Designer Skin LLC v. S & L Vitamins, Inc., et al.
PaineWebber Inc. v. WWWPainewebber.com
1999 U.S. Dist Lexis 6552 (E.D.Va. April 9, 1999)
Plaintiff Paine Webber operates a web site at the domain name www.painewebber.com. Defendants, hoping to capitalize on typographical errors made by surfers seeking Paine Webber's web site, commenced operation of a web site at wwwpainewebber.com. Surfers who failed to type in the period found in plaintiff's domain name between the www and painewebber were unexpectedly taken to a web site featuring pornography.
Claiming, among other things, that defendants' actions constituted infringement of its famous mark in violation of 15 U.S.C. section 1115(c), plaintiff brought suit. On plaintiff's application, the court granted plaintiff a preliminary injunction, enjoining defendants from operating a web site at wwwpainewebber.com, using it to link or forward visitors to other sites, or transferring or otherwise terminating their ownership of this domain. The court also directed Network Solutions Inc. to put the domain name on hold pending resolution of the suit.
The court based such an award on its determination that plaintiff was likely to prevail on its federal dilution claim, given that plaintiff's mark "paine webber" was famous, and was being tarnished by its association, as a result of defendant's acts, with pornography. Indeed, defendants' acts of causing the domain name to automatically link to pornographic sites was held by the court likely to cause irreparable injury to plaintiff.