From October 1999 to 2002, evisa.com hosted a "visa to the internet"
site with a number of free resources including travel visa information, free
language applications for many languages, a multilingual world directory (reformatted
from dmoz.org) and free online computer tutorials.
Evisa.com received as many as 35,000 visitors per month, serving up as much
as 8 GB per day of free content with no advertising. Evisa.com was owned and
operated by JSL, a translation and multilingual development company. The home
page of evisa.com looked like this. The
content on the evisa.com site has been moved here.
For earlier versions of the evisa.com site, see the Wayback
Machine. JSL also used the EVISA name on the site evisa-jp.com since
1997.
The evisa.com site is presently unavailable due to a lawsuit filed by VISA International
Service Association against JSL, the owner
of the evisa.com site.
See here for the history of the lawsuit up to Nov 2002.
The present order delivered by U.S. District Court Judge Larry R. Hicks, has directed that JSL cease using the evisa.com domain name and deactivate the site at evisa.com. JSL is complying with this injunction. This injunction is in response to a motion by VISA for summary judgement on VISA's claim that JSL's "evisa" trademark is diluting VISA's "VISA" trademark.
The judgement states in part as follows:
To establish that JSL has violated the FTDA based on its use of the eVisa mark and the <evisa.com> domain name, Visa International must show that: (1) its Visa mark is famous; (2) JSL is making a commercial use of the trademark in commerce; (3) JSL's use began after Visa International's Visa mark became famous; and (4) JSL's use of the mark presents a likelihood of dilution of the distinctive value of Visa International's Visa mark.
JSL does not dispute that the VISA mark is famous in the context of credit cards. In spite of this a substantial portion of judge Hicks' order consists of statements detailing the strength of the VISA mark, the billions that have been spent on its promotion, and so on. JSL also does not dispute #2 or #3. The essential part of this order then, consists of the section dealing with #4. The important part of this section reads as follows:
The question presented here is whether JSL's eVisa mark will likely dilute Visa International's Visa mark. There is no dispute that the eVisa mark contains Visa International's famous mark in its entirety. There is also no dispute that the only difference between the two marks is JSL's addition of a letter "e" as a prefix, which is commonly used to denote the online version of a business. 3 According, the Defendant's eVisa mark is very similar to Plaintiff's Visa mark.
The footnote reads:
3. See, e.g. <enike.com>, <etoyota.com>, <ehonda.com>, <ekellogs.com>, <e-coke.com>, <eplayboy.com> and <enordstrom.com>
JSL respectfully disagrees with the judge's opinion. The evisa.com domain does not contain the VISA mark. It contains the English word "visa". "Visa" is not the "VISA" mark unless consumers perceive it to be so, and this requires some kind of evidence beyond the mere inclusion of v-i-s-a.
In addition JSL has supplied testimony showing that "e" + a generic mark like VISA is most likely not used to denote the online version of the business. For example, see www.eapple.com, www.ebell.com, www.eborders.com, www.ecamel.com, www.echase.com, www.ecraftsman.com, www.edial.com, www.edove.com, www.egateway.com, www.egulf.com, www.epenguin.com, www.eshell.com, www.esprint.com, www.esun.com, www.etarget.com, www.ethrifty.com, www.etime.com, www.evirgin.com, www.ewindows.com, www.eword.com. In expert testimony, we have supplied an even larger list (see below).
For a more precise legal statement of JSL's legal objections to this order, see the opposition to the motion for summary judgement, filed by JSL. JSL believes that virtually none of the legal issues raised in this opposition pleading have been addressed.
In addition the Judge Hicks has the following to say about the effect of JSL owning evisa.com:
The established facts show that Defendant's use of eVisa is likely to or has diluted, by blurring, the distinctive quality of Visa International's Visa mark. Defendant's use of the famous Visa mark in its domain name has diluted the Plaintiff's ability to identify and distiguish its goods and services. See Mirage, 152 F.Supp. 2d at 1217. This Circuit has recognized that a "significant purpose of a domain name is to identify the entity that owns the web site," and "[u]sing a company's name or trademark as a domain name is also the easiest way to locate the company's web site." Panavision, 141 F.3d at 1327.
Therefore, if customers use a search engine to find Plaintiff's Web site and are forced to wade through hundreds of Web sites, they may never find Plaintiff's official Web site. Id. As "e" is a commonly used prefix to denote the online version of a business, <evisa.com> presents a serious impediment to customers trying to locate the Visa Web site.
It is JSL's position that anyone capable of navigating to the present page can see that the above scenario simply does not correspond to how the Internet operates. This point was thoroughly addressed in expert testimony submitted by JSL prior to the current ruling.
The crucial section of judge Hicks' order dealing with likelihood of dilution is here. The full text of the order can be found here.
JSL believes that the current ruling is in error. Further, allowing the current
ruling to stand will result in a considerable consolidation of Internet domains
in the hands of holders of "famous" marks. This is contrary to the
purpose of the Internet, which was designed to be an open information resource.
JSL believes that the potential effect of this order could not be better illustrated
than to compare the site at www.e-visa.com
with the site that was at evisa.com and is now at www.3dtree.com/ev.
In spite of spending
millions on, and deploying dozens of "key executives" to a supposed
new division for VISA that would focus on Internet payments, the e-visa.com
site remains in 2002 largely as it was in 1999 when it was first posted: essentially
a vacuous corporate billboard. The Internet
archives shows that the site has hardly changed from its inception. Update
1/7/03: VISA has now redirected the e-visa.com site to their corporate site,
but the original e-visa.com site can still be viewed at the Internet
Archives.
In contrast the site at evisa.com, developed, as repeatedly pointed out by VISA, by essentially a one-person company, had literally thousands of useful pages (now relocated), such as the
Many of the resources on the evisa.com site were unique to the site, including
copyright 2002 JSL Corporation