Sci-fi novelties cataloger 800-Trekker recently found its good name was being used for cybersmut. For several months, says the catalog’s owner, David Blaise, pornography was visible on two Websites, www.800trekker.com and www.trekker.com, hosted by AXIS Web Development and 1Globe Web Site Development. On Oct. 6, shortly after customers alerted Blaise to the Websites, he named the two Cranston, RI-based Web developer firms and their owner, Paul DiCecci, in a lawsuit filed in the U.S. District Court for the Eastern District of Pennsylvania.
In the suit, which cites trademark infringement, unfair competition, and federal trademark dilution, Reading, PA-based 800-Trekker demands that DiCecci stop using the domain names to showcase banner ads with hyperlinks to porn sites; that he provide 800-Trekker with a list of people who accessed the sites; that he pay 800-Trekker all profits from the sites and lawyer fees; and that he pay for corrective advertising equal to the amount DiCecci spent to promote the sites.
‘Cyberpiracy’ An outsider commenting on the case, trademark lawyer Peter Nussbaum, a partner with Hackensack, NJ, law firm Friscia & Nussbaum, says 800-Trekker will have to convince the court that its company name is “famous,” according to the legal definition of the term. “The court may consider a number of factors,” Nussbaum explains, “including whether the mark has acquired distinctiveness, the duration of its use, the duration and extent of advertising and publicity of the mark, the geographic extent of its use, the degree of consumer recognition of the mark, the nature and extent of third-party use of similar marks, and whether the mark is federally registered-which it is not.”
Several precedents are in 800-Trekker’s favor, however. In February 1996, Nussbaum says, toy manufacturer Hasbro stopped Internet Entertainment Group from using “candyland.com” for a porn site, saying the site had diluted the value of Hasbro’s Candyland game. Nussbaum also cites cases involving Web entrepreneur Dennis Toeppen, who allegedly obtained the domain rights to numerous famous names, such as Panavision, then tried to sell the rights to the firms for thousands of dollars. “Many of these companies sued him and won.”
After being contacted by Catalog Age on Oct. 8, DiCecci said he would reprogram the 800trekker.com site so that when surfers punched in the address, they would receive a message declaring “unknown host.” He did reprogram the site, but as of mid-October, DiCecci was still using www.trekker.com to promote porn and nonporn links.
DiCecci says he went after the trekker.com domain name four months after approaching Blaise in April 1997 for the rights to the phone number “888-Website,” which Blaise refused to give up. “I wanted to make Blaise an offer,” DiCecci says. “I would make the trekker.com a sci-fi site and was willing to put his products on the site in exchange for the phone number. But he treated the wrong guy in the wrong way.”
Blaise says that even though www.800trekker.com no longer leads to porn links, “the damage is done. DiCecci’s going to deal with a long protracted legal battle, because you can’t do that to people in this country and get away with it.”-PM