Reprinted from the Richmond Times-Dispatch, Sunday, January 14, 2001:

Domain names disputes growing

by Andrew Petkofsky
Times-Dispatch Staff Writer

WILLIAMSBURG, Virginia —

Gilinda Rogers has given the College of William and Mary its name back.

Rogers, a Williamsburg businesswomen who has gained a measure of notoriety for registering and taking control of Internet domain names of Virginia institutions, recently donated two of them - www.williamandmary.com and www.williamandmarycollege.com - to the college.

"I consider myself to be a cyber-Samaritan," Rogers said.

Crediting herself with helping to preserve W&M's future marketing and promotional opportunities, Rogers said the value of at least one of the domain names, also known as Internet addresses, has been estimated to be worth up to $120,000.

W&M has accepted the gift and already linked the address to its main Internet site, which is also reached at the address wm.edu

"We're grateful she gave us the [domain name]," said William T. Walker Jr., W&M's associate vice president for public affairs. "There may be any number of ways that it might be useful to us."

Rogers' donation comes as disputes over the control of Internet domain names have spun into confrontations, court battles and the ongoing creation of a new area of law.

As the World Wide Web became more and more important as a communication tool in recent years, entrepreneurs hoping for future profits rushed to formally register domain names that might one day have value. Catchy phrases, buzzwords and especially names linked to high-profile products, companies and institutions have been popular targets.

Although trademark law generally protected the use of official names of companies, institutions and products, the speculating "cyber-squatters," as they came to be called, were thought to have some latitude because the Internet was so novel in so many ways.

Congress acted in 1999 to extend trademark protection to the Internet with passage of what was known as the "anti-cyber-squatting act." The act made it possible for trademark owners to take cyber-squatters to civil court under certain circumstances.

But that congressional action has not really settled the cyber-squatting controversy.

I. Trotter Hardy, a W&M law professor, said a more important development has been the recent requirement that anyone registering a domain name must agree to go to arbitration if a trademark owner contests the registration. He said legal scholars are now beginning to analyze decisions in the arbitration cases, which have tended to favor the trademark owners.

"It's the development of the new area of common law," he said.

Since the rules remain somewhat fuzzy, different institutions have taken differing approaches to protecting their trademarked names on the Internet.

In late September, Virginia Tech sent out warning letters to about 125 people who controlled Internet domain names containing the names "Virginia Tech" and "Hokies." The letter said that Tech had decided it would not allow the use of those names.

"We think it's a trademark infringement," said Larry Hincker, the school's associate vice president for university relations.

Hincker said in a telephone interview that Tech officials struggled with their decision to enforce their trademarks against Internet-savvy football fans and other school boosters as well as competing business concerns. The decision to enforce a total ban came out of liability concerns and the rules that apply to protecting a trademark, he said.

Some who received the letters quickly agreed to discontinue using the names, and some even offered to donate them to the school, Hincker said. He said Tech has encouraged those people to simply let their domain name registrations lapse unless they feel strongly about making the donation.

He also said some of those contacted have been less cooperative.

"A handful of people have said, 'See me in court,'" Hincker said. "We're trying to decide what the next stop is. Frankly, we don't want to go to court . . . but we need to let people know that we own that trademark."

Taking a different tack, William and Mary has made a point in recent years of registering domain names that would logically point to the school. Walker, the university relations official, said W&M has registered about 30 domain names over the past couple of years.

Rogers, who made the recent donation to W&M, considers herself a Samaritan interested in the welfare of institutions related to the domain names that she controls. But she wound up in federal court in the spring after the Colonial Williamsburg Foundation sued to stop her from giving two domain names, www.colonialwilliamsburg.com and colonial-williamsburg.com, to a labor union whose members were locked in a contract dispute with the institution.

That dispute concluded within the last two or three months in a settlement that gave back to Colonial Williamsburg control of the domain names, Rogers said. But neither she nor Colonial Williamsburg would provide any other information about the settlement.

Rogers, the daughter of Gil Granger, a former Williamsburg mayor and owner of the Hotel John Marshall in Richmond, said her acquisition of the domain associated with both Colonial Williamsburg and William and Mary grew from her concern for protecting the local institutions.

As an Internet Web site developer who at one time controlled more than 1,000 domain names, Rogers said she understood several years ago that it was important for the institutions to have control of all domain names related to their names, even ones designated for commercial use.

When the institutions didn't register the names themselves, she said, she did so and then offered to turn them over in return for reimbursement of her own costs.

In interviews in the spring, Rogers said that Colonial Williamsburg had responded to her offer by threatening legal action, so she hired her own lawyer and then began adding her legal costs to the amount she sought in return for the domain name.

At the time, a Colonial Williamsburg spokesman said Rogers had demanded as much as $10,000, but Rogers said the most she ever asked was $6,000.

In an interview after her donation to William and Mary, Rogers said she began registering locally important domain names after learning that out-of-staters controlled such domains as williamsburg.com, yorktown.com and jamestown.com

"Long before laws had caught up to the technology, there was a void where some institutions were not aware of the importance of securing their identity," Rogers said. "I realized that some institutions needed to have that done for them if your were going to be a good neighbor or a good Samaritan."

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