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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

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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:

First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the use must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

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.

A website's domain name signifies its source of origin, and is therefore an important signal to internet users who are seeking to locate web resources. ... Because of the importance of a domain name in identifying the source of a website, many courts have held that the use of a trademark within the domain name of a URL can constitute a trademark violation. ... However, the text that follows the domain name in a URL -- in other words, the text that comes after the slash -- serves a different function. This additional text, often referred to as the "path" of the URL, merely shows how the website's data is organized within the host computer's files. ... Nothing in the postdomain path of a URL indicates a website's source of origin, and Patmont has cited no case in which the use of a trademark within a URL's path formed the basis of a trademark violation. (Citations omitted).

The full text of this decision can be found on a website maintained by David Loundy.

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