Morgan, Lewis & Bockius LLP COUNSELORS AT LAW 101 Park Avenue New York, NY 10178-0060 212-309-6000 Fax: 212-309-6273 Stephen W. Feingold 212-309-6791 sfeingold@nnorganlewis.com September 19, 2000 VIA OVERNIGHT COURIER Eric Corley a/k/a Emmanuel Goldstein The Corrected Book of Records P.O. Box 752 Middle Island, New York 11953 Re: Unauthorized Use and Registration of GUINESSRECORDS.COM Our File Ref: 46411-0317 Dear Mr. Corley: This law firm represents Diageo plc ("Diageo"), the owner of the famous GUINNESS BOOK OF RECORDS, GUINNESS WORLD RECORDS and GUINNESS BOOK OF WORLD RECORDS trademarks, in connection with intellectual property and other matters. We write to object to your registration and use of the domain name GUINESSRECORDS.COM. As you know, the GUINNESS BOOK OF RECORDS, GUINNESS WORLD RECORDS and GUINNESS BOOK OF WORLD RECORDS marks have been used extensively in commerce throughout the United States and the world in connection with publications of world records and related merchandise. Our client also owns numerous U.S. federal and foreign trademark registrations featuring GUINNESS WORLD RECORDS and GUINNESS BOOK OF WORLD RECORDS, as well as the famous GUINNESS marks for beer. It appears that you have registered and are using the GUINESSRECORDS.COM domain name in connection with a website that displays a claimed "correction" to a 1999 GUINNESS BOOK OF RECORDS piece on Kevin Mitnick. While you may be entitled to express your views on the Kevin Mitnick case and how it has been portrayed in the 1999 GUINNESS BOOK OF RECORDS, you may not do so in a manner that is likely to cause consumer confusion, dilute the distinctiveness, and lessen the value of Diageo's famous GUINNESS marks. Courts have held that using a third party trademark in a domain name as a source identifier constitutes trademark infringement. See Planned Parenthood Federation of America, Inc. v. Bucci, No. 97 Civ. 0629 (KMW), 1997 WL 13313, at *11 (S.D.N.Y. Mar. 24, 1997) (defendant's use of plaintiff s trademark as part of a domain name for a website critical of plaintiff was not use as part of a communicative message but rather was use as a source identifier, and thus constituted trademark infringement). Your use of GUINESSRECORDS.COM as a deliberate misspelling of our client's domain name leads consumers away from the official GUINNESS BOOK OF RECORDS site, guinnessrecords.com. As such, your registration was obtained in bad faith, and has the effect of causing confusion, at least temporarily, in the marketplace. We are hopeful that having been apprised of the foregoing, you will voluntarily and promptly transfer the domain name (and any other domain names you may have featuring GUINNESS or any other Diageo mark) to our client. If you cooperate, Diageo will reimburse you for your actual, paid domain name registration fees. We have attached a Domain Name Assignment Agreement and Network Solution's domain name transfer form (which must be notarized) for this purpose. Please respond by September 22, 2000. At this time, Diageo reserves any and all of its rights with respect to your use of the GUINNESS BOOK OF RECORDS logos and stylized marks, and your unauthorized link to guinnessrecords.com. We await your prompt response. Sincerely, Stephen W. Feingold Enclosures cc: Alex Pattison (w/o encls.)