FRAMINGHAM (02/10/2000) - Dostana Enterprises LLC, a small New Jersey online company, has filed suit against shipping giant Federal Express Corp. to retain the right to use the worldontime.com domain name.
FedEx, however, has demanded the company cease and desist because it says it owns the "The World on Time" trademark.
In a pre-emptive lawsuit filed Feb. 2, Dostana Enterprises has asked the U.S.
District Court in New York to declare that its registration of the domain name worldontime.com doesn't violate the federal Anti-Cybersquatting Consumer Protection Act, which Dostana said FedEx alleges. The act was designed to protect companies from outsiders registering a corporation's trademark as Internet domain names and then trying to sell them back to the firms.
That's just what FedEx said it thinks Dostana wants to do, and the company has written letters asking that Dostana transfer the domain name to FedEx.
But Dostana's attorney, Peter Toren of the New York law firm Brown & Wood, said the company registered the domain in good faith and never intended to profit from it. Dostana developed an online medical referral system.
"At the time the act was passed, (small companies) had expressed concern that it would give large companies a lot of power to go after smaller entities who may have the legitimate right to register (and use) a domain name," Toren said.
"It was never Dostana's intent to use the domain name worldontime.com to profit from it."
However, in correspondence to FedEx, Dostana did offer to sell the domain for at least $250,000. FedEx has refused, Toren said.
Toren said Dostana is so sure of its right to use the "worldontime.com" domain name that it decided to file suit to get FedEx to stop "threatening" the company.
FedEx spokeswoman Sally Davenport said the company couldn't comment on this specific case because of the pending litigation. But she said as the owner of the trademark, FedEx is obligated to do everything in its power to safeguard the trademark.
Toren, however, said New Jersey resident Neil Shah set up Dostana and registered the domain name as part of a business plan. Toren said Dostana's online system makes it easier and more efficient for doctors to refer patients to other medical specialists by listing their availability on an online database.
Toren said although Dostana is based at medontime.com, it also registered a number of other "on time" domain names, including worldontime.com, because the information available in its database is applicable in a number of other areas.
Toren said worldontime.com would act as a portal through which consumers could access all the "on time" services offered.
Toren said Dostana is asking the court to give the company the right to use the domain name and damages "for Federal Express' conduct" of at least $5 million.
Intellectual property lawyer Jonathan Moskin with the New York law firm of Pennie & Edmonds LLP said FedEx does have a registered trademark No. 1909467 for The World On Time, for its shipping services, which was registered with the federal trademark office in 1994.
"Simply owning the trademark for [shipping services] doesn't mean that FedEx has a monopoly for all purposes," Moskin said. "In order for FedEx to win this suit, it would have to prove that Dostana's use created confusion or dilution, the lessening of the value of the trademark. Given the sophistication of Dostana's customer base, confusion doesn't seem likely. FedEx would also have to prove intent on Dostana's part."