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Isle retailer wins
fight for name
on Internet

The arbitration ruling shows
how rights over Web addresses
are undergoing a key shift

By Tim Ruel
Star-Bulletin

A battle between a Hawaii cosmetics company and a Canadian Internet publisher over a Web site registration shows how trademark rights have changed for local companies in the Internet era, an intellectual property attorney says.

T.M. Pacific Co., which owns and operates three Body & Soul cosmetics and clothing stores in Honolulu and two in Guam, won the right to the Web address www.bodyandsoul.com, in an arbitrator's ruling earlier this month. The arbitrator ruled that a Canadian entrepreneur had to give the Web address over to the Hawaii company.

In the past, Hawaii businesses may have received extra insulation from trademark fights because the islands are so isolated from the mainland, said Honolulu attorney Robert Godbey, who specializes in intellectual property law but was not involved in the dispute.

Godbey said Web addresses have become so valuable -- with business.com recently selling for $7.5 million -- that trademark rules have changed and geography cannot prevent battles over cyberspace.

The Body & Soul case started in 1997 when Tao Miller, founder and owner of T.M. Pacific, found out that the Web domain name bodyandsoul.com was already registered in 1996 by Adam Corelli, an Internet publisher based in Toronto. Miller instead registered the Web address name bodyandsoul-fashion.com.

Corelli said he registered bodyandsoul.com and hundreds of others, including placeanad.com and childcare.com, to create his own Web within the World Wide Web, promising more privacy for Internet surfers.

"Body and soul" is a common expression, said Corelli, who added that he registered the address to start a health information site within his new Web.

But Martin Hsia, Miller's attorney, called it "cybersquatting," the practice of registering a Web address with plans to sell it to someone who wants to use the site name.

With more companies seeking to do business online, hundreds of new battles are arising under a new U.S. law against cybersquatting.

"I am not a cybersquatter," Corelli said. "I'm not stupid enough to do that."

Shortly after Miller learned Corelli had the registration, he trademarked his business name Body & Soul, according to court documents.

Corelli and Miller had discussions about selling the Web name registration, but the talks failed. Miller said the asking price, $30,000, was too high.

In early 1999, attorney Hsia told Corelli to stop using the trademark because Miller was going to begin legal proceedings.

Corelli said this is the only trademark dispute he's run into over Web registration, out of the hundreds of addresses he bought.

The National Arbitration Forum assigned the dispute last month to retired District Judge Carolyn Marks Johnson in Houston.

Johnson ruled April 12 that Corelli had to give the registration to Miller, saying that Corelli didn't prove he invested $30,000 in the site, which meant he acted in bad faith during the negotiations. She also ruled that the domain name and company name were similar enough to be confusing to the marketplace.

Corelli said it's irrelevant how much he spent on the site, because it's part of larger project he had worked on for four years.

"I'm astounded at her decision," Corelli said of the judge.

Arbitration decisions cannot be appealed but Corelli said he is looking into his options because he wants to keep the registration.