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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...

Anticybersquatting Consumer Protection Act - Internet Library of Law and Court Decisions - Updated October 8, 2008

This section of the Internet Law Library contains a host of court decisions that address whether a party's use of another's trademark in a domain name runs afoul of the Anticybersquatting Consumer Protection Act.  Analyzed court decisions address both commercial uses of the mark - in a domain operated by a competitor, by an affiliate of the mark holder, by a cybersquatter looking to profit thereon, or by a party itself holding rights in the mark in question - as well as noncommercial uses of the mark - such as in the domain of a complaint or gripe site.  Cases also address a number of issues that arise under the Anticybersquatting Consumer Protection Act, including whether the domain owner acted with a bad faith intent to profit from his use of another's mark in his domain name, and the applicability of the Anticybersquatting Consumer Protection Act to 'typo' domains.

469 F.3d 534, No. 05-2359 (6th Cir., November 27, 2006)

The Sixth Circuit affirms the District Court's award of summary judgment to plaintiffs, and holds that defendant Bob D'Amato infringed and diluted plaintiffs' famous "Audi," "Quatro," and Audi Four Ring Logo marks, and violated the Anticybersquating Consumer Protection Act.  Defendant was held to have infringed plaintiffs' marks by operating a website at the domain www.audisport.com, at which both goods such as hats and shirts bearing the "Audi Sport" logo, and advertising space, were offered for sale.  The Sixth Circuit accordingly affirmed the District Court's decision, which permanently enjoined defendant from making continued infringing use of Audi's trademarks, directed D'Amato to transfer the audisport.com domain to plaintiffs, and awarded plaintiffs Audi AG ("Audi") and Volkswagen of America Inc. ("Volkswagen") attorneys' fees as the prevailing party.  The Court reached this result notwithstanding both defendant's claim that his use of Audi's marks on his website in connection with the sale of goods was orally authorized by an Audi dealer, and his placement of a disclaimer on defendant's site after receipt of a cease and desist letter.  A written agreement between Audi and the dealer made clear that the dealer lacked authority to so authorize defendant's use of Audi's trademarks.

403 F.3d 672 (9th Cir., April 4, 2005)

In this domain name dispute, the Ninth Circuit holds that the use of another’s trademark as the domain name for a non-commercial gripe site does not constitute trademark infringement or dilution in violation of the Lanham Act.  To run afoul of the Lanham Act, a mark must be used in connection with the sale of goods or services.  A web site which is merely critical of another’s goods or services does not fit this bill.  The Ninth Circuit accordingly affirmed the District Court’s grant of summary judgment, dismissing plaintiff’s trademark infringement and dilution claims.

The Ninth Circuit reversed, however, so much of the District Court’s decision which dismissed plaintiff’s Anticybersquatting Consumer Protection Act (“ACPA”) claim.  The ACPA does not have a commercial use requirement, and, accordingly, establishing that the mark was used as the domain for a non-commercial gripe site does not absolve the griper from potential liability under the ACPA.  Because that was the basis on which the lower court dismissed plaintiff’s ACPA claim, its dismissal was reversed.  The matter was remanded to the District Court to determine whether defendant used the mark with a bad faith intent to profit therefrom, in violation of the ACPA.

112 F. Supp. 2d 502, Civil Action No.99-550-A (E.D.Va., March 3, 2000)

The court holds that the provisions of the Anticybersquatting Consumer Protection Act that permit a trademark holder to proceed with an in rem action against a domain name do not violate the Due Process clause of the United States Constitution.

157 F. Supp. 2d 549, Civ. Act. No. 00-1793 (E.D.Pa. August 7, 2001)

Plaintiff, holder of a federally registered trademark in the mark "Chambord" for sale of a liqueur and assorted food products, brought this action under the Anticybersquatting Consumer Protection Act, and for trademark infringement and dilution, against defendant, who holds a federally registered trademark in the mark "Chambord" for the sale of coffee makers. The action was triggered by defendant's registration of the domain name "chambord.com," at which it planned to, but had not yet offered for sale its coffee makers. The court dismissed the action, holding, inter alia, that (a) the ACPA claim failed because defendant had not acted in bad faith in continuing to utilize its federally registered mark for the sale of coffee makers; (b) the trademark infringement claim failed because the initial interest confusion doctrine (a consumer looking for company's As site finds company B's instead) was inapplicable to situations where the parties in question did not offer competing goods; and (c) the dilution act claim failed because plaintiff's mark was not famous at the time defendant commenced its use of the mark.

382 F.3d 774 (8th Cir., September 1, 2004)

Affirming the District Court, the Eighth Circuit holds that plaintiffs are likely to prevail on Anticybersquatting Consumer Protection Act ("ACPA") claims arising out of defendant's registration of numerous domain names incorporating plaintiffs' trademarks, which domains defendant linked to a website advocating a ban on abortions.  This anti-abortion website also contained links to other sites which solicited funds, via the sale of goods or donations, to aid anti-abortion causes.  In reaching this result, the Eighth Circuit rejected defendant's claim that his use of plaintiffs' trademarks in this fashion was protected by the First Amendment.

Civ. Act. No. H-00-450, 129 F. Supp.2d 1033 (S.D. Tex., January 24, 2001) aff'd., 286 F.3d 270 (5th Cir., 2002)

In this domain name dispute, Court enjoined defendants from continuing to utilize the domain name ernestandjuliogallo.com, and directed them to transfer the name to plaintiff E. and J. Gallo Winery ("Gallo"), which holds a trademark in the mark "Ernest and Julio Gallo." The court further awarded Gallo statutory damages under the Anticybersquatting Consumer Protection Act ("ACPA") in the amount of $25,000 as a result, inter alia, of defendants' registration of the domain name at issue, and their use of that domain name to operate a web site that commented on this lawsuit, and contained articles critical of alcohol consumption. Defendants had also registered some 2000 other domain names, a number of which contained the names of famous companies, cities and buildings.

2000 U.S. Dist. LEXIS 15719 (E.D. Pa., October 30, 2000)

Court issues permanent injunction under the Anticybersquatting Consumer Protection Act ("ACPA"), enjoining defendant, described by the court as a "notorious cybersquatter," from continuing to operate web sites at domains containing common misspellings of plaintiff's registered service marks. The court also awarded plaintiff $530,653.34, which included both the maximum $100,000 statutory award for each domain name improperly used, as well as plaintiff's attorney's fees and costs.

Case No. CV 04-2619AHM (MANx) (C.D. Ca., May, 2004)

Finding plaintiff likely to prevail on claims of trademark infringement and cybersquatting, Court issues preliminary injunction directing defendants, purported competitors operating a business under the same name as plaintiff, to transfer to plaintiff 74 domain names which contain plaintiff's trademarks or variations thereof, during the pendency of this suit.  The Court further directed plaintiff to remove the existing content on the sites found at those domains and replace it with an "under construction" notification, and pay all registration fees for these domains which may become due.  The Court reached this result notwithstanding the fact that defendants had registered the main domain at issue, gardenoflife.com, before plaintiff commenced its use of that mark in commerce.  On this motion, the Court rejected defendants' claim that they had been using the mark "gardenoflife" in commerce continuously since 1974.  The Court found instead that defendants' use of the mark did not commence until after plaintiff's.  As a result, and because defendants registered many of the domains at issue after plaintiff had entered into negotiations with defendants for the purchase of the gardenoflife.com name, which domains contained variations of plaintiffs marks unrelated to defendants' business, the court found plaintiff likely to prevail on claims of trademark infringement and cyberquatting.

250 F.Supp.2d 610 (E.D. Va., Feb. 5, 2003)

In this in rem action commenced under the Anticybersquatting Consumer Protection Act, the Court holds that it can direct a top level domain registry – here Verisign – located in Virginia to cancel the domain registration of a domain found to be registered in violation of the ACPA.  In this case, the Court directed that such cancellation be effected unilaterally by the domain registry, which was directed to place the domain name on ‘hold’ status, thereby rendering it inactive, until such time as it is transferred to the trademark holder.

The Court holds that such relief is appropriate here, given the fact that the Korean domain name registrar with whom the domain name at issue was registered refused to transfer the domain as directed in a prior judgment issued by the Court.  After the Court issued this order, the domain registrant obtained an injunction from a Korean court, enjoining the registrar from transferring the domain.  The Korean registrar, in the face of this subsequent order, refused to comply with the US Court’s direction to transfer the domain to plaintiff.

The Court, on default, found that the domain registrant had violated the ACPA by registering the domain name at issue – globalsantafe.com – one day after Global Marine and SantaFe announced their agreement to merge into an entity to be called GlobalSantaFe.

Civil Action No. 03-11437-GAO, 2005 U.S. Dist. Lexis 2804 (D. Mass., February 24, 2005)

Court finds that a disgruntled customer violated the Anticybersquatting Consumer Protection Act ("ACPA") by registering a domain name containing defendant Microfinancial's trademark, at which domain plaintiff operated a website critical of defendant.  The Court determined that plaintiff had registered the domain name with a bad faith intent to profit therefrom, in large part because plaintiff had offered to transfer the domain to Microfinancial if it refunded certain lease payments plaintiff had made which were at the heart of his dispute with defendant, as well as funds plaintiff claims defendant improperly received from third parties.  The Court accordingly granted Microfinancial summary judgment on its ACPA claim.

360 F. Supp. 2d 768 (E.D. Va., August 5, 2004)

Court holds plaintiff infringed defendants' trademarks, and violated the Anticybersquatting Consumer Protection Act ("ACPA"), as a result of his operation of a 'typo' web site at the domain Fallwell.com at which he criticized the Rev. Falwell's views on homosexuality, and expressed his own contrary views on that subject.  At one time, the site informed interested visitors of a book plaintiff considered relevant to this discussion, and provided a link to Amazon.com at which they could purchase it.  The Court reached this result notwithstanding the fact that plaintiff's site featured a prominent disclaimer, advising users that it was not defendants' official site.

447 F. Supp. 2d 941 (W.D. Wis., September 1, 2006)

Court denies summary judgment motion by Lands' End "affiliates," seeking dismissal of claims arising out of affiliates' undisclosed use of typo domains to redirect traffic to Lands' End's website, and to profit on the sales made to consumers delivered to Lands' End's site in this fashion.  As affiliates, defendants received a percentage of sales made by Lands' End to consumers they brought to Lands' End's website.  The Court accordingly allowed plaintiff to proceed with claims that defendants' conduct violated the Anticybersquatting Consumer Protection Act ("ACPA") and breached the parties' affiliate agreements.  The Court also allowed plaintiff to pursue fraud claims arising out of defendants' concealment of this use of Lands' End typo domains.  The Court did grant so much of the defendants' summary judgment motion which sought dismissal of false advertising claims plaintiff advanced under both the Lanham Act and Wisconsin state law, holding that defendants did not mislead consumers by their conduct.  Consumers were unaware of the redirection, and received exactly what they expected to receive - Lands' End merchandise from Lands' End.

2001 WL 1035140 (S.D.N.Y. September 19, 2001)

In this domain name dispute, Court grants Mattel, the holder of numerous trademarks in and including the word "Barbie," summary judgment, holding that defendant violated the Anticybersquatting Consumer Protection Act ("ACPA") by registering the domain names "barbiesbeachwear.com" and "barbiesclothing.com," causing those who accessed such domains to view a commercial web site selling women's apparel operated by the defendant, and effectuating a single $10 sale of merchandise to an investigator hired by plaintiff who accessed one of the domains in question. The court ordered defendant to relinquish the domain names at issue, and to pay Mattel $2000 in damages. The court declined to award Mattel its attorneys' fees.

314 F. Supp. 2d 362 (D.N.J., March 30, 2004)

Court holds that defendant's use of plaintiff's service mark in the domain names of noncommercial web sites critical of plaintiff does not constitute a violation of the Anticybersquatting Consumer Protection Act ("ACPA") because this was a "bona fide noncommercial" use of the mark which defendant had reasonable grounds to believe was lawful.  In reaching this result, the Court determined that defendant was motivated not by an intent to use his critical web site to extract money from plaintiff, but instead by a desire to express his dissatisfaction with plaintiff's alleged conduct.  The Court accordingly granted defendant's motion for partial summary judgment, and dismissed plaintiff's ACPA claim.  Left for another day were libel and trade libel claims arising out of the sites' content, as well as a Federal Dilution Act claim under 15 U.S.C. § 1125(c) arising out of the defendant's use of plaintiff's service mark.

378 F. Supp.2d 715 (E.D. Va., July 14, 2005)

Court denies motion to dismiss made by foreign domain name registrant, and allows trademark owner to proceed with in rem action, seeking relief under both the Anticybersquatting Consumer Protection Act, and the Lanham Act for trademark infringement.  The ACPA gives a trademark holder the right to proceed in rem to have a domain name transferred to it, or its registration cancelled, and allows a United States court to exercise jurisdiction over a res – the domain name – where the registry or registrar for such domain name is located in the United States.  This is true notwithstanding the fact that the United States court lacks personal jurisdiction over the domain name registrant.

263 F.3d 359, No. 00-1918 (4th Cir., August 23, 2001)

The Fourth Circuit, affirming the decision of the district court below, held that defendant was guilty of service mark infringement and unfair competition, and had violated the Anticybersquatting Consumer Protection Act ("ACPA"), as a result of his creation and operation of a web site at the domain www.peta.org, which contained plaintiff's federally registered service mark "peta." In reaching this conclusion, the Fourth Circuit rejected defendant's defense that his site, titled "People Eating Tasty Animals," was a parody of plaintiff's "People for the Ethical Treatment of Animals" organization because the domain name containing plaintiff's mark did not appear simultaneously with that aspect of the web site containing the parody of plaintiff's organization.

Docket Nos. 98-7452 (L), 98-7538 (XAP), 202 F.3d 489(2d Cir. Feb. 2, 2000)

In this domain name dispute, the Second Circuit affirmed the holding of the District Court, which enjoined plaintiff Sporty's Farm LLC ("Farm") from continuing to use a domain name containing defendant's federally registered trademark "Sporty's" and directed plaintiff to take such steps as were necessary to transfer the domain name at issue to defendant. The Second Circuit's decision was based on the newly enacted Anticybersquatting Consumer Protection Act, and not on the Federal Trademark Dilution Act, which had been relied upon by the District Court below.

368 F.3d 433 (5th Cir. 2004)

Reversing the District Court, the Fifth Circuit holds that defendant's operation of a non-commercial gripe site at a domain which varied from plaintiff's mark solely by the subtraction of the letter "s" did not violate either the Federal or Texas State Dilution Acts, nor did it run afoul of the Anticybersquatting Consumer Protection Act ("ACPA").  The Court determined that defendant's actions were not motivated by the requisite bad faith intent to profit from the use of the mark, but rather, by defendant's desire to inform the public about his dispute with plaintiff and the services it offered him.  The absence of such bad faith was fatal to plaintiff's ACPA claim.  Plaintiff's Federal Dilution Act claim failed because defendant's use was not commercial.

188 F. Supp. 2d 110 (D. Mass., Mar. 6, 2002)

Court holds that defendant violated the Anticybersquatting Consumer Protection Act by registering sixteen domain names containing misspellings of plaintiff’s trademark, at which domains defendant operated web sites that voiced his complaints about plaintiff’s business practices.  Defendant did not offer any goods or services for sale at these web sites, and there is no mention in the record of any attempts by defendant to try and sell the domain names to the plaintiff.

No. 07-4095 (10th Cir., May 29, 2008)

Affirming the decision of the district court below, the Tenth Circuit dismisses trademark infringement, unfair competition and cybersquatting claims brought by plaintiff Utah Lighthouse Ministry as a result of defendant Allen Wyatt’s operation of a non-commercial website at domains containing the names of both plaintiff and its principals, which website in turn linked to articles criticizing plaintiff’s principals found on defendant Fair’s website.  Plaintiff was created to criticize the Church of Jesus Christ of Latter-day Saints.  Fair is an organization that responds to criticisms of that Church.  Wyatt’s website was designed to look like that of the plaintiff, incorporating elements and content found thereon with slight alterations, and contained no disclaimer as to the site’s affiliation with the plaintiff. 

The Tenth Circuit affirmed the dismissal of plaintiff’s Lanham Act trademark infringement and unfair competition claims on the grounds that plaintiff had failed to establish that defendant had used its trademark in commerce.  In reaching this result, the Court held that links from Wyatt’s website to that of Fair, at which books were offered for sale, were too attenuated to constitute a commercial use because the links took the user to pages of that site containing criticism of plaintiff, and not to those pages of the site at which books were offered for sale.  The Court further held that the use of plaintiff’s trademark in the operation of a site that diverted consumers from plaintiff’s commercial site to a non-commercial site was not a commercial use sufficient to sustain a Lanham Act claim.  In reaching this result, the Court refused to follow a contrary decision of the Fourth Circuit. 

The Tenth Circuit also dismissed plaintiff’s trademark infringement claim on the ground that plaintiff failed to establish the requisite likelihood of consumer confusion arising out of defendant Wyatt’s operation of his site.  The Court relied both on its analysis of the traditional likelihood of confusion factors, as well as its determination that defendant’s site was a successful parody of that of the plaintiff.

Finally, the Tenth Circuit dismissed plaintiff’s cybersquatting claim, advanced under the Anticybersquatting Consumer Protection Act (“ACPA”), on the ground that the defendants lacked the requisite bad faith intent to profit from their use of plaintiff’s mark, given their site was non-commercial, and intended to criticize plaintiff.   The Tenth Circuit held that such claim also failed because defendant Wyatt fell within the protection of the ACPA’s safe-harbor provision, which precludes a finding of bad faith intent to profit if ‘the court determines that the [defendant] believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.’

238 F.3d 262 (4th Cir., January 22, 2001)

The Fourth Circuit, affirming the determination of the district court below, held that plaintiff violated the Anticybersquatting Consumer Protection Act ("ACPA") by registering and offering to sell to defendant the domain name vw.net, which contains defendant Volkswagen's famous "vw" mark.

Quick Hits

America Online Inc. v. AOL.org
259 F.Supp.2d 449 (E.D. Va., April 23, 2003)

In this in rem action commenced under the Anticybersquatting Consumer Protection Act (“ACPA”), the Court modifies its previously issued judgment, and directs a Virginia based domain registry – Public Interest Registry – to unilaterally cancel the registration of the domain name AOL.org and transfer it to plaintiff America Online.  The Court had previously found that this domain had been registered in violation of the ACPA, and had issued a judgment directing it domain registrar to transfer it to America Online.  The domain registrar, a Chinese entity, refused to comply, instead permitting the domain registrant to transfer the domain to another domain registrar, this time located in Korea.  This registrar too refused to transfer the domain to America Online.  Accordingly, the Court held that under the ACPA it was empowered to unilaterally direct a domain registry to cancel a domain, and transfer it to the trademark holder.

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Ballistic Products Inc. v. Precision Reloading, Inc.
2003 WL 21754816, Civil No. 03-2950 ADM/AJB (D. Minn., July 28, 2003)

Court finds plaintiff Ballistic Products Inc. likely to prevail on its claim that its competitor - defendant Precision Reloading Inc. – violated the  Anticybersquatting Consumer Protection Act as a result of its registration of two “typo” domain names, containing misspellings of plaintiff’s then common law trademark.  Defendants registered these domain names to “attract potential customers” and pointed them to their own web site, at precisionreloading.com, where they sold competing products.  Finding such actions likely to confuse consumers, the Court issued a preliminary injunction, enjoining defendants from further use of the “typo” domains, and directed their immediate transfer to the plaintiff.

The Court further held that it could assert personal jurisdiction over the non-resident defendants.  The Court held that defendant Precision Reloading Inc. had sufficient contact with Minnesota to permit the assertion of general personal jurisdiction over it.  It had over the last 18 months sold over $21,000 in product to Minnesota customers, and purchased over $32,000 of merchandise from Minnesota sellers.  It had also distributed 223 catalogues to Minnesota residents, advertising its products, advertised nationally in publications sent to Minnesota and operated a website that received numerous ‘hits’ some of which were likely to be from Minnesota residents.  Specific jurisdiction could be exercised over both Precision and the remaining defendants under the ‘effects test’ articulated by the Supreme Court in Calder v. Jones.  The Corporate defendants committed tortuous misconduct directed against the plaintiff, a Minnesota company, the effects of which would be felt by that company in Minnesota.  Said the Court:

Defendants’ registration of domain names that are slight misspellings of Ballistic’s trademark and domain name was an action directed at Minnesota such that Defendants’ should ‘reasonably anticipate being haled into court’ in Minnesota. … ‘[a]n individual injured in Minnesota need not got to Connecticut to seek redress from persons who, though remaining in Connecticut, knowingly caused the injury in Minnesota.’ 

The Court held that the individual defendants, officers of Precision, “are primary participants in an alleged wrongdoing intentionally directed at a forum state resident, and jurisdiction over them is proper on that basis.”  It was the individual defendants who came up with the idea of registering the ‘typo’ domain names at issue to attract business for the defendant Precision Reloading. 

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BroadBridge Media, LLC v. Hypercd.com
106 F.Supp. 2d 505, 00 CV 2884 (RO) (S.D.N.Y. July 7, 2000)

In this in rem action brought under the Anticybersquatting Consumer Protection Act (“ACPA”), the court issues a preliminary injunction, directing Register.com to transfer the registration of the domain name at issue – Hypercd.com – to plaintiff BroadBridge Media, holder of a federally registered trademark in the mark Hypercd.  In reaching this result, the Court found plaintiff likely to establish that the current registrant of that domain name had registered the name with a bad faith intent to profit thereon.  Through inadvertence, BroadBridge had let its registration in the domain, which it used in connection with its business activities, to lapse.  Among other things, plaintiff uses the mark in connection with its business of converting analog audio files into digital files, which are, in turn, burned onto cds.  The current registrant claimed that he was brainstorming for new product names and corresponding domain names, and hit upon hypercd, which he planned to use in connection with a product the company he was then employed with was developing.   The court rested its determination that the registrant was acting in bad faith in large part on his counteroffers to sell and/or rent the domain for sums far in excess of any investment he had made therein.  These counteroffers were made in responses to offers by plaintiff and its lawyers to purchase the domain.  The court also rested its conclusion on the fact that defendant had not used the domain in commerce, and was not known, did not operate a business under, and held no intellectual property rights in the domain name.  Finally, the court denied the registrant’s motion to dismiss, which was premised on his contention that the court lacked jurisdiction because plaintiff had, prior to the commencement of this proceeding, commenced a UDRP proceeding, which was then pending.

Eurotech Inc. v. Cosmos European Travels Aktiengesellschaft
213 F. Supp.2d 612 (E.D. Va., July 24, 2002)

Court finds plaintiff guilty of trademark infringement and unfair competition in violation of the Lanham Act, and cybersquatting in violation of the Anticybersquatting Consumer Protection Act, as a result of its purchase and use in commerce of the domain name cosmos.com.  Plaintiff’s use infringed the rights of defendant in its registered trademarks Cosmos and Cosmos Tourama, which were used by affiliated companies, through licenses, to promote and market travel and vacation tours.  Plaintiff’s website featured information on travel tours provided by third parties.  Plaintiff both purchased its domain, and began this use, after Cosmos European Travels had registered its mark, and commenced its use in commerce.

In finding that plaintiff’s conduct ran afoul of the Anticybersquatting Consumer Protection Act, the court found that plaintiff had acted with a bad faith intent to profit from its use of its mark.  In reaching this result, the Court relied, in part, on the fact that plaintiff had failed to conduct a trademark search at the time it purchased the cosmos.com domain from a third party.  Such a search, held the Court, would have made plaintiff aware of defendant’s rights in its mark, and its use in the travel industry.  The Court also relied on the fact that plaintiff, after being conducted by consumers seeking defendant, offered for a fee to enter into various arrangements with defendant that would give it access to the cosmos.com domain.  Said the Court:

It is equally important … to step back and examine the larger picture to determine whether it is consistent with a finding of bad faith.  It is.  The larger picture does not reveal an ongoing business entity that, prior to purchasing a domain name, made a reasonable investigation to ensure that the name was non-infringing and then purchased a relatively obscure domain name.  to the contrary, the big picture here reflects that plaintiffs did not engage in any business until they purchased the disputed domain name and when they did so, they made no effort to ascertain whether the ‘cosmos’ name was a registered trademark, as it then had been for eleven years.  Nor did plaintiffs make any reasonable investigation to determine whether the name was used in the travel industry.  Had plaintiffs conducted the proper investigation, they not only would have easily discovered that defendant had registered the cosmos’ and ‘cosmos tourama’ marks, but they also likely would have seen evidence of the fact that defendant had spent millions of dollars promoting the ‘cosmos’ mark and had succeeded in generating a large amount of revenue in the travel business ($400 million over five years).  In the larger picture, these facts loom large, and  it is hard to see how they could have been missed by plaintiffs.  Furthermore, within three years of purchasing the cosmos.com domain name, plaintiffs, armed with the certain knowledge that many consumers thought the cosmos.com website belonged to defendant, sought to sell defendant space and access to the site for a substantial sum of money.  This is closely akin to purchasing a domain name with an intent to exploit it by selling it to the registered owner of the trademark incorporated in the domain name.  In sum, the big picture is fully consistent with a finding of bad faith.

In addition, the fact that plaintiff was now known as CosmosTravels.com, Inc., did not permit it to avoid a finding of bad faith., as this name change occurred only after the domain name at issue had been purchased.  Said the Court “If such a name change could preclude a finding of bad faith, an entity could escape the effect of the ACPA simply by registering an infringing domain name and then changing its business name to match the infringing domain name.”

As a result of its determination, the Court directed plaintiff to transfer the cosmos.com domain to defendant. 

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Chris Gregerson v. Vilana Financial Inc., et al.
2007 U.S. Dist. Lexis 64960, Civ. No. 06-1164 ADM/AJB (D. Minn., August 31, 2007)

On the parties’ cross-motions for summary judgment, the Court finds the corporate defendants guilty of copyright infringement as a result of their unauthorized use of two of plaintiff’s copyrighted photographs in advertisements for their businesses. 

The Court further held that defendant Andrew Vilenchik, the sole board member and shareholder of defendant Vilana Financial, could not be held vicariously liable for defendant’s copyright infringement, because he did not have or derive a sufficiently direct financial interest from the use of plaintiff’s photographs.

The Court granted plaintiff summary judgment, dismissing defendants’ claim that his use of defendants’ trademark in the path of his site’s domain name violated the Anticybersquatting Consumer Protection Act.  Defendants’ claim failed both because they failed to submit sufficient evidence that plaintiff had a bad faith intent to profit from this use of the mark, and because use of the mark in the path of the domain name does not constitute actionable use of the mark in a domain name

The Court also dismissed trademark infringement claims brought by defendants as a result of plaintiff’s use of their trademark in a website that purportedly disparaged defendants as a result of their use of the photographs at issue, and in the meta tags of that site.  The court held defendants failed to establish the requisite likelihood of consumer confusion sufficient to sustain such a claim, given that the parties were not competitors – plaintiff was a photographer, and defendants sold real estate and mortgage services – and plaintiff’s website was highly critical of defendants.  In reaching this result the court noted that “a defendant’s use of a trademark in metatags in a descriptive manner can constitute a non-infringing fair use.”

Finally, the Court left for trial defendants’ remaining claims, which included deceptive trade practices, interference with contractual and business relationships, and misappropriation of name and likeness, all of which arose out of the disparaging remarks posted on plaintiff’s website about the defendants.  This site included a photograph of defendant Vilenchik.  Because issues of fact existed as to the truth of these statements, the court reserved decision on these claims until trial.

It should be noted that plaintiff ultimately prevailed at trial, was awarded approximately $20,000 on his copyright infringement claims, and that defendants’ remaining claims were dismissed.

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Hartog & Co., AS v. Swix.com and Swix.net
2001 U.S. Dist Lexis 3568, Civ Act. No. 99-1788-A (E.D. Va., March 16, 2001)

In this in rem action brought under the Anticybersquatting Consumer Protection Act (“ACPA”), court holds that registrant of the domain names at issue did not register or use them with a bad faith intent to profit therefrom, and that plaintiff trademark holder is therefore not entitled to relief under the ACPA. Plaintiff holds a United States trademark registration in the mark “Swix” which it has used since 1949 to market ski waxes, in the United States and abroad. Pedram Burgin (“Burgin”) provides Internet services to the public as a sole proprietorship under the name “Swix Internet Dienste” and holds a Swiss trademark in the mark “Swix” for use in connection with that business. Burgin’s clientele is located in Switzerland – he neither does business in the United States, nor does he sell ski wax or any related products. Under these circumstances, the Court held that Burgin’s registration and use of the domains swix.com and swix.net in connection with his Internet business was not undertaken in bad faith. Among other things, Burgin has intellectual property rights in the Swix mark by virtue of his Swiss registration, the domain is part of the name by which he does business, he has made a bona fide use of the mark in the sale of internet related services, he had no intent to divert plaintiff’s customers, as his business is wholly unrelated to plaintiff’s sale of ski wax, he never offered to sell the domains at issue to plaintiffs, and he was unaware of plaintiff’s mark at the time he commenced his use. As a finding of bad faith is a prerequisite to in rem relief under the ACPA, the Court determined that plaintiff’s claim failed.  

Mattel, Inc. v. Procount Business Services, et al.
03 Civ. 7234 (RWS) (S.D.N.Y., March 10, 2004)

In an action brought by Mattel under the Anticybersquatting Consumer Protection Act, as a result of defendants’ registration of the domain names BarbieToy.com and BarbieRetro.com, the Southern District of New York held that it could exercise personal jurisdiction over a non-resident defendant because “defendants solicited sales over the Internet, accepted an order from a resident of this state, and shipped goods into this state to fill that order.”  As a result, the Court denied defendants’ motion to dismiss this action for want of personal jurisdiction.  The defendants were retailers who primarily sold vintage toy reproductions.  At some point, they expanded their product line to include licensed ‘Barbie Classic’ items.  The domain names were purchased to promote this product line, and redirected the user to defendants’ website at which such items were offered for sale.  Plaintiff arranged to purchase two Barbie items from defendants’ website, which defendants shipped to plaintiff in New York.  As stated above, this purchase was sufficient to establish personal jurisdiction over the defendants in New York.

The Court nonetheless transferred the case to Texas, where the defendants reside, pursuant to 28 U.S.C. Section 1401(a).  Said the Court:

In the interests of justice and trial efficiency, this action should be transferred to the Southern District of Texas.  The locus of operative facts is in both the Southern District of Texas and New York;  Defendants documents related to the website in question are located in Houston Texas; Mattel is a worldwide manufacturer with offices all over the United States and Defendants are a one man outfit, located only in Houston Texas, maintaining the action in New York will pose a heavy financial burden on defendants; neither party is located in the Southern District of New York and Defendants are located in Houston, Texas.

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Pinehurst, Inc. v. Brian Wick, et al.
256 F. Supp. 2d 424 (M.D. N.C., 2003).

Finding that defendant cybersquatters violated both the Anticybersquatting Consumer Protection Act (“ACPA”) and the Federal Trademark Dilution Act (“FTDA”), the court directed defendants to transfer to plaintiff domain names containing plaintiff’s famous “Pinehurst” mark, enjoined defendants from further using “Pinehurst” in a domain name, and awarded plaintiff both statutory damages in the amount of $100,000 and attorneys fees.   Plaintiff is the owner of the world famous Pinehurst Golf Resort.  The court found that defendants had registered the domain names in question – pinehurstresort.com and pinehurstresorts.com - with a bad faith intent to profit therefrom because, among other things, they had registered over 8000 domain names, many of which contained the trademarks of well-known corporations, golf courses or law firms, had offered, in settlement, to transfer the domain names at issue to plaintiff in exchange for a ‘contribution’ to their legal expenses and had registered additional ‘typo’ domains after the commencement of this suit.  Such a finding also rested on defendants’ stated purpose in registering these and other domains, which was to “mess” with “corporate America,” as well as on the fact that the domains at issue had been registered by an entity named NameIsForSale.com 

In reaching this result, the court rejected defendants’ claim that their conduct was a permissible ‘parody’ of plaintiff’s mark.  Such a defense failed, in part, because the content of defendants’ site – on which was located images of a miniature golf course and a trailer park – was not seen until after the user had already made a decision to enter the site based on the domain names at issue, which did not parody plaintiff or its golf course.  Said the court “A parody must convey two simultaneous and contradictory messages, that it is the original but also that it is not the original and is instead a parody. … Looking at Defendants’ domain names alone, there is no suggestion of a parody. … The domain names convey the first message, that it is the original, but the second message, that it is ‘not the original and that it is a parody, is discovered only by accessing the website and reading through the website’s content.”

The court further held that defendant had violated the FTDA by virtue of having registered the domain names in question, and thereby having prevented plaintiff from using them in commerce.  This reduced the selling power of plaintiff’s famous
”Pinehurst” mark, thereby diluting it.  Said the court:  “Because of the unique nature of domain names in electronic commerce and the resulting economic harm when marks are registered as domain names by cyberpirates, Defendants’ use of Plaintiff’s service marks in their Pinehurst domain names constitutes dilution.”

Jay Sallen d/b/a J.D.S. Enterprises v. Corinthians Licenciamentos LTDA and Desportos Licenciamentos LTDA
273 F.3d 14 (1st Cir., December 5, 2001)

Reversing the court below, the First Circuit holds that a domain registrant who loses a UDRP proceeding and is directed to transfer his domain name to a trademark holder may pursue relief under the Anticybersquatting Consumer Protection Act.  This statute expressly provides that:

A domain name registrant whose domain name has been suspended, disabled, or transferred under a policy described under clause (ii) may, upon notice to the mark owner, file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful under this chapter.  The Court may grant injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant.

Said the First Circuit:

Section 1114(2)(D)(v) grants domain name registrants who have lost domain names under administrative panel decisions applying the UDRP an affirmative cause of action in federal court for a declaration of nonviolation of the ACPA and for the return of the wrongfully transferred domain names.

A successful plaintiff can recover the domain lost in the UDRP proceeding.

In reaching this result, the court rejected defendants’ argument, accepted by the court below, that there was no actionable case or controversy that could be the subject of plaintiff’s action for declaratory judgment, because defendants had no intention of pursuing a claim against plaintiff for violation of the Anticybersquatting Consumer Protection Act.  Because this dispute had been brought to WIPO for resolution, and because it had resolved the dispute adversely to plaintiff, resulting in his loss of his domain name, an actual controversy did in fact exist. 

The First Circuit also rejected defendants’ argument that, by agreeing to the UDRP in his registration agreement, plaintiff contractually agreed both to be bound by any decision rendered in a UDRP proceeding by an authorized provider, and waived any rights he may have under the ACPA.

As a result, the First Circuit allowed plaintiff to pursue his claim that he was the valid owner of the domain Corinthians.com.  Plaintiff had registered this domain with NSI.  Defendants owned a Brazilian trademark in Corinthiao, the Portuguese equivalent of “Corinthians,” which is the name of a well-known soccer team in Brazil.  A WIPO panel found plaintiff to be a cybersquatter, in large part because he offered to sell the domain to defendants, and had not, according to the panel’s decision, made any use of it prior to his receipt of a cease and desist letter from defendants in response to his solicitation.  After this contact, but before the commencement of the UDRP proceeding, plaintiff posted on his website biblical quotations.  The domain was subsequently transferred to the defendants. 

The First Circuit allowed plaintiff to pursue his claim that he was not in violation of the Anticybersquatting Consumer Protection Act and seek the return of the domain name.

Download PDF of Court Decision

Additional cases can be found in the Domain Name section of the Index.

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