Tim
~~~
The Saga of overdrive.com, or the most popular name on the net. By
Tim Byars <tbyars@earthlink.net>
In late 1994, I started thinking about carving out my own niche in
cyberspace and forming a new Internet consulting company. For this I
would need a new name for the company. What to call it?
A friend of mine, Mike Messix, always calls me "Tim.com" so I got the
bright idea of making my company name the same as my domain name, and
in mid-January, 1995, I started fingering different names. I first
wanted Paladin, as in have gun will travel, but needless to say, that
was taken--as was every other name that I could think of. So
dismayed, I put it off.
About a month later, after a consulting contract was finished, I
started fingering different names again. No luck, so out comes the
trusty dictionary. My Websters Dictionary from Pic and Save. Opening
it up I started looking for names. A half a dozen tries later I came
across "overdrive: a gearing device in a vehicle that turns a
driveshaft at a greater speed than that of the engine, therefore
decreasing power output. Cool! overdrive.com, that is what it would
be. A quick finger of Internic turned up nothing. Coolness to the
max. I had my new domain and company name. My form was sent off.
Three weeks or so later I got the e-mail. overdrive.com was mine! A
quick trip to the local county office and a DBA later it was my
company name.
Cut to mid-November
I received a both a e-mail and phone call from some mysterious figure
claiming TRADEMARK on Overdrive Systems, and that he wanted to start
a magazine and would I give him a call about by domain name. Well
this was about the forth or fifth call from someone wanting my domain
name. I called back about a week later and left a message. Nothing.
Now we go to mid December where I get a call one bright and sunny
morning from an attorney that I am in violation of Overdrive
Magazine's Trademark and that I should surrender the domain name at
once. I responded that I was certainty not in violation of any
magazines Trademark and what was Overdrive Magazine going to do about
Intel? The lawyer informed me that if Intel was using the name
"overdrive" they would be getting the same call. At this point I
dismissed this lawyer as being a lunatic and told her to contact
Internic and get overdrivemag.com and leave me alone unless they
wanted to make me an offer to purchase my domain name. The next day a
FedEx package arrived from the lawyer that I filed away. A quick
search of Web Crawler returned over 2500 overdrives, Alta Vista
returned over 8000 overdrives. Not one of them being me since I don't
maintain a web site under that name.
A week later I get a e-mail from "Overdrive Systems" telling me I was
in violation of their trademark and to surrender the name.
Two weeks after that, I received e-mail from a consultant claiming to
be working for Overdrive Magazine and Randall Publishing, in
Birmingham, Ala and to surrender the domain name, or be squashed by
the mighty Randall Publishing Empire. I informed the consultant that
I was more that willing to sell the domain name to cover my costs and
the mighty giant Randall should contact me and offer a fair price. I
quoted the price of $25,000, which was just paid for download.com,
and said that was a good place to start. The consultant replied back
to me that I had a "avalanche of attitude" and the mighty Randall
would be in touch.
At this point I contacted a friend, journalist Jeff Ubois
<jubois@netcom.com> and asked him for help. He referred me to Marie
D'Amico, a well known and respected lawyer in these matters. I
contacted Marie and explained my situation as I knew it. The mighty
giant, Randall Publishing, with offices in apparently Alabama and
Ohio that publish a magazine for interstate truckers was going to
squash me like a bug. Marie went to work on the case like a horse out
of the starting gate. 50 minutes or so later Marie called and
informed me that I had not one but two groups after me. Overdrive
Magazine, a publication of Randall Publishing, based in Alabama and
Overdrive Systems, Inc. based in Beachwood, Ohio. Of course my reply
was "you have got to be kidding."
Marie and I decided that in these instances, it's best to first start
with an amiable letter setting forth one's position possibly to ward
off any impending litigation.
So we decided that I would write a letter to Overdrive Systems in
Ohio and ask them since they got their domain "odrive.com" after
mine, and since they has been using that for 8 months why did they
suddenly want my domain? And she would contact the mighty Randall.
Seemed reasonable to me...
Finally, the issue came to a head. I arrived at my office to see a 4
page fax from the mighty Randall's attorney telling me to surrender
the name or be sued for not only trademark violation but for doing
business as "Overdrive" anything. Huh? What? Hello? Real world
calling?
Well it was time to take some sort of immediate action. I called
Marie. I faxed Marie. I then called Steve Potash at Overdrive Systems
to get his views on my coveted domain name. Steve responded with
immediate threats against me. I repeatedly told him that I was just
calling to see what was up and to settle down. I then asked him if he
was offering to buy my domain name or what? His response was that no
but he would be kind enough of pay the Internic fee for a new domain.
Forget the fact that I operated a business under that name, forget
the 5 articles in the past year that my name has appeared in, forget
the business cards, forget the developer mailing lists, etc. that had
gone out with "tbyars@overdrive.com" on them. Forget it all.
Overdrive was his and he was going to sic his lawyers on me if he had
to. I told him it would take me a couple of days to get it together
and get back to him.
Well the decision was made for me. The mighty giant Randall, the
hillbilly truckers, would rather pay lawyers and so would Steve. Oh,
I forgot to mention that BOTH overdrivemag.com and overdrivesys.com
was available. But those wouldn't do. Making me an offer wouldn't do.
Paying lawyers and threats was the way to conduct business. Nope,
"overdrive.com" was certainty the most coveted name in the entire
known world and I had two separate companies willing to do whatever
it takes to get it.
Fine. Overdrive Systems contacted me first, they get it. I called
Steve back and told him that I had another name reserved, "thump.com"
and to transfer everything over to it, and the name was his. Lock,
stock and barrel. Case closed. The mighty Randall's lawyers got their
reply before the Jan 31 deadline. Overdrive will no longer be
registered to me.
Be careful what you wish for...
Marie D'Amico's response; <maried@eworld.com>
The touchstone of trademark or service mark infringement is consumer
confusion. In other words, would a consumer, seeing overdrive.com,
think it likely this was the domain name associated with Randall
Publishing's line of trucking magazines named "Overdrive"? Most
federal jurisdictions, whose bailiwick is trademark and service mark
infringement, employ a five to eight part test for this type of
infringement. The test considers the strength of the mark, the
proximity of the goods or services, the similarity of the marks,
evidence of actual consumer confusion, the marketing channels for the
goods or services, the types of goods or services and the degree of
purchasing care a consumer uses in selecting such, the intent of the
second, or later, user of the mark, and the likelihood of expansion
of the first user of the mark into different product or service
areas.
Many of these factors support Tim's position of non-infringemen, For
example, the mark "Overdrive" isn't a very strong trademark for
Randall Publishing because it's not an arbitrary or fanciful word,
which are afforded the widest range of protection from infringing
uses, as applied to trucks. Rather, "Overdrive" is a word frequently
associated with trucks and the trucking industry.
On Tim's side, the services are not similar. Tim is a digital
video/Internet consultant and Overdrive is a print magazine. There
appears to be no evidence of actual consumer confusion, another plus
for Tim, although some courts do not consider this factor because
such evidence is difficult to obtain. The marketing channels for the
two marks are vastly different. Tim markets his video/Internet
consulting services to the broadcast media desiring such services.
Overdrive markets its print publication to the trucking industry. I
don't see much overlap between these two industries. A consumer would
likely spend some time before purchasing either the niche trucking
magazine "Overdrive" or retaining Tim's services so that factor is on
Tim's side. Tim did do a wide-ranging search for the mark Overdrive
when he obtained this domain name almost a year ago, so he had no no
intent to deliberately infringe anyone's mark. Finally, it's unlikely
Overdrive magazine will expand into the video-consultant services
arena. All of these factors support Tim's position that his use of
the domain name "overdrive.com" is not confusing to Randall's use of
the name "Overdrive" on its trucking magazines.
--There are no incurable ills | There are no believable Gods There are no unkillable thrills | There are no unreachable goals There are no unbeatable odds | There are no unsaveable souls . . Osbourne e-mail tbyars@earthink.net | http://home.earthlink.net/~tbyars ---------------------------------------------------------------------