Factsheet for
VISA International Service Association
v.
JSL Corporation

Brief Look

Documents

Timeline

Brief Look

• VISA International Service Association seeks to obtain evisa.com domain name, $100,000 penalty.
• VISA International Service Association represented by Las Vegas law firm of Quirk and Tratos, and San Francisco law firm of Heller Ehrman, and by internal counsel; JSL represented by Las Vegas attorney Bradley Booke.
• VISA International Service Association has never filed a complaint with WIPO or any other ICANN sanctioned body about JSL's ownership of the evisa.com domain, despite being aware prior to filiing this suit for at least two years of JSL's use of the EVISA name and evisa.com domain.
• VISA International Service Association has never sent JSL any request to change its use of the EVISA mark or the EVISA.COM website, other than this lawsuit.
• JSL has used the EVISA name in interstate commerce since 1997 at www.evisa-jp.com and healthy.pair.com. JSL has been developing the evisa.com domain into a new online multilingual travel and information resource since August 1999.
• VISA International Service Association attempted to buy the domain name from JSL in August of 1999 through a private investigator, was turned down by JSL.
• In August of 1999, after being unsuccessful in buying the evisa.com domain name from JSL, and after being fully informed of JSL's extensive use of the EVISA mark in interstate commerce since 1997, VISA International Service Association filed trademark Intent To Use applications for the "EVISA", "E VISA" and "E-VISA" marks with the USPTO. The description of the services to be provided under these marks included the phrase "dissemination of financial information via a global information network", an extremely broad description that could be interpreted as overlapping with JSL's EVISA mark. JSL's website, on which the EVISA mark appears, provides currency calculators and page converters for Japanese Yen.
• In March 2001, shortly after JSL filed oppositions to VISA International Service Association's EVISA, E VISA and E-VISA trademark applications, VISA filed suit in federal court against JSL alleging trademark infringement, dilution and cybersquatting, and asking the judge to give VISA the "evisa.com" domain name.
• As of February 2002, VISA International Service Association has filed more 5,000 pages of documents with the court including:
  • Original complaint (includes 100+ pages detailing strength and fame of the VISA International Service Association's VISA mark)
  • Request for preliminary injunction (again including 100+ pages detailing the strength and fame of the VISA International Service Association VISA mark and organization).
    
  • Request for documents from JSL (65 document requests, 13 Interrogatories, including a request for all documents relating to hardware or software used by JSL on its websites that use the EVISA mark, and a request for all documents relating to investment in and capital of JSL, a list of all invoices ever received by JSL, and all available information on JSL's customers.)
  • Expert witness testimony including a 100+ page survey showing that consumers know that VISA is a famous credit card name.
  • Motion for summary judgment on dilution claim.
  • Motion to compel JSL to turn over all client-attorney records for any attorneys JSL has used or will use.
  • Oppositions to all motions by JSL.
• JSL has produced more than 230 megabytes of requested documents, substantially answering all of VISA International Service Association's document requests. Visa has objected to every document request by JSL and to date has produced no substantial information for discovery. In particular:
  • VISA has refused to produce any emails associated with this case.
  • VISA has refused to allow deposition by JSL of the executive that is most knowledgable about the case.
  • VISA has refused to provide information about other lawsuits it is prosecuting or has prosecuted against other domain holders.
• VISA International Service Association's chairman Carl Pascarella, has described the corporate culture of Visa as focused on "killing" competitors. See this quotation from the website that Visa created to give its side of the ongoing suit against Visa by the Department of Justice.

Documents

Here are two of our more important legal filings. We are unable to provide any copies of filings from VISA because VISA has refused to provide electronic copies of any documents.

DEFENDANT'S OPPOSITION TO PLAINTIFF'S MOTION FOR A PRELIMINARY INJUNCTION; MEMORANDUM OF POINTS AND AUTHORITIES

DEFENDANT JSL'S OPPOSITION TO PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT ON COUNT V-- and --REPLY IN SUPPORT OF DEFENDANT JSL'S MOTION FOR PARTIAL SUMMARY JUDGMENT ON COUNT V

Timeline

For a history of the sites in question, see also the records at the Internet Archives:
evisa-jp.com
healthy.pair.com
jserv.com
evisa.com

Nov-1996: Joe Orr (founder of JSL) tries to register evisa.com for use with Eikaiwa Visa (Mr. Orr's English language school in Japan - "Eikaiwa" means "English conversation"). Evisa.com is already taken, so Mr. Orr registers evisa-jp.com.

Dec-1996: Mr. Orr founds JSL Corporation as a provider of translation, web design, and web programming. JSL stands for "Japan Service Link".

Feb-1997: JSL Corporation registers the jserv.com domain for use by JSL, creates JSL website.

Jun-1997: In about June of 1997, JSL Corporation takes ownership of the evisa-jp.com site and replaces the Eikaiwa Visa site with the new EVISA translation service. Wheras JSL is aimed at US businesses, EVISA targets Japanese businesses, and is also the mark under which JSL provides its Japanese Translation Service. At roughly the same time, JSL Corp creates the EVISA J-Medline Gateway, a popular (2000+ visits per day) resource for Japanese health professionals. More information about EVISA's J-Medline Gateway. Weblogs from JSL's webserver show that many of the users of EVISA's J Medline Gateway are located in the United States, thereby establishing use of the mark by JSL in interstate commerce.

Aug-1997: Mr. Orr finds that the evisa.com domain is now available and registers it for JSL Corporation. Mr. Orr intends to use the evisa.com domain to broaden the services offered by JSL to other languages, and to add multilingual content including language learning applications created by Mr. Orr for Eikaiwa Visa.

Apr-1999: Mr. Orr returns to the US from Japan, focuses on building JSL's translation and multilingual development. However, JSL's initial contracts involve mainly monolingual development, so plans to develop the multilingual evisa.com site are put on hold. Mr. Orr begins development of the program which later evolves into the innovative Screenbook Maker program.

Aug-1999: Visa International Service Association opens "evisa" site at non-domain mapped IP address. Announces launch of "evisa" service.

Aug-1999: Mr. Orr is contacted by a private investigator hired by Visa International Service Association. This investigator inquires whether the domain is for sale. Mr. Orr informs him that it is not. The investigator continues to contact Mr. Orr offering larger sums of money for the domain, reaching $90,000. Mr. Orr turns down all offers to sell, citing his plans to develop a multilingual resource site. The final communication with the investigator is a phone call in which, pressed by the investigator to put a price on the domain, Mr. Orr tells the investigator that given JSL's lack of funds to develop everything that it wants to develop, JSL would be willing to sell the name rights to EVISA including the domain, for $250,000. Mr. Orr tells the investigator that this offer will be good for one week, after which JSL will not again offer to sell any rights to the EVISA name.

Aug-1999: Visa International Service Association's "evisa" site name is changed to "E-Visa", Visa acquires "e-visa.com" domain from Florida law firm, maps "E-Visa" site to evisa.com.

Aug-1999: Alarmed by Visa International Service Association's determination to acquire the evisa.com domain name, Mr. Orr seeks the advice of trademark expert Parker Bagley of the New York law firm Milbank Tweed Hadley and McCoy. Mr. Orr also commences the long-delayed development of the evisa.com site. Mr. Bagley examines the site, discusses development plans with Mr. Orr, and produces an opinion letter stating that JSL's rights to the domain and name are beyond dispute.

Sep-1999: Via the evisa.com site, JSL extends its Japanese-English translation and web design services to include Russian and Spanish. In late 1999, JSL also puts a version of the dmoz.org directory on the site, rearranged for easier access by speakers of languages other than English.

Oct-1999: JSL corporation files a trademark application for EVISA with the USPTO. Upon filing, JSL discovers that Visa International Service Association has already filed ITU applications for EVISA, E-VISA and E VISA in August 1999. Visa International's trademark application includes, besides "Broad based financial services", the extremely broad phrase "dissemination of financial information via a global information network" which JSL assumes is directed towards JSL's completely unrelated use of the EVISA mark for translation and web development. In other words JSL assumes that Visa's application has been created not with the intent of protecting or extending the VISA mark, but rather as a way of preempting JSL's established rights to the EVISA mark, therefore obtaining the evisa.com domain, which Visa International has already shown that it is determined to acquire.

Oct-2000: USPTO publishes Visa International's EVISA mark for opposition.

Feb-2001: After offering to let Visa International Service Association's EVISA, E VISA and E-VISA marks go unopposed in return for Visa not opposing JSL's mark and for Visa paying JSL's legal fees, JSL receives a refusal from Visa International, and files oppositions to Visa's E-VISA, E VISA and EVISA marks.

Mar-2001: Visa files suit in Las Vegas federal court, charging JSL with trademark infringement of Visa's VISA and EVISA marks, and with cybersquatting and trademark dilution.

Apr-2001: Visa International Service Association files motion for preliminary injunction, asks judge to give Visa International the evisa.com domain name.

Jun-2001: Citing Visa International Service Association's four year delay in seeking a remedy from the court, and the unlikelihood of Visa International prevailing on its infringement and cybersquatting claims, the court denies Visa International's motion for preliminary injunction.

May-2001: USPTO issues Notice of Publication for JSL's EVISA mark, publishes for opposition.

Oct-2001: Visa International Service Association files opposition with USPTO to JSL's application for EVISA mark.