Church takes name-game to court

The New Zealand Herald/July 9, 2004
By Peter Griffin

From the back bedroom of his rural home in Kerikeri, Robert Sintes devotes his time to a noble cause - trying to re-unite lost or adopted children with their family members.

But 60-year-old Sintes has bought himself a big fight - with the Church of Jesus Christ of Latter-day Saints (the Mormons).

The row is over a tiny piece of the internet real estate Sintes has reserved for his genealogy people-tracing service.

But the Mormons are also in the genealogy game.

They have a handful of locally granted trademarks of the term "familysearch" and are trying to stop Sintes using the term.

Sintes has defended himself in court, arguing that the words "family" and "search" are common words often used together by people making internet searches.

"To deny such use would have the effect of preventing the use of descriptive words forming part of my own language, and there is supporting evidence leading to a common tenet of trademark law, that you can never take words out of the English language for your exclusive use," says Sintes.

He also argues that denying use of the term "familysearch" in metatags - the information labels that direct search engine queries through the likes of Google and Yahoo to the appropriate sites - would stop sites being discovered by web surfers.

Sintes set up his www.familysearch.co.nz website to advertise his services, run through the New Zealand Family Tracing Service.

He was sued by Intellectual Reserve Inc and the Corporate of the President of the Church of Jesus Christ of Latter-day Saints, both from Utah in the United States.

Sintes, who came to New Zealand from Britain with his family after World War II, became interested in genealogy a few years ago when he began tracing his grandfather's siblings and their children.

Through the internet he eventually tracked down family members. He then joined an internet-based voluntary helpdesk to aid others in their searches. That work led to his starting his own people-tracing operation.

"I learned, somewhat to my surprise, that helping others in this way was worth more to me than any dollar I ever made," says Sintes.

He has since reunited hundreds of adopted brothers and sisters, birth mothers and fathers.

Sintes charged $20 for doing traces but had to raise the fee to $75 when the Government tripled its document fee to $30 a document and communications costs increased. But he is not doing his work to make money.

"I made a grand total of $9300 last year," he says.

Sintes tried to placate the Mormons by changing the website to www.familytracing.co.nz. He has kept the www.familysearch.co.nz address, which he has paid for but is not actively using.

That did not satisfy the Mormons in Salt Lake City. Although www.familysearch.org.nz and www.familysearch.net.nz are still available in the New Zealand domain name register, the church is demanding Sintes hand over ownership of www.familysearch.co.nz.

So what is the Mormon fascination with genealogy?

The Mormons are the world's most active genealogists and are extensively using the internet to gather and organise names of the deceased according to their religious beliefs.

The church believes that saving "ordinances" must be made available to every person who has ever lived so he or she can be saved.

Those ordinances can include baptism and confirmation and can be administered by the church to the deceased - providing there's a name to go on.

It is a religious practice that has greatly aided genealogists of all persuasions - but has offended some annoyed that their ancestors have been baptised by proxy.

In 2001 it was revealed that the Government had considered handing four million births and deaths records to the Mormons to save money on preserving the documents.

The church planned to microfilm the records and keep the original film in Salt Lake City, and to charge the Government $500,000 for its efforts.

Instead, the Government tripled document fees and awarded a $3.8 million contract to IT giant EDS to create electronic copies of the millions of certificates.

At a court hearing in Whangarei this week Sintes offered to give up the familysearch.co.nz address when he was finished with it and not to sell it to anybody else. That offer was rejected.

The Mormons want the website address now, and seem determined to continue with their legal action.

The Simpson Grierson lawyer representing the Mormons, John Shackleton, would not comment on the case.

But he gave the Herald a letter he sent to the 20/20 television current affairs programme when it tried to do a story on Sintes' case.

He says the church has exclusive rights to the name and trademark "familysearch" and has been promoting its name in New Zealand for more than 10 years.

"We have requested that Mr Sintes pass over the ownership of the domain name familysearch.co.nz to the church, but he has not done so," wrote Shackleton.

And that is the crux of the matter. Sintes is holding on to the domain, which he believes is rightfully his.

Trademarks do not extend to the .nz domain, it is not clear whether they provide protection for the words preceding the domain in the online environment.

Lawyers are watching the case with interest.

Chapman Tripp partner and intellectual property expert Robert Bycroft said trademark law was "colliding" with the internet because it was a country-specific notion operating in a globalised world.

"If you want to know what global is, just Google your own name and ponder the feelings of surprise and horror when you realise what your personal moniker means around the world," says Bycroft.

"Conceivably you could have 20 or 100 people in their own countries owning the same brand, but then they go on the net. They will then have an argument."

Bycroft believes a change to the Trademarks Act will eventually be changed to sort out the problem, but he expects more mainstream conflicts to arise before then.

The Copyright Act is also under review to be adapted for the digital age and the Crimes Amendment Act and the Electronic Transactions Act were introduced to give documents and processes the same legal standing in the cyber world.

A spokeswoman for the Intellectual Property Office of New Zealand said the term "familysearch" was deemed to be distinctive enough at the time to warrant the trademarks being granted.

Sintes could have applied for the trademarks to be revoked, but the court action now took precedence.

But Sintes' argument has merit to Frank March, a technology adviser to the Ministry of Economic Development and a former chairman of the Dot NZ Oversight Committee.

"A person with a legitimate right to a domain name in the.nz space is having to go to court under circumstances where he really can't afford it," said March.

He said the Mormons' case against Sintes was "petty."

"It's an excellent example of why New Zealand needs a disputes resolution policy.

"His point about restricting use of the English language on the net is well made. I happen to agree with it."

No provisions for resolving disputes related to domain names now exist, but Sintes' case is understood to have accelerated moves to build a framework.

Sintes says he will fight the Mormons in the courts. He has been told it would cost him $70,000 if he employed a lawyer.

"I'll fight it all the way if I have to," he says.

Meanwhile, his work will continue. The testimonials on Sintes' website reveal the benefits his research has brought to families.

Among them is one from Lorraine in England. Sintes found Lorraine's brother. The siblings had been separated at birth.

"It's hard to believe that in this day and age anyone could do this for me," wrote Lorraine.

"You have restored my faith in the human race ... I can't thank you enough."