Designer Skin LLC v. S & L Vitamins, Inc., et al.
Patmont Motor Works, Inc. v. Gateway Marine, Inc., et al.
No. C96-2703 TEH, 1997 U.S. Dist. Lexis 20877 (N.D. Cal. December 18, 1997)
Domain Name/Trademark Infringement. Plaintiff owned the federally registered trademark "Go-Ped", under which it manufactured a line of motor scooters. Defendant operated a web site on which he offered plaintiff's Go-Ped scooters for sale. In so doing, he used plaintiff's trademark to describe the products he offered for sale (i.e. Go-Ped Scooters). Defendant's web site also contained various statements disparaging plaintiff's management and products. The Court held that this was a fair use of plaintiff's mark which did not constitute trademark infringement.
To constitute a nominative fair use, defendant's use of the mark must meet three factors:
The Court found that defendant's use of the Go-Ped mark meet each of the factors. The Go-Ped Scooters sold by defendant were "not identifiable" without use of the mark. The Court also found that the website only used the mark to the extent necessary to sell the product (it did not, for example, use any distinctive 'go ped' logo). Lastly, the Court found that no consumer could believe that defendant's site was sponsored by plaintiff, given the disparaging comments contained in the site about plaintiff's product and management.
One of the pages of defendant's site was found at "www.idiosync.com/goped" (emphasis added). The Court held that such use of plaintiff's trademark in the "path" or "second level" of a domain name does not and cannot constitute trademark infringement because the "path" or "second level" does not identify the origin of the web site, but rather only describes the site's organization.
The full text of this decision can be found on a website maintained by David Loundy.