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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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Panavision Int'l. v. Toeppen

938 F. Supp. 616 (C.D.Cal. Sept. 20, 1996)

In this case, the court held that a non-resident's registration by acts out of state of a domain name containing a federally registered trademark without permission of the trademark owner subjected the non-resident to suit where the owner had its principal place of business, and thus where the injury of defendant's conduct was felt. Panavision International, L.P. is a corporation with its principal place of business in California and the owner of the federally registered trademarks "Panavision" and "Panaflex." Defendant Toeppen is an Illinois resident who registered with NSI (based in Virginia) the domain names Panavision.com and Panaflex.com. Toeppen was not authorized by plaintiff to so use its marks. After registering these domain names, Toeppen created a website at panavision.com which featured aerial views of Pana Illinois. Toeppen did no business on the site. When plaintiff requested that Toeppen cease using the domain name, he demanded a payment of $13,000. Plaintiff responding by commencing this suit in California, charging defendant, inter alia, with federal and state dilution of trademark and unfair competition. In denying Toeppen's motion to dismiss for want of personal jurisdiction, the court held that its exercise of jurisdiction over the defendant comported with due process because his tortious conduct of improperly registering a domain name, even though done out of state, was expressly calculated to cause injury in California. The court thus focused on the effect of Toeppen's conduct, which, because it clearly and foreseeably and, in the court's view, intentionally caused injury to Panavision in California, was sufficient to permit the exercise of jurisdiction over him. Interestingly, the court did not rely on the existence of Toeppen's website, or its availability to California residents, to establish jurisdiction over Toeppen. Indeed, notwithstanding such site, the court expressly held that it did not have general jurisdiction over Toeppen for all purposes. As to specific jurisdiction, the court stated: " It is important to note that the Court does not hold that Toeppen is 'doing business' in California via the . Accordingly, cases such as Bensusan Restaurant Corp. v. King, 1996 WL 509716 (S.D.N.Y. 1996), Compuserve Inc. v. Patterson, 89 F.3d 1257 (6th Cir. 1996) and Pres-Kap, Inc. v. System One, 636 So. 2d 1351 (Fla. Dist. Ct. App. 1994) are not analogous to the case before the Court. The issue in those cases was whether contacts with the forum state via the (or, in Pres-Kap, via a computerized airline and hotel reservation system) were sufficient to confer specific jurisdiction. Although at first blush the cases seem similar to the case at bar, the semblance is superficial only. In each of those cases, the parties had legitimate businesses and legitimate legal disputes. Here, however, Toeppen is not conducting a business but is, according to Panavision, running a scam directed at California."

The full text of the decision discussed above can be found on a web site maintained by the John Marshall Law School.

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