Designer Skin LLC v. S & L Vitamins, Inc., et al.
Worldsport Networks Limited v. Artinternet S.A. and Cedric Loison
Civ. Act. No. 99-CV-616, 1999 U.S. Dist. Lexis 6080 (E.D. Pa., April 28, 1999)
Defendants registered with non-party Network Solutions Inc. ("NSI"), and offered for sale, the domain name "worldsports.com." Admitting this conduct infringed plaintiff's trademark in "worldsport.com," defendants consented to the entry of an injunction.
The appropriate wording of the order embodying this relief was the subject of a dispute between plaintiff and NSI. Believing it was acting with the consent of all concerned, the court issued an order on March 4, 1999 that directed NSI to transfer registration of the "worldsports.com" domain from defendants to plaintiff. NSI had no objection to this aspect of the court's Order, which the court held it had the power to issue by virtue of NSI's participation, albeit innocently, in defendants' infringement. As a result, the court had the power to enjoin NSI from aiding defendants in future infringing activities.
The Order further provided, however, that NSI "shall not permit the registration of a domain name of any similar word, name or term by any party other than plaintiff." NSI objected to this aspect of the court's order, arguing that by requiring NSI to turn down registrations by any party, the Order impermissibly went beyond preventing future infringements by defendants.
At the heart of its application was NSI's prescreening procedures. At present, NSI checks all domain names submitted for registration to make sure the name is not registered to another party. Provided the name is not already registered, it will be awarded to the applicant with no additional prescreening if he represents that registration is not sought for an illegal or improper purpose. To comply with the court's order, NSI would have to change these procedures so as to be able to spot and restrict registration of those domain names similar to that owned by plaintiff, something it was loathe to do.
On NSI's application, the court agreed to modify its order so as to require NSI only to prevent future infringement by the defendants. Said the Court:
The March 4, 1999 Order, however, reaches beyond future infringement by Defendants, who have admitted their violations, but also extends to the registration of any domain name similar to Plaintiff's mark by any applicant. This would place an unreasonable burden on NSI without its consent. Accordingly, to the extent that it seeks relief from that part of the March 4, 1999 Order requiring it to refuse domain name registration to any entity other than Defendants, NSI's Petition to Modify will be granted.
In so far as it precludes NSI from cooperating in future infringements of Plaintiff's mark by Defendants, the injunction will remain in full force and effect.
The Court accordingly modified its March 4, 1999 Order so that it provided that NSI "shall not permit the registration by Defendants of any words, names or terms containing the following string of characters: world-sport, worldsports, world-sport, world-sports."