Our so-called domain name dispute.

Written by Kayvan Sylvan

July 1, 1996

Since I'm now famous, I wanted to set a few things straight regarding the so-called domain name dispute between Sylvan Learning Systems and Sylvan Associates.

The news story by Denise Caruso, printed in the July 1st New York Times, titled ``When Internet Monickers Compromise Trademarks'', brought attention to this important topic, but got one or two small details wrong. The most important thing to note right away is that so far as we are aware, NSI has not commenced a challenge proceeding against us.

The background to the case is rather simple:

I have been operating a successful software consulting business since 1990. In 1991, I applied for and registered sylvan.com for Sylvan Associates (my company) with the Internic. Then, I went about my business, secure in the knowledge that my Email address would always be kayvan@sylvan.com. The domain name policy was, at that time, first come first served.

On June 12th, 1996, I got a phone message from Sylvan Learning Systems, basically asking for my domain name. I refused, as my domain name is and has been an integral part of my business. It was pointed out to me at that time (and over the next few days) that since Sylvan Learning Systems has a trademark registration, they might have a right under the NSI policy to take the sylvan.com domain name away from me.

This was the first time I learned about the flawed policy change at the NSI (the organization that handles the top level domains these days). I read their policy several times.

A trademark search on the word Sylvan turned up about 36 different trademarks, the earliest was a textile manufacturer who had a line of linens in 1916, that they called "Sylvan". According to the NSI policy, if this textile manufacturer wanted to get on the net and take the domain name "sylvan.com" away from me, they could do so, disrupting my business completely.

I hired a good lawyer (Carl Oppedahl) specializing in intellectual property and the net, and acquired my own trademark registration. My lawyer then spoke with the people at Sylvan Learning Systems on June 17th, and as of July 1, we haven't heard anything from them since.

I am hoping that the good folks at Sylvan Learning Systems understand at this point that the domain "sylvan.com", is already being used by Sylvan Associates in a legitimate business that does not infringe on their trademark. As such, they have no legal basis for trying to take the domain. Since we haven't heard anything further from them, we are all assuming that they have decided not to follow through with the domain name dispute.

The only point that still remains is this: How is it that sensible business people get the idea that their trademark registrations in unrelated industries give them the right to a domain name? The basic answer is the flawed NSI policy. The hype around the Internet and the domain name policy combine to make otherwise reasonable people behave in an unreasonable way when it comes to domain names on the net.

I believe that the NSI should stay out of the business of deciding disputes and let the existing legal systems handle possible trademark disputes. A domain name does not, in and of itself, infringe on a trademark. Read more about all the issues at the various links in our domain name dispute pages.

Sincerely,

Kayvan Sylvan
President of Sylvan Associates,
Owner of sylvan.com