edgar" in its company name (Parisi doesn't have such a license). Under these circumstances, legal experts say, Edgar Online seems to be free to claim its trademark rights. "If [Parisi] has never bothered to register [Edgar Online] as a trademark, and has not utilised it in such a way that he might have some common-law trademark rights, then the first company to register it should prevail," said intellectual-property attorney Rich Gray. "He's not utilising it in any way but to prevent [Edgar Online] from having access to it."

Gray noted that Parisi's use of whitehouse.com will probably undercut his claim to be delivering a "public service" by directing users to the SEC's EDGAR site. In the meantime, Parisi won't be sitting still. He plans to file an objection to Edgar Online's trademark application, which has been pending since 1995, and will appear in court next week to try to lift the restraining order.

"I don't think this is right," Parisi said. "They shouldn't be able to just shut a name down like that."