FedEx Sued in Domain Dispute

One clash pits Dostana Enterprises, a small Internet consulting company, against shipping giant Federal Express. Dostana has registered; Federal Express says it's too similar to its registered service mark, "The World On Time."

Like many others, this dispute has landed in a federal court. But here's the switch: The smaller, unknown Web company filed suit against the giant.

"We are the first case in which we, in a sense, have turned the tables," says Peter J. Toren, the attorney representing Dostana, Brown & Wood, LLP. Consider it David's preemptive strike at Goliath.

"We've been accused of being the cybersquatter," Toren says. "We went ahead seeking an order from the court." Cybersquatters typically register a domain name solely to resell it. Toren contends Dostana has a legitimate claim to the domain in dispute.

Dostana registered for in May 1999 to launch an online database of medical specialists. Expanding its business, Dostana has secured 11 additional "on time" names, including,, and It anticipates that one name,, will be the gateway to all Dostana services.

Enter FedEx. The shipping company wrote to Dostana last September, saying the Web company appears "to be intentionally using the intellectual property of Federal Express for its own advantage."

In December, Dostana offered to sell the domain name to FedEx for no less than $250,000, even though it had "invested a great deal of time and money" in creating its "ontime" brand. Dostana's offer letter also notes the $7 million eCompanies paid entrepreneur Marc Ostrofsky last November for the domain name

Who's the Squatter?

Toren says FedEx rejected the offer and then accused Dostana of violating the Anti-Cybersquatting and Consumer Privacy Act of 1999. Dostana responded by filing civil suit February 2 in a U.S. District Court in New York.

The suit seeks a declaratory judgment that Dostana's domain name does not infringe on Federal Express' registered trademark. Dostana also seeks $5 million in damages, based on "the interference with [Dostana's] right to use this particular mark" and any damage to its reputation by FedEx.

FedEx responded Tuesday. It denies Dostana's allegations, maintains its right to the domain, and claims Dostana registered the domain to extort money from FedEx.

FedEx will not comment on lawsuits in progress, but a representative did address its need to defend the integrity of trademarks.

"When you have a trademarked name or phrase, the company--any company--is obligated to demonstrate that they have tried to protect it from anybody else," says Sally Davenport, FedEx spokesperson. If a company does not make an effort to protect itself, it risks losing its trademark in the future.

Dostana always planned to use as an umbrella for its ontime sites, Toren says.

Join the PC World newsletter!

Error: Please check your email address.

Our Back to Business guide highlights the best products for you to boost your productivity at home, on the road, at the office, or in the classroom.

Keep up with the latest tech news, reviews and previews by subscribing to the Good Gear Guide newsletter.

Allison B. Ebel

PC World
Show Comments

Most Popular Reviews

Latest News Articles


PCW Evaluation Team

Azadeh Williams

HP OfficeJet Pro 8730

A smarter way to print for busy small business owners, combining speedy printing with scanning and copying, making it easier to produce high quality documents and images at a touch of a button.

Andrew Grant

HP OfficeJet Pro 8730

I've had a multifunction printer in the office going on 10 years now. It was a neat bit of kit back in the day -- print, copy, scan, fax -- when printing over WiFi felt a bit like magic. It’s seen better days though and an upgrade’s well overdue. This HP OfficeJet Pro 8730 looks like it ticks all the same boxes: print, copy, scan, and fax. (Really? Does anyone fax anything any more? I guess it's good to know the facility’s there, just in case.) Printing over WiFi is more-or- less standard these days.

Ed Dawson

HP OfficeJet Pro 8730

As a freelance writer who is always on the go, I like my technology to be both efficient and effective so I can do my job well. The HP OfficeJet Pro 8730 Inkjet Printer ticks all the boxes in terms of form factor, performance and user interface.

Michael Hargreaves

Windows 10 for Business / Dell XPS 13

I’d happily recommend this touchscreen laptop and Windows 10 as a great way to get serious work done at a desk or on the road.

Aysha Strobbe

Windows 10 / HP Spectre x360

Ultimately, I think the Windows 10 environment is excellent for me as it caters for so many different uses. The inclusion of the Xbox app is also great for when you need some downtime too!

Mark Escubio

Windows 10 / Lenovo Yoga 910

For me, the Xbox Play Anywhere is a great new feature as it allows you to play your current Xbox games with higher resolutions and better graphics without forking out extra cash for another copy. Although available titles are still scarce, but I’m sure it will grow in time.

Featured Content

Latest Jobs

Don’t have an account? Sign up here

Don't have an account? Sign up now

Forgot password?