What’s in a name, asks Bodog founder Calvin Ayre

Whether a trademark is a true property right, such as might be enforced against piece of personal property, or a somewhat lesser right appurtenant to the operation of a business, American courts have ignored ICANN's position and held that domains, which are bought and sold freely, entail property rights suitable to such a fungible entity.

Fair enough. But can a court really force the transfer of a trademark from an entity operating a business utilizing that trademark to one that is not? Can a trademark, or a domain based thereon, be severed and transferred from the very business from which it grew? More importantly, how can a mark devoid of the history and usage to which it has previously been attached have any value at all?

A Bodog by any other name

1st Technology thinks it can force a transfer, and so far the Washington state court has agreed.

1st Technology bases its claim on the landmark Sex.com case, Kremen v. Cohen, which first established property rights in domains. Of course, as anyone familiar with the Sex.com drama knows, the facts of that case involved a fraudulent transfer of a generic, though valuable, domain name.

Whether or not that same 9th Circuit Court of Appeals - or the US Supreme Court, for that matter - would view the forcible transfer of a domain based on an already registered trademark is another question entirely. Trademarks are intimately associated with a certain business style and established good will – not exactly the kind of business asset that transfers from one business to another easily.

The universal reach of the internet provides unique difficulties as well. 1st Technology claims that Bodog’s trademarks are unenforceable in the US because they are based on illegal activity, which could well be true but which ignores the fact that Bodog could well have enforceable trademark claims in jurisdictions around the world, and that taking over the company's websites might breach Bodog trademark rights elsewhere.

Bodog has been operating for the time being from the site BodogLife.com, registered with Network Solutions, based in Virginia - a jurisdiction that seems to be a little more sympathetic to Bodog's claims in an admittedly unsettled area of law. That won’t reverse the tide in this case, but it might make it easier to defend future domains that might be at risk.

Ultimately, the victory for 1st Technology could be pyrrhic. Bodog's customers have already switched to its new site, and 1st Technology's suggestion that an unrelated business might be run off the site seems wistful. Legalization of internet gambling in America is really the company's only hope that Bodog will find it worthwhile to maintain significant assets in the US.

1st Technology has quite a wait in front of it to satisfy this judgment, if ever, in full.

PDFs of the filings can be found here.®

Burke Hansen, attorney at large, heads a San Francisco law office