Designer Skin LLC v. S & L Vitamins, Inc., et al.
Domain Name Disputes - Internet Library of Law and Court Decisions - Updated March 25, 2008
This section of the Internet Law Library contains court and UDRP Panel decisions analyzing what are commonly known as domain name disputes - actions by attorneys that address the legality of the use of another's trademark or service mark, or terms similar thereto, in a web site's domain name or url. These decisions address the permissibility of such use under the Lanham Act, Federal and State Antidilution statutes, the Anticybersquatting Consumer Protection Act and the Uniform Domain Name Dispute Resolution Policy. These cases also address the use of such marks in the domain names of sites that do not sell competitive products, or which contain criticisms of the trademark holder.
We also provide links to useful domain name dispute resources, including the rules that govern UDRP proceedings, searchable databases of Panel decisions resolving UDRP proceedings, and sample forms used in such proceedings, including the complaint. You can find these links in the Additional Resources section of this page, located after our case descriptions.
Case No. 00-CV-4882 (FB), 2002 U.S. Dist. Lexis 1129 (E.D.N.Y., January 22, 2002)
In this domain name dispute, Court denies plaintiffs' motion for summary judgment, seeking to hold defendant liable for trademark infringement, as well as for violations of the Federal Trademark Dilution Act and the Anticybersquatting Consumer Protection Act ("ACPA"), as a result of defendant's use of plaintiffs' trademark "ABC Carpet and Home" in a domain name. Court holds that issues of fact preclude it from determining whether defendant acted in bad faith in selecting this domain name, given that he had been doing business under the name "American Basic Craft Carpet and Home Restoration" since 1980, and claimed to have adopted the domain name at issue, "ABcarpetandhome.net", because it was an abbreviation of his business name. This issue of fact precluded the court from granting summary judgment on plaintiffs' ACPA claim, which requires, among other things, a finding that defendant used the mark at issue in bad faith. This issue of fact also led the Court to deny summary judgment on plaintiffs' infringement claim. The court denied plaintiffs' motion with respect to their dilution claim on the ground that issues of fact existed as to whether plaintiffs' mark was famous.
Civ. No. 96C3448 (N.D. Illinois, July 17, 1996)
In this domain name dispute, Court, at behest of owner of federal trademark in "ActMedia," enjoined defendant from continuing to use "actmedia.com" in its domain name, on the grounds, inter alia, that such use constituted unauthorized use of a trademark and false designation of origin in violation of the Lanham Act.
WIPO Case No. D2005-0751 (WIPO, Sept. 22, 2005)
In this domain name dispute resolved in accordance with the Uniform Domain Name Dispute Resolution Policy ("UDRP") the Panel directs the operator of a web site at the domain ADL USA.com which is critical of Complainant, commonly known as the "ADL", to transfer the disputed domain to Complainant. The Panel found that any right Respondent has to operate a web site critical of Complainant does not extend to doing so at a domain which incorporated Complainant's "ADL" trademark, and hence created confusion as to its source. As Respondent was found to have acted in bad faith because, inter alia, he only registered the domain after receipt of a cease and desist letter from Complainant, the Panel directed the transfer of the domain name to Complainant, the Anti-Defamation League.
34 F. Supp. 2d 1145 (E.D. Mo., Feb. 12, 1999)
In this domain name dispute, Court issued preliminary injunction, enjoining defendant from continuing to operate websites at domain names containing plaintiffs' common law trademark "Papal Visit 1999" which mark was used by plaintiff to promote the Pope's January 1999 visit to St. Louis, Missouri. Defendant's websites contained information about the Pope's visit and St. Louis, as well as advertising for, and links to, separate adult websites operated by the defendant. These adult sites, in turn, solicited membership for use of the sites, and offered to sell various adult entertainment products and services. There was no indication in the court's decision that these links led to sales by defendant of any products or services to Missouri residents. There was, however, a finding by the court that Missouri residents had complained to plaintiffs about defendant's sites. These contacts with Missouri were held sufficient to confer specific personal jurisdiction over the defendant on the Missouri District Court. The court awarded plaintiffs injunctive relief because it found that plaintiffs were likely to prevail on their Federal trademark claim that defendant was diluting plaintiffs' famous marks by tarnishing them. The court found that plaintiffs' marks "are famous and distinctive." This was apparently based on plaintiffs' use of the marks for approximately seven months, and their expenditure of a "considerable amount of money" advertising the marks. Tarnishment arose by the association of the mark with "websites advertising and promoting adult entertainment materials and services."
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.
2005 WL 331561 (N.D. Ill., Feb. 8, 2005)
Court holds that defendant’s use of plaintiff’s famous mark, and 15 variants thereof, in domain names that take consumers to a website at which both plaintiff’s products and those of its competitors are sold, dilutes plaintiff’s mark. As a result, the Court grants plaintiff’s motion for summary judgment on its claim for trademark dilution in violation of the Lanham Act.
Barcelona.com Incorporated v. Excelentisimo Ayuntamiento de Barcelona (The City Council of Barcelona, Spain)
330 F.3d 617, Civ. No. 02-1396 (4th Cir., June 2, 2003)
Reversing the decision of the court below, the Fourth Circuit holds that plaintiff, owner of the domain name Barcelona.com, established a valid reverse domain name hijacking claim under 15 U.S.C. §1114(2)(D)(v) against the City Council of Barcelona Spain as a result of the Council's successful prosecution of a Uniform Domain Name Dispute Resolution Policy ("UDRP") proceeding against plaintiff. In that proceeding, the City Council claimed that plaintiff's domain name infringed the Council's Spanish trademarks in a number of multiword marks each of which contained the word "barcelona." The arbitrator and the District Court agreed, and directed that the domain name be transferred to the Council. The Fourth Circuit reversed, holding that the District Court improperly applied Spanish law, instead of US law, to this proceeding. It further held that under US law, a party could not hold a valid trademark in the name of a geographical place. As such, plaintiff's registration of the domain name barcelona.com was lawful and entitled to protection under 15 U.S.C. §1114(2)(D)(v). In reaching this result, the Court held that the City Council was subject to the jurisdiction of United States' courts by virtue of its commencement of the UDRP proceeding.
No. 04-3690 (3rd Cir., May 2, 2005)
In this domain name dispute, the Third Circuit affirms District Court's decision, enjoining defendant from continuing to use plaintiff's mark in the domain name of a gripe site he operated at that domain, and directing defendant to cancel his registration of that domain. The courts' rulings were premised on their determinations that plaintiff, the Board of Directors of the Sapphire Bay Condominiums West, was likely to prevail on its claims that defendant's conduct infringed and diluted plaintiff's mark in violation of the Lanham Act. Notably, defendant's gripe site initially proclaimed itself the "Official Web Site of Sapphire Bay Condominiums West." The Third Circuit noted that its decision was "not precedential."
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.
Claim Number FA0506000493869 (NAF, July 28, 2005)
In this domain name dispute resolved in accordance with the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel refused to transfer the domain name Drew Brees.net to Complainant, Brees Company, Inc., a company apparently affiliated with the professional football player Drew Brees. The Panel refused to grant such relief because Mr. Brees did not establish that he held common law trademark rights in his name at the time of the registration of the domain name in dispute.
174 F.3d 1036 (9th Cir. April 22, 1999)
Ninth Circuit, reversing the district court, enjoined defendant from using plaintiff's "moviebuff" trademark in either a domain name or meta tags found on defendant's web site.
The court rejected defendant's contention that it had superior rights to the mark by virtue of the fact that it commenced use of the mark before plaintiff. While defendant had used the mark in a domain name registered with NSI before plaintiff commenced its use of the mark on the Internet, defendant did not commence operation of a site at that domain name until well after plaintiff commenced use of the mark. Defendant's only use of the mark that arguably predated plaintiff's was in "limited e-mail correspondence." Such use was held insufficient to make defendant the senior user of the mark. "Registration with Network Solutions ... does not in itself constitute "use" for purposes of acquiring trademark priority." What is required is actual use in commerce in connection with the sale of products or, at a minimum, "use in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark."
The court held that West Coast's activities were likely to constitute trademark infringement because they were likely to confuse the public about the source or sponsorship of West Coast's "moviebuff.com" web site. In reaching this conclusion, the court relied on the fact that the marks at issue were identical, and were both using the Internet to marketed related products. Significantly, the court held that the addition of ".com" to the phrase "moviebuff" was of no significance in comparing the identity of the marks used. "Because many companies use domain names comprised of ".com" as the top-level domain with their corporate name or trademark as the second-level domain, the addition of ".com" is of diminished importance in distinguishing the mark." The court accordingly enjoined defendant from operating a web site at "moviebuff.com."
The court also enjoined defendant from using the "moviebuff" mark in meta tags on its site. In reaching this conclusion, the court found that use of the "moviebuff" mark in meta tags would cause prohibited "initial interest confusion." "Web surfers looking for Brookfield's "MovieBuff" products who are taken by a search engine to "westcoastvideo.com" [as a result of the use of "moviebuff" in the site's meta tags] will find a database similar enough to "MovieBuff" such that a sizeable number of consumers who were originally looking for Brookfield's product will simply decide to utilize West Coast's offerings instead. Although there is no source confusion in the sense that consumers know they are patronizing West Coast rather than Brookfield, there is nevertheless initial interest confusion in the sense that, by using "moviebuff.com" or "moviebuff" to divert people looking for "MovieBuff" to its web site, West Coast improperly benefits from the goodwill that Brookfield developed in its mark." Such use of plaintiff's mark, concluded the court, is indeed actionable.
As a result, the court enjoined West Coast from using the Mark "MovieBuff" in its meta tags. The court did hold that West Coast could use the descriptive phrase "Movie Buff" in its meta tags, provided it included a space between the two words.
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.
950 F. Supp. 737 (E.D. Va. 1997)
In this domain name dispute, Court issued permanent injunction enjoining use of "cardservice" in domain name because such use infringed trademark in "cardservice international." The court further awarded plaintiff attorneys fees under the Lanham Act to compensate plaintiff for its efforts in stopping defendant from continuing this conduct.
950 F. Supp. 737 (E.D.Va. Jan. 16, 1997)
In this domain name dispute, Court issued permanent injunction enjoining use of "cardservice" in domain name because such use infringed trademark in "cardservice international." The court further awarded plaintiff attorneys fees under the Lanham Act to compensate plaintiff for its efforts in stopping defendant from continuing this conduct.
Case No. D2000-0243 (WIPO, June 2, 2000)
In this domain name dispute brought under the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel determines that the registration by Respondent of the domain name Cbs.org , a domain name unrelated to Respondent's business, runs afoul of the UDRP, and accordingly directs Respondent to transfer the domain name to complainant CBS Broadcasting Inc., owner of the CBS service mark. In reaching this result, the Panel holds that it can, and does, consider an offer by Respondent to sell the domain for $114,000, purportedly made during settlement negotiations, as conclusive evidence of Respondent's bad faith.
73 F.Supp.2d 106, 1999 U.S. Dist. Lexis 18187 (D. Mass. Nov. 18, 1999)
In this domain name dispute, the court denied plaintiff's application for a preliminary injunction, enjoining defendant from continuing to operate a website at a domain name which purportedly infringed plaintiff's trademark.
Plaintiff and defendant are direct competitors who offer information to investment professionals. Plaintiff offers its information for free at a web site it operates at "streetevents.com." Defendant offers its information at a web site located at the url "streetfusion.com." Unlike plaintiff, defendant charges its customers for access to its information, with prices ranging up to $400,000 for a one year subscription.
Claiming that defendant's use of the domain name and mark "streetfusion.com" infringed its rights in "streetevents.com," plaintiff commenced this suit, in which it alleged that defendant was engaging in unfair competition in violation of section 43 of the Lanham Act, 15 U.S.C. Section 1125(a). Plaintiff sought a preliminary injunction, enjoining defendant from continuing this conduct. Finding that plaintiff had not established a sufficient likelihood of prevailing on the merits, the court denied plaintiff's application.
Neither party possessed a federally registered trademark. Accordingly, their respective rights turned on which party first commenced use of their mark in commerce. The court, on the record before it, was unable to determine which party had first commenced use of the mark. The evidence plaintiff presented of its usage was insufficient to show that it had test marketed the mark. "Test marketing", held the court, "involves offering the product for sale through normal channels of trade in limited markets for limited times." Such use, the court determined, can constitute commercial use for trademark purposes. The court further held that plaintiff had not established sufficient likelihood of consumer confusion to entitle it to the requested relief. The court reached this result notwithstanding the fact that plaintiff submitted evidence of approximately 20 incidents in which investment professionals had actually confused the two services. Said the court "de minimus confusion, which is easily resolved and does not affect the ultimate purchasing decision, is of minimal relevance."
WIPO Case No. D2005-0836 (WIPO Arbitration, Sept. 23, 2005)
In this domain name dispute brought under the Uniform Domain Name Dispute Resolution Policy (UDRP), the Panel, following the majority view, holds that an alleged reseller of Complainants products has no legitimate interest in a domain name containing Complainants marks when he sells both Complainants products and those of its competitors at the web site he operated at that domain. Finding that the use of Complainants mark in such circumstances was undertaken in bad faith to profit from consumer confusion as to the source of the web site and the products sold thereat, the Panel directed Respondents to transfer the disputed domain name to the Complainant.
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.
Case No. D2002-0484l (WIPO July 19, 2002)
In this domain name dispute brought under the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel determined that Respondent violated the UDRP by registering the domain name Complexionrx.com, which contained all but the plural "s" of Complainant's previously registered trademark "Complexions Rx." At this domain, Respondent offered for sale the same type of products Complainant sold at its own web site. The Panel held that Respondent's use of the disputed domain in the operation of its business did not create a legitimate interest in that domain sufficient to defeat Complainant's claim, given the fact that Complainant had registered the mark with the USPTO prior to the commencement of Respondent's use. Such registration gave Respondent constructive notice of Complainant's rights in the mark, and thus prevented Respondent's use either from being "bona fide" or creating a legitimate interest in the domain name.
150 F.3d 620, No. 96-00429 (Sixth Cir., August 4, 1998)
The Sixth Circuit, reversing the court below, held that issues of fact precluded the court from determining on a motion for summary judgment that plaintiff's use of the domain name "DCI.com" infringed defendant's federal trademark in the mark "DCI." In reaching this determination, the Court of Appeals held that it could not determine on motion that consumers were likely to be confused by plaintiff's use of DCI in it domain name. Instead the "case appears to present too close a question to decide on a matter of law" because, inter alia, of the fact that there were at least 90 other websites which utilized DCI in their domain name, the differing services offered by plaintiff (software sales) and defendant (educational services) and plaintiff's lack of intent to infringe.
60 F. Supp. 2d 558 (E.D. Va., Sept. 3, 1999)
Court is presented with issue of, but does not determine, whether a domain name is intangible personal property subject to execution at the request of a judgment creditor to satisfy an outstanding judgment.
Plaintiffs commenced a trademark infringement action alleging that defendant's use of the domain name "writeword.com" infringed plaintiffs' trademark. On defendant's default, the court entered judgment in plaintiffs' favor, permanently enjoining defendant from infringing plaintiffs' mark or using the "writeword.com" domain name and awarding plaintiffs $5000 in damages.
Plaintiffs thereafter argued that the domain name was subject to a writ of "fieri facias", a Virginian device which authorizes a sheriff to seize and sell property of the judgment debtor and deliver the proceeds to the judgment creditor in satisfaction of an outstanding judgment. Holding that this procedure presented "several problematic issues," the court declined to resolve "the knotty issue of whether a domain name is personal property subject to the lien of fieri facias."
In so doing, the court criticized the rationale underlying a Virginia State Court's determination in Umbro Int'l, Inc. v. 3263851 Canada, Inc., 1999 WL 117760 (Va. Cir. Ct. Feb. 3, 1999) that "a domain name registration is the personal property of the debtor and therefore subject to lien."
Case No. D2004-0481 (WIPO, August 20, 2004)
In this domain name dispute brought under the Uniform Domain Name Dispute Resolution Policy (UDRP), the Panel held that Respondent can continue, despite Complainant's objections, to use Complainant's "Porsche" mark in the domain names of web sites that advertise used Porches for sale by third parties. Such use was held to create a legitimate interest in those domain names sufficient to defeat Complainant's UDRP claims, given that Respondent's web sites featured prominent disclaimers, stating they were neither authorized by, nor affiliated with, Complainant, and given further that only advertisements for used cars manufactured by Porsche were permitted on the web sites at issue.
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.
Case No. CV 00-03292 ABC (RNBx), 127 F. Supp.2d 1069 (C.D.Cal., October 30, 2000)
The court dismissed defendants' claim seeking cancellation of plaintiff's federal trademark registration of the mark "Ecash." The court held that plaintiff had no obligation to notify the PTO during the trademark registration process of defendants' use of the Ecash mark in a domain name because such use did not confer "clearly established" rights on defendants to use the mark in question.
Civ. No. 99-2288 (D.N.J., June 4, 1999)
In this domain name dispute, Court issues a preliminary injunction enjoining defendant from continuing to utilize the domain name "edgaronline.com." Such action, determined the court, is likely to falsely imply that plaintiff Edgar Online Inc. is the source of the material found at defendant's web site in violation of section 43(a) of the Lanham Act.
Plaintiff operates a website at the domain name "edgar-online.com" and claims a common law trademark in the mark "Edgar Online." Plaintiff's use of this mark commenced prior to defendant's. Plaintiff and defendant each operate competing web sites which offer users access to the SEC's EDGAR database. Plaintiff charges users a fee for the searches they are able to conduct on plaintiff's web site. Defendant offers his service for free, which service apparently lacks some of the functionality found on plaintiff's site.
Though unregistered, the court found that plaintiff's mark was entitled to protection under Section 43(a). Relying on Jews for Jesus v. Brodsky, 993 F. Supp. 993 F. Supp. 282 (D.N.J. Mar. 6, 1998) aff'd. 159 F. 3d 1351 (3d Cir. 1998) the court further held that defendant's use occurs in commerce in connection with goods and services, notwithstanding its conclusion that plaintiff "does not earn revenues from his website." Said the court:
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. D2002-0095 (WIPO, May 7, 2002)
In this domain name dispute brought under the Uniform Domain Name Dispute Resolution Policy (UDRP), the Panel held that an alleged authorized reseller of Complainant's products cannot use Complainant's trademarks in the domain name of a web site at which it sells the products of both Complainant and its competitors.
No. C 06-03504 WHA (N.D. Ca., May 10, 2007)
Court finds defendant, who claimed to have purchased plaintiffs’ Express.com domain for $150,000 from someone who purported to be, but was not, the domain’s Administrative Contact, guilty of conversion and directs defendant to return the domain to plaintiffs. Notably, the seller was contacted at the email address set forth for the domain’s Administrative Contact in the Whois Registry. Because plaintiffs had never voluntarily transferred the domain, the seller was a thief who could not transfer good title to defendant. As a result, defendant was not a good faith purchaser for value, but was instead, guilty of conversion. Finally, the Court held that defendant could not defeat plaintiffs’ claim to title by relying on the data contained in the Whois registry, as this was simply an information database maintained by private parties, and not the equivalent of a statutorily created title registration system. This data, and particularly the Administrative Contact’s email address, had been changed without plaintiffs’ knowledge or consent.
2000 U.S. Dist. Lexis 794 (S.D.N.Y. Feb. 1, 2000)
In this domain name dispute, Court grants a preliminary injunction, enjoining defendant, after a sixty day period, from continuing to operate a web site at a domain which contains a variant spelling of plaintiff's federally registered trademark.
Plaintiffs own the federally registered trademark First Jewellery, which they use in connection with their business of selling jewelry at wholesale to jewelry retailers in both Canada and the United States. Plaintiff does not sell its products at retail. Jewellery is a British variant of the word Jewelry. Plaintiffs first registered their trademark in 1990.
Defendant Internet Shopping Network LLC operates a web site at the domain "firstjewelry.com" at which it sells jewelry products at retail to the public. Defendant commenced its use of this domain on or about June 23, 1999.
Plaintiffs moved for a preliminary injunction enjoining defendant from continuing to operate a web site at the firstjewelry.com domain. Finding that plaintiffs had succeeded in establishing a likelihood that they would prevail on their claim that defendant's activities infringed their mark, the court granted the injunction on the terms discussed below.
The court determined that plaintiff had shown that defendant's use was likely to cause the requisite consumer confusion because such use was likely to lead plaintiffs' wholesale customers to believe that plaintiffs had opened a directly competing retail outlet. The court also pointed to the fact that, while defendant did not adopt the name in a bad faith attempt to profit on the goodwill associated with plaintiffs' mark, it failed to engage in the simple precaution of performing a trademark search before it commenced its use of the domain.
Nonetheless, because of the extensive promotional expenditures defendant had made in connection with its site, and its lack of bad faith, the court did not direct defendant to immediately cease its infringing activities. Rather, the court granted defendant 60 days to change the domain name of its site, provided that in the interim, it posted on the home page of its web site a disclaimer stating that the defendant's operation is not affiliated with First Jewelery.
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.
992 F. Supp. 1070 (N.D. Iowa, Sept. 25, 1997)
(The court directed defendant to transfer ownership of the domain name "greenproducts.com" to plaintiff, owner of the trademark "Green Products", during the pendency of the parties' lawsuit. The court found that defendant's conduct was likely to infringe plaintiff's mark, and to cause consumer confusion, even though, as of the date of suit, defendant had not operated a website at "greenproducts.com." The court rejected defendant's argument that its conduct would not confuse the public because defendant's site would prominently disclaim any relationship to plaintiff, and instead "distinguish [defendant's] products from those of [plaintiff] Green Products through comparative advertising." Such use of plaintiff's mark in a domain name, concluded the court, would deceptively lure customers to defendant's site and thereby cause consumer confusion.)
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.
66 F. Supp. 2d 117 (D. Mass., Sept. 2, 1999), aff'd., 232 F.3d 1 (1st Cir., 2000)
In this domain name dispute, Court grants defendant summary judgment, dismissing claim that defendant's use of the domain name "www.clue.com" infringes and dilutes plaintiff Hasbro Inc.'s ("Hasbro") federally registered trademark "clue."
Plaintiff Hasbro sells children's toys and related items, including the board game "Clue." Hasbro obtained federal trademark registration for the mark "clue" in 1950, which it has used continuously since in its sales of the "Clue" board game. During this period of time, Hasbro has spent millions of dollars advertising its mark, which, according to the Court, "has gained widespread recognition [both] in the United States and abroad." Defendant Clue Computing Inc. is a small computer consulting firm which in 1994 registered the domain name "www.clue.com" at which it operates a web site to promote its business.
On defendant's motion, the court dismissed plaintiff's claim that defendant's use of its mark in this fashion infringed and diluted plaintiff's famous mark in violation of both the Lanham Act and Massachusetts Anti-Dilution Act. Plaintiff's infringement claim failed because, as determined by the Court, plaintiff failed to show the likelihood of consumer confusion needed to establish such a claim. In reaching this conclusion, the Court relied on a number of factors, including the limited evidence of actual consumer confusion arising out of defendant's use of the "clue.com" domain name during the four year period in which defendant was engaged in such conduct, and the dissimilar nature of the products offered by the parties.
In reaching this conclusion, the court rejected the "initial interest confusion" doctrine which formed the basis of the Ninth Circuit's decision in Brookfield Communications. Said the Court:
[T]he kind of confusion that is more likely to result from Clue Computing's use of the "clue.com" domain name - namely, that consumers will realize they are at the wrong site and go to an Internet search engine to find the right one - is not substantial enough to be legally significant. "[A]n initial confusion on the part of web browsers ... is not cognizable under trademark law."
The Court also held that plaintiff had failed to establish its entitlement to relief under the Federal Trademark Dilution Act because plaintiff's mark was not famous. In reaching this result, the court relied primarily on the fact that "clue", the mark in question, was a common term used in a significant number of trademarks not owned by plaintiff.
The Court further held that even if the mark "clue" was famous, plaintiff was not entitled to relief because defendant's use did not dilute the distinctive quality of plaintiff's mark, another prerequisite to relief under the Act.
The Court rejected plaintiff's claim that defendant's mere use of the "clue" mark in a domain name, without more, constituted per se dilution of plaintiff's "famous" mark in violation of the Act. Said the Court:
Holders of a famous mark are not automatically entitled to use that mark as their domain name; trademark law does not support such a monopoly. If another Internet user has an innocent and legitimate reason for using the famous mark as a domain name and is the first to register it, that user should be able to use the domain name, provided that it has not otherwise infringed upon or diluted the trademark.
1996 WL 84853 (W.D. Wash. 1996)
Defendants utilized "Candyland" in its domain name for a sexually explicit site. Hasbro, owner of a federal trademark in the name Candy Land, utilized principally in connection with a children's game, claimed that defendants' conduct violated federal and Washington trademark anti-dilution statutes. On Hasbro's motion, the court issued a preliminary injunction, enjoining the defendants from continuing to use the name Candyland, inter alia, in their site's domain name. Defendants were, however, permitted by the court to post for 90 days a referral notice at their former URL address http:/www.candyland.com informing those interested in the site of its new location.
Claim Number FA0508000550345 (NAF October 25, 2005)
In this domain name dispute resolved in accordance with the Uniform Domain Name Dispute Resolution Policy ("UDRP") the Panel refused to direct Respondent Green People to transfer the domain name Home Depot Sucks.com, at which Respondent operated a "protest site," to Complainant, owner of the famous "Home Depot" trademark. Rejecting the majority view, the Panel found that the disputed domain was neither identical nor confusingly similar to Complainant's mark because it included the pejorative term "sucks" in addition to Complainant's trademark. The Panel further held that Respondent had a legitimate interest in this domain, which had not been registered in bad faith, because Respondent had used the domain for seven years as the home of a web site critical of Home Depot. The Panel accordingly found that Complainant had failed to establish its entitlement to relief under the UDRP, and denied its complaint.
2000 U.S. Dist. Lexis 10259, 120 F.Supp. 2d 870 (C.D. Ca., July 21, 2000)
Court holds that the generic top level domain ".web", when used in connection with domain name registration services, is not a trademark entitled to protection, as it does not identify the source of such registration services, but rather the type of content one may expect to find on a web site containing the ".web" top level domain name.
Claim No. FA0503000436735 (NAF April 25, 2005)
In this domain name dispute brought under the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel rejects complainant IMDb's claim that Seven Summit Venture's registration and use of the domain name Indb.com runs afoul of complainant's rights under the UDRP. The Panel reached this result because the domain name Indb.com is neither identical nor sufficiently similar to complainant's mark to entitle complainant to relief.
326 F.3d 687, No. 01-3590 (6th Cir., April 10, 2003)
The Sixth Circuit Court of Appeals affirms the District Court's dismissal of trademark infringement and false advertising claims arising out of defendants' use of plaintiff's trademark in the path of the domain name of one of the pages of defendant a2z's website, and out of a statement posted on defendant a2z's web site concerning the invention of the product plaintiff sold under the mark at issue. As to the former, the Court held that a domain name's path, unlike the domain name itself, normally does not signify the source of the website. As such, use of the mark in the path of a site would not confuse users as to the source of the products sold thereon, and thus would not typically serve as the basis for a trademark infringement claim. The false advertising claims were dismissed because the statements in question were either true or non-actionable opinion.
(N.D. Ill. October 3, 1996) (Magistrate's Report)
The unauthorized use of a famous trademark in a domain name of a non-commercial site for the purpose of selling or licensing the same to the trademark owner constitutes a violation of both the Federal and Illinois Anti-Dilution statutes and will be enjoined
(N.D. Ill. October 3, 1996)(Magistrate's Report)
The unauthorized use of a famous trademark in a domain name of a non-commercial site for the purpose of selling or licensing the same to the trademark owner constitutes a violation of both the Federal and Illinois Anti-Dilution statutes and will be enjoined.
983 F. Supp. 1331 (D. Oregon, Nov. 20, 1997), aff'd. 184 F.3d 1107 (9th Cir.), petition for cert. denied, No. 99-925 (Feb. 2, 2000)
In this domain name dispute, the Court held that Plaintiff's use in its domain name of defendant's trademark did not constitute trademark infringement or unfair competition because the product advertised on plaintiff's site (a theatre production) is dramatically different from those offered for sale by defendant (video imaging equipment) and because plaintiff selected the name of its site without knowledge of defendant's mark, and without intending to benefit from the use thereof.
993 F. Supp. 282 (D.N.J. Mar. 6, 1998) aff'd. 159 F. 3d 1351 (3d Cir. 1998)
In this domain name dispute, the court enjoined defendant's unauthorized operation of a website at "jewsforjesus.org" which site was highly critical of the plaintiff organization "Jews for Jesus." Plaintiff owned a federally registered trademark in the phrase "jews for jesus" with the "o" depicted as a Jewish Star, and a common law service mark in the phrase "jews for jesus." Defendant's conduct constituted violations of the Lanham Act's prohibitions against trademark infringement, dilution and unfair competition, as well as various New Jersey state statutes. Neither the fact that defendant did not use an identical replica of plaintiff's mark in its domain name nor the disclaimer that appeared on defendant's site pronouncing its nonaffilation with plaintiff's organization were sufficient to alter the court's view. Moreover, defendant's conduct was found to be "in commerce" and "in connection with goods or services", essential prerequisites to plaintiff's federal Lanham Act claims, even though defendant did not offer anything for sale on his site, nor solicit funding for his activities. The fact that defendant's site was intended to harm and disparage plaintiff, and contained a link to an unaffiliated site which sold merchandise made such conduct commercial.)
No. 01-15899 (9th Cir., July 25, 2003)
Reversing, in part, the court below, the Ninth Circuit Court of Appeals holds that plaintiffs have stated a valid conversion claim against defendant Network Solutions Inc. ("NSI") as a result of NSI's involvement in the improper transfer of plaintiffs' domain name to a third party. NSI transferred the domain name to this third party as a result of its receipt of a forged "facially suspect" letter purporting to authorize such a transfer, without validating the request with plaintiffs. In reaching this result, the Ninth Circuit held that the registrant of a domain name has an intangible property interest therein capable of being converted.
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.
Civ. No. 96-CV-4693 (District Ct. of the State of Colorado, Co. of Denver, Sept. 26, 1997)
Plaintiffs' used the famous trademark "Rockies," owned by defendant the Colorado Rockies Baseball Club, Ltd., in connection with plaintiffs' sports-oriented website. The Court held that such use on a site which included copyrighted materials belonging to defendants and a link to a site offering to sell "official Rockies Merchandise" constituted trademark infringement, unfair competition and a violation of federal antidilution statutes and enjoined plaintiffs from continuing such conduct.
Case No. CV 96-7438 DDP (C.D. Cal. March 19, 1997)
Registrants of domain names not necessary parties in suit by service mark holder alleging that NSI, by, inter alia, permitting registration of allegedly infringing domain names, committed contributory service mark infringement
Case No. 97-56734 (9th Cir., Oct. 25, 1999)
The Ninth Circuit, affirming the decision of the District Court, holds that defendant Network Solutions Inc. ("NSI") is not guilty of contributory trademark infringement as a result of registering a domain name which contains plaintiff's federally registered service mark, or listing that domain name on root servers so as to permit Internet users to locate web sites operated thereat.
Case No. D2000-1525 (WIPO, November 14, 2000)
In this domain name dispute brought under the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel determined that Respondents' registration of fourteen domain names containing Complainant's "Magnum" trademark ran afoul of the UDRP. The Panel reached this result notwithstanding Respondents' contention that they had a legitimate interest in these domain names by virtue of a Dealership Agreement they entered into with Complainant, in which Respondents obtained a license to use certain of Complainant's patented processes. The Panel accordingly directed the transfer of the domain names in dispute to Complainant. In reaching this result, the Panel ruled that it could, and did, consider offers made by Respondents and their lawyers to lease the domains to Complainant for $2,500 per year per domain, made during settlement negotiations, as evidence of Respondents' bad faith in registering those domain names.
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.
Case No. CV 98-2495R, 1998 U.S. Dist. Lexis 10987 (C.D. Cal., June 30, 1998)
(Court directed defendant both to stop operating websites at domain names he had registered with NSI which contained the names of various famous musicians and to transfer those domain names back to the plaintiff musicians.)
Case No. D2004-0078 (WIPO, April 16, 2004)
In this domain name dispute brought under the Uniform Domain Name Dispute Resolution Policy (UDRP), the Panel holds that Complainant is entitled to the transfer of a domain name containing its trademark that Respondent registered, but had not used in connection with the operation of a web site in the approximately six years since its registration. The Panel found that Respondent had registered the domain name in bad faith both because, in response to Complainant’s request, Respondent offered to sell the domain name for substantially more than the costs associated with its registration, and because Respondent had also registered two additional domain names containing the trademarks of third parties. In reaching this decision, the Panel held that it could consider as evidence of Respondent’s bad faith correspondence from its counsel sent as part of settlement negotiations between the parties unilaterally denominated as “without prejudice”.
21 F. Supp. 2d 1003 (D. Minn., Aug. 6, 1998)
In this domain name dispute, Court finds that defendant's registration of domain names the same as, and substantially similar to plaintiff's federally registered trademark, when combined with his attempts to sell those domain names, constitutes trademark infringement, as well as a violation of the Federal Anti-Dilution Act. The Court accordingly directed defendant to cease his use of plaintiff's trademark, and to relinquish ownership of the domain names containing the mark.
WIPO Case No. D2005-0813 (WIPO, Sept. 27, 2005)
In this domain name dispute decided under the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the Panel holds that Respondent has no legitimate interest in Vanessa Minnillo.com, a domain name comprised of the name of a now famous TV personality. Because Ms. Minnillo has common law trademark rights therein by virtue of her extensive commercial activities, and because Respondent offered to sell the domain to her for a price well in excess of the out-of-pocket expenses associated with its acquisition and maintenance, the Panel directed the transfer of the domain to Complainant. Of note, the Panel held that it is the date on which Respondent first acquires the domain, and not the date on which it is first registered by its prior owner(s), that is of import in determining whether the Complainant has trademark rights sufficient to prevent Respondent's unauthorized use of the domain in question.
FA0604000671304 (Nat. Arb. Forum, May 22, 2006)
In this domain name dispute resolved in accordance with the Uniform Domain Name Dispute Resolution Policy, the Panel directed Michael Woods ("Woods"), who registered the domain mymorganstanley.com, to transfer the domain to petitioner Morgan Stanley. Woods had registered the domain name to demonstrate to attendees of his seminars that major companies do not register obvious domain names, and highlight the problems that can be caused thereby. Mr. Woods was found to be acting in bad faith because he registered the domain in the name of his cat, MEOW, the named respondent in this proceeding.
WIPO Case No. D2007-1141 (November 30, 2007)
In this domain name dispute decided in accordance with the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel holds that respondent Navigation Catalyst Systems Inc. (“NCS”) violated the UDRP by registering 35 domain names that contained complainant’s “myxer tones” mark, or variations thereof, which NCS used as pay-per-click landing pages, featuring advertisements of complainant’s competitors. In reaching this result, the Panel held that respondent’s use of another’s mark in the domain names of pay-per-click landing pages was not a legitimate use of the domain sufficient to defeat complainant’s claim under the UDRP. The Panel further held that respondent had acted with the requisite bad faith because it had used complainant’s mark to attract users to advertisements for its competitors. This finding was supported by the fact that respondent continued to register offending domain names even after the commencement of the instant UDRP proceeding. Finally, the Panel rejected respondent’s contention that it did not act in bad faith because it was unaware of complainant’s mark. The Panel held it was reasonable to conclude that respondent was in fact aware of complainant’s prior use of its mark at the time it registered the domains in question because a trademark and even an internet search would have revealed both a pending trademark application for complainant’s mark, and its use thereof.
121 F. Supp. 2d 156 (D.N.H., September 28, 2000)
The court granted defendants' motion for summary judgment, and held that defendant Network Solutions Inc. ("NSI") did not violate plaintiffs' First Amendment rights by refusing, under its "decency policy," to register domain names that contained, in their second level domains, various sexually-oriented words and phrases.
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.
529 S.E.2d 80 (Sup. Ct. Va., April 21, 2000)
Reversing the Circuit court, the Virginia Supreme Court, by a vote of 5-2, held that domain names are not subject to garnishment under Virginia state law.
According to the court, under Virginia Code 8.01-511, a judgment creditor may garnish "a liability on any person other than the judgment debtor ...". Once garnished, this asset may be sold (or collected) by the Sheriff to satisfy the indebtedness owed by the judgment debtor to the judgment creditor.
The question the court faced was whether a domain name registered by Network Solutions Inc. ("NSI") was a "liability" within the meaning of this statute that could be subject to garnishment. The Virginia Supreme Court held that as used in the code, "liability" meant "a financial or pecuniary obligation" or a "debt" or a "legal obligation enforceable by civil remedy." A domain name is not that, held the court. Instead, it is a short-hand vernacular which describes the registration services that NSI promises to deliver to the registrant under its domain name registration agreement for a defined period of time. These services include taking such steps as are necessary to cause the Internet to associate a particular domain name with a particular IP number. By rendering these services, the registrant receives the right to the exclusive association of the registered domain name with a given IP number for a designated period of time.
As such, concluded the court, "a domain name registration is the product of a contract for services between the registrar and registrant. A contract for services is not 'a liability' as that term is used in 8.01-511 and hence is not subject to garnishment."
Civ. No. 96-D-1530 (D. Col., Oct. 29, 1996)
Network Solutions commenced an interpleader action in which it sought to place under the court's jurisdiction the domain name "Clue.com." This domain name was the subject of a domain name dispute between the domain's registrant and Hasbro Inc., which holds a federal trademark in the mark "Clue." The court dismissed this action because Network Solutions was not an "innocent stakeholder" a prerequsite to an interpleader action, as it had been sued by the domain's registrant in another action for breach of its registration contract, in which Network Solutions had been enjoined from taking any action with resepct to the doamin name.
378 F.3d 1002 (9th Cir., 2004), cert. denied (2005)
Applying the "initial interest confusion" doctrine, the Ninth Circuit holds that defendant Nissan Computer's display of advertisements promoting the sale of automobiles on its Nissan.com website infringes the trademark held by plaintiff Nissan Motors in its federally registered "Nissan" trademark, and accordingly affirms the District Court's decision enjoining defendants from continuing such activity.
The Court further holds, however, that Nissan Computer's display of links on its site to a web site operated by a company owned by Uzi Nissan, the owner of Nissan Computer, which web site purports to describe the instant litigation and contains disparaging remarks about Nissan Motors, is non-commercial speech that neither infringes plaintiffs' mark nor runs afoul of the Federal Trademark Dilution Act despite its potentially negative impact on plaintiffs' commercial activities. The Ninth Circuit holds such speech protected by operation of the First Amendment, and accordingly reverses so much of the District Court's decision that enjoined defendant Nissan Computer from placing such links on its Nissan.com site.
Finally the Court held that issues of fact prevented a determination at this time as to whether defendants' use of plaintiffs' Nissan mark violated the FTDA. To establish such a dilution claim, held the Court, the plaintiff must establish that its mark was famous when defendant first commenced a potentially diluting use thereof. Disagreeing with the court below, the Ninth Circuit held that such use commenced when defendant began to call its business 'Nissan Computer,' and not when it subsequently registered the Nissan.com domain name for use in that business. As there was an issue of fact as to whether the Nissan mark was famous as of 1991, when Nissan Computer commenced its operations, the court denied plaintiffs' motion for summary judgment, and remanded the question of defendants' violation of the Federal Trademark Dilution Act to the District Court.
89 F. Supp. 2d 1154 (C.D.Cal. 2000) aff'd. without opinion, 246 F.3rd 675 (9th Cir. 2000)
Court holds that plaintiffs Nissan Motor Co. and its licensee are likely to prevail on their trademark infringement claims against defendant Nissan Computer Corporation arising out of defendant's display on its nissan.com and nissan.net websites of third party advertisements for automobiles. The court accordingly issued a preliminary injunction, enjoining defendant from displaying automotive-related advertising and links on the web sites in question. The court further directed defendant to place a prominent disclaimer on the site, informing visitors that it is not affiliated with plaintiffs, and providing users with plaintiffs' web site address. The court permitted defendant to continue to operate web sites at nissan.com and nissan.net at which it advertised its computer business and non-automotive products, in part because Nissan is the surname of defendant's principal, and in part because plaintiffs are not in the computer business. The court also denied defendant's motion to dismiss the case for want of personal jurisdiction, both because the effects of its infringing activities were felt in California, where one of the plaintiffs was headquartered, and because defendant had contracted with a number of California concerns to obtain the automobile advertising at issue.
115 F. Supp.2d 1108, Civ. No. 00-308 (DSD/JMM) (D. Minn. September 25, 2000)
Court denies plaintiff's application for a preliminary injunction, enjoining defendant from operating a web site critical of plaintiff and its business practices at the domain www.northlandinsurance.com
Case No. D2001-0903 (WIPO, Nov. 6, 2001)
In this domain name dispute brought under the Uniform Domain Name Dispute Resolution Policy (UDRP), the Panel holds that an authorized sales and service agent has a "legitimate interest" in a domain name containing the mark of the product it sells and services on Complainant's behalf and accordingly permits Respondent to continue to use the domain name in its resale activities over the mark holder's objection.
115 F. Supp. 2d 772 (E.D. Mich., August 25, 2000), aff'd. in part, vacated in part and remanded, 319 F.3d 243 (6th Cir. 2003)
In this trademark infringement suit, the court enjoined defendant, a truck listing service, from using plaintiff's registered federal trademarks in either the domain name, meta tags, site title or wallpaper of web sites that inform consumers of entities offering plaintiff's trucks for sale.
1999 U.S. Dist Lexis 6552 (E.D.Va. April 9, 1999)
Court issues a preliminary injunction, enjoining defendants from continuing to operate a web site at wwwpainewebber.com. Defendants commenced operation of this site in the hopes of capitalizing on typographical errors made by surfers seeking Paine Webber's own web site, located at www.painewebber.com. Surfers who failed to type in the period found in plaintiff's domain name between the www and painewebber were unexpectedly taken to a web site featuring pornography. The court based such an award on its determination that plaintiff was likely to prevail on its federal dilution claim, given that plaintiff's mark "paine webber" was famous, and was being tarnished by its association, as a result of defendant's acts, with pornography.
No. C96-2703 TEH, 1997 U.S. Dist. Lexis 20877 (N.D. Cal. December 18, 1997)
Use of plaintiff's trademark in the "path" or "second level" of a domain name does not 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. In addition, limited use of plaintiff's federally registered mark to describe a product being sold by defendant constitutes 'nominative fair use' of the mark, and not trademark infringement, because, inter alia, the product is one not readily identifiable without the use of the mark.
No. 05-56794 (9th Cir. November 5, 2007).
Ninth Circuit holds that plaintiff Perfumebay.com, Inc.’s use of the trademark “PerfumeBay” as a cojoined term infringes defendant eBay’s famous trademark, and is likely to cause consumer confusion. The Ninth Circuit rested this determination on the similarity of the parties’ marks – PerfumeBay contains the entire eBay mark – the similarity of the products and services offered by the parties to the public – each facilitate the public’s purchase of perfume – and the fact that both parties use the Internet to market their products.
The Court further held that plaintiff’s use of PerfumeBay as a cojoined term diluted defendant eBay’s famous mark. Due to the strength and highly distinctive nature of eBay’s mark, plaintiff’s mark did not need to be ‘identical or nearly identical’ to eBay to sustain a dilution claim. Instead, given the fame of the eBay mark, eBay could prevail even if plaintiff’s mark was ‘a bit different’ provided consumers would view it as essentially the same as eBay’s mark, as was the case here.
As a result, the Ninth Circuit enjoined plaintiff from continuing to use PerfumeBay as a cojoined mark, either in the domain name of its site, on its website, or in Internet advertising.
The Ninth Circuit held that plaintiff’s use of the mark “Perfume Bay” as separate words, however, did not infringe eBay’s mark. When separated, “Perfume Bay” did not contain defendant eBay’s entire mark, nor was it likely to cause consumer confusion. As a result, the Ninth Circuit allowed plaintiff to continue its use of “Perfume Bay” on its website, or otherwise, so long as the words were not cojoined.
Finally, the Ninth Circuit affirmed the District Court’s denial of plaintiff’s application for attorneys’ fees, holding it was not the prevailing party in this litigation.
97 Civ. 0629 (KNW)(S.D.N.Y. March 26, 1997), aff'd. 152 F. 3d 920 (2d Cir., Feb. 9, 1998), cert. denied, 525 U.S. 834 (1998)
Defendant enjoined from continuing to utilize plaintiff's service mark, Planned Parenthood, in its domain name, at which is found a web site featuring references to a book espousing anti-abortion positions. Such use held to violate Lanham Act and not to be protected by First Amendment
51 F. Supp. 2d 707 (E.D. Va., June 8, 1999), vacated and remanded 215 F.3d 1320 (4th Cir., 2000)
Court grants defendants' motion to dismiss complaint for want of personal jurisdiction on the grounds that the Federal Trademark Dilution Act does not permit the prosecution of in rem actions against domain names which allegedly dilute famous trademarks.
Plaintiffs, owners of the trademarks "porsche" and "boxster", brought suit under the Federal Trademark Dilution Act, claiming that 128 domain names, including "porsche.com", diluted their famous marks. Plaintiffs elected to proceed with this suit in a novel manner. Rather than file an in personam action against those who had registered the allegedly offending domain names, plaintiffs commenced an in rem action against the 128 domain names themselves.
The court held that this procedure was not authorized by the Act. Moreover, such a procedure, if authorized, would call into question the constitutionality of the statute, as it would permit the assertion of personal jurisdiction over parties without regard to the level of their contacts with the forum. The court accordingly dismissed the complaint.
Claim No. FA0604000672431, (NAF June 5, 2006)
In this domain name dispute resolved in accordance with the Uniform Domain Name Dispute Resolution Policy (UDRP), the Panel holds that Respondent has a legitimate interest in the domain name safeguard-storage.com because of the preparations it undertook to operate a self storage business under the name Safeguard Storage prior to receiving notice of the instant domain name dispute. As a result, the Panel refused to direct Respondent to transfer the disputed domain to Complainant Safeguard Operations LLC, owner of several federally registered trademarks containing the word Safeguard, which marks its uses in connection with its operation of self storage facilities.
391 F.3d 439, 2004 U.S. App. Lexis 25479 (2d Cir., December 10, 2004)
In this domain name dispute, Second Circuit affirms the dismissal of trademark infringement claims brought by Savin Corporation, a maker of photocopiers, printers, fax machines, and other office equipment, against the Savin Group, Savin Engineers and Savin Consultants arising out of defendants' use of plaintiff's "Savin" trademark in, among other things, web site domain names, to market their professional engineering companies. The Second Circuit held that consumers were unlikely to be confused by these competing uses of the "Savin" mark, in part because of the differing services and products the parties offer to the public.
The Second Circuit reversed so much of District Court's decision that dismissed claims plaintiff brought under the Federal Trademark Dilution Act ("FTDA") and its New York State counterpart, New York Gen. Bus. Law §360-1, and remanded those claims to the District Court for reconsideration. The Second Circuit held that the District Court had improperly concluded that the Supreme Court's decision in Moseley mandated, in the instant case, that plaintiff must provide evidence of actual dilution to proceed with claims under either statute. As to the FTDA, the Second Circuit held that such a showing is not necessary where the junior user used a mark identical to the famous mark owned by the senior user. As to New York law, the Second Circuit held that Moseley's pronouncement did not effect the showing necessary under New York State law. Under New York State law, a claim for dilution could proceed on a showing of a mere likelihood of dilution -- the submission of evidence of actual dilution mandated by the Supreme Court in Moseley was not required.
Civ. No. 99-738 (D. Minn., December 22, 1999)
In this trademark infringement action, the court denied plaintiff's motion for a preliminary injunction, enjoining defendant from continuing to use a domain name that plaintiff contended infringed its common law trademark. Plaintiff operated a web site at "home-market.com" and defendant operated a web site at "home-market.net." Notwithstanding this fact, and the further fact that plaintiff's use commenced before defendant's, the court was unwilling to issue the requested injunctive relief. The court found that plaintiff had failed to establish that it had a protectable common law mark in 'home-market.com" which the court determined was a descriptive mark, prior to the time defendant commenced the use in question. The court reached this conclusion because plaintiff had failed to submit evidence sufficient to establish that secondary meaning had developed in its mark prior to the time defendant commenced the challenged use. The court further found that plaintiff had failed to establish a likelihood of consumer confusion, which conclusion was based on the fact the plaintiff's mark was not strong, that the products offered at the sites at "home-market.net" and "home-market.com" were distinct, that there was no evidence that defendant adopted his domain name in bad faith, and that there was "only the barest evidence of actual confusion."
51 F. Supp.2d 554 (E.D. Pa., June 9, 1999)
To fully understand this decision, the reader must also read the court's prior decision in this same matter, reported at 51 F. Supp.2d 542. Relevant portions of both decisions will be discussed below.
The Court held that defendants' use of plaintiffs' common law trademark in both the domain name "www.seawind.net" of their website and in meta tags found thereon infringed plaintiffs' mark. The Court accordingly enjoined defendants from continuing such use.
Plaintiffs SNA, Inc. and Silva Enterprises Ltd. (collectively "SNA") manufacture and market do-it-yourself kits which contain most of the parts (excluding the engine) necessary to construct an amphibious aircraft called the Seawind. Plaintiffs hold a federal trademark in the mark "Seawind and design" and a common law trademark in the mark "Seawind."
Defendant Paul Array owns defendant Horizon Unlimited. Together, these defendants publish a newsletter titled "The Seawind Builders Newsletter" which they send to Seawind customers and builders and publish on a website they operate at www.seawind.net. At this website, defendants publish copies of each Seawind Builder Newsletter, as well as other information and commentary about the Seawind, SNA and Silva. Much of this latter information is derogatory and highly critical of plaintiffs. Each issue of the newsletter contains a disclaimer that the newsletter is "not affiliated with any aircraft manufactures [sic], kit builders or marketers."
Notwithstanding its determination that defendants' use of the mark in the title of the newsletter did not infringe plaintiffs common law trademark, the court determined that defendants' use of the exact Seawind mark in the domain name of their site did. The court found that such use was likely to confuse the public as to the source of the materials on the website, even though a disclaimer was posted on the website, and the site's content were highly critical of the plaintiffs. Said the court "the relevant confusion that the domain name causes is drawing the web user to the site in the first place, and the disclaimer cannot fix that."
The Court further enjoined defendants from continuing to use the mark "Seawind" in the meta tags at their website. The court found that defendants used the mark in this fashion in an effort to confuse consumers and lure them to defendants' site in lieu of plaintiffs'. The Court rested this finding of trademark infringement on the defendants' repeated use of the Seawind mark in their meta tags, and their general intent to harm plaintiffs.
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.
343 F.3d 249, No. 02-2069 (4th Cir., Sept. 4, 2003)
Vacating the decision of the court below, the Fourth Circuit Court of Appeals holds that defendant Travelers Indemnity Company of America ("Travelers") is obligated under an insurance policy it issued to defend Nissan Computer Corporation ("NCC") in a trademark infringement and dilution suit brought by Nissan Motor Company ("Nissan") arising out of NCC's use of the "Nissan" mark in the domain names of NCC's web sites. NCC had used the "Nissan" mark, which is also the last name of NCC's owner, on web sites which contained advertisements for both competitors' automobiles and NCC's own hosting and internet access services. The Fourth Circuit held that Travelers was obligated to defend NCC against Nissan's claims under an insurance policy which protected NCC from any "advertising injury" sustained by a third party which was caused by an "offense [NCC] committed in the course of advertising NCC's goods, products or services."
162 F.Supp. 2d 372, Civ. Act. No. 00-3343 (E.D. Pa., August 27, 2001)
In this domain name dispute, Court grants defendant's motion for summary judgment, dismissing the claims of unfair competition and trademark dilution advanced by plaintiff, owner of the federally registered trademark "Strick," against defendant as a result of defendant's registration of the domain name "strick.com." The Court reached this decision, in large part, because (a) the parties' respective businesses did not compete for the same customers, as plaintiff sold transportation equipment such as freight semi-trailers, while defendant sold computer consulting services, and (b) "strick" was defendant Strickland's nickname.
319 F.3d 770 (6th Cir., February 7, 2003)
Reversing the court below, the Sixth Circuit dissolves an injunction which enjoined defendants from using plaintiff's trademarks in conjunction with the word "sucks" in the domain name of several "complaint" sites, as well as in the domain name of a non-commercial "fan" site. The Sixth Circuit held that defendants' use of plaintiff's mark in a 'fan' site did not run afoul of Section 1114 of the Lanham Act because of the presence of both a prominent disclaimer on the site disavowing any affiliation with plaintiff, and a link to plaintiff's official web site. Defendant's use of plaintiff's marks in conjunction with the word "sucks" in the domain names of non-commercial complaint sites did not violate Section 1114 of the Lanham Act because there was no likelihood of consumer confusion arising therefrom, and because such speech is protected by the First Amendment.
Case No. 96-8377 MRP (D. Cal. May 9, 1997)
Court enjoins defendant from using plaintiff's famous federally registered service mark "Teletech" in the domain name "teletech.com" on the grounds that such use violates the Federal Trademark Dilution Act. Court holds that defendant can continue to operate a website at "tele-tech.com", a mark defendant was using in commerce prior to plaintiff's use of its "Teletech" mark to promote a business that provides different services to its clientele than those provided by plaintiff.
79 F.Supp. 2d 331 (S.D.N.Y., Dec. 2, 1999)
The court awarded $46,000 to compensate for the attorney's fees expended in stopping defendant's infringement of plaintiff's common law trademark, which defendant used in both its domain name and meta tags.
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.
1996 U.S. Dist. Lexis 17090 (N.D. Cal. October 29, 1996)
(Use of "Adults R Us" in domain name enjoined because such use impermissibly dilutes plaintiffs' famous federal trademarks in "Toys R Us" and the "R US" family of marks in violation of 15 U.S.C. §1125(c)(1). Such dilution was found to occur as a result of the tarnishing of the marks caused by their association with defendants' sale of sexual devices and clothing under the "Adults R Us" banner).
26 F. Supp. 2d 639 (S.D.N.Y., October 28, 1998) vacated, 201 F.3d 432 (2d. Cir., Nov. 10, 1999)
Court held that defendants' use of the domain name "gunsareus.com" in connection with the operation of a website selling firearms neither infringed nor diluted plaintiffs' famous Toys "R" Us family of marks. In rejecting plaintiffs infringement and unfair competition claims, the court determined that consumers were not likely to be confused by defendants' use of the "gunsareus" domain name into believing that plaintiffs were affiliated with defendants, who sold firearms out of a single small shop and on their website. Plaintiffs' dilution claims failed because, in the court's opinion, defendants' "are us" domain name was not sufficiently similar to plaintiffs' "R" us family of marks to cause consumers to relate defendants' business to that of plaintiffs. As such, defendants' use of "are us" in its domain name would neither tarnish nor blur plaintiffs' marks.
Claim No. FA0508000545210 (Nat. Arb. Forum, Oct. 11, 2005)
In this domain name dispute resolved in accordance with the Uniform Domain Name Dispute Resolution Policy ( "UDRP"), the Panel denied Complainant Travel Insured International's request that its competitor, Respondent I Travel Insured Inc., be compelled to stop using its itravelinsured.com domain name. Respondent held a legitimate interest in this domain mandating denial of such relief because it both owned the trademark registration for I Travel Insured, and was operating a business under that name. By a two to one margin, the Panel also determined that Complainant had engaged in reverse domain name hijacking by pursuing this proceeding. The Panel reached this result despite the fact that Complainant held a trademark registration in Travel Insured International, operated a web site at the domain travelinsured.com and had commenced a proceeding to cancel Respondent's trademark registration on the grounds that it was confusingly similar to its own.
306 F.3d 509 (7th Cir., October 4, 2002)
Reversing the decision of the court below, the Seventh Circuit Court of Appeals holds that a reseller of "Beanie Babies" did not violate the Federal Trademark Dilution Act when she used plaintiff Ty Inc.'s "Beanies" trademark in the title and domain name of her web site, at which site approximately 80% of the toys offered for sale are used "Beanie Babies" manufactured by Ty.
2000 U.S. Dist. Lexis 2670, 106 F. Supp. 2d 845 (E.D.Va., Feb. 24,2000) aff'd., 238 F3d.264 (4th Cir., January 22, 2001)
In this domain name dispute, Court grants defendants Volkswagen AG and Volkswagen of America Inc. (collectively "Volkswagen") summary judgment, holding that plaintiff's use of defendants' famous "vw" trademark in the domain name "vw.net", which also happen to be the initials of plaintiff's firm, constitutes cyberpiracy, trademark dilution and trademark infringement.
The court found that plaintiff had run afoul of the newly enacted Anticybersquatting Consumer Protection Act by registering a domain name containing defendants' famous trademark. The court held that plaintiff undertook such registration with a bad faith intent to profit from a previously registered mark within the meaning of the Act. In reaching this conclusion, the court relied on the fact that "Virtual Works has never registered a trademark or conducted business using [the vw] initials," "vw" was not the legal name plaintiff's entity, plaintiff's use of the vw mark has created a likelihood of confusion and that there was evidence of actual consumer confusion in the form of e-mails received by plaintiff that were intended for defendants, plaintiff has posted disparaging remarks about defendants at the web site it operates at the vw.net domain, plaintiff had offered to sell the domain to defendants and defendants' trademark was famous. Although not recited in the court's opinion, it appears from plaintiff's web site that plaintiff and its predecessors registered the domain name in 1996, and used it to promote their web site hosting and development business.
The court further found that plaintiff had infringed and diluted defendants' trademark. On this latter point, the court stated:
Recent case law holds that internet cyberpiracy constitutes per se trademark dilution. ... VW being associated with Virtual Works instead of Volkswagen constitutes trademark dilution.
2:01-CV-00294-LRH-LRL (D. Nev., December 27, 2007)
On remand, the District Court adheres to its initial decision, and holds that defendant’s use of the domain name evisa.com to promote its language service business dilutes plaintiff Visa International Service Association’s famous ‘visa’ trademark. Following the Supreme Court’s interpretation of the Federal Trademark Dilution Act (“FTDA”) announced in Moseley v. V Secret Catalogue, the District Court found the requisite evidence of actual dilution in the defendant’s use of a trademark – evisa – substantially similar to plaintiff’s famous Visa mark in its own domain name. This, the Court held, had the effect of both preventing plaintiff from using that domain to market its products, and of placing plaintiff’s reputation at the mercy of defendant. Importantly, the Court did not rely on direct evidence of actual dilution, or on evidence that consumers actually associated defendant’s evisa mark with plaintiff or its products. As a result, the District Court granted plaintiff summary judgment on its trademark dilution claim.
Case No. D2005-0130 (WIPO, April 10, 2005)
In this domain name dispute brought under the Uniform Domain Name Dispute Resolution Policy ("UDRP"), the presiding Panelist directed Jeff Milchen ("Milchen") to transfer to Wal Mart the domain name walmartfacts.biz Milchen had registered. In reaching this result, the Panelist held that a professed intention to use a domain name in the future to operate a gripe site critical of Wal-Mart was insufficient to establish the legitimate interest in that domain necessary to defeat complainant's claim under the UDRP, when such an intention had not yet been acted upon.
33 F. Supp. 2d 488 (E.D. Va., Feb. 2, 1999)
In this domain name dispute, Court holds that defendant's use of the domain names www.washingtonspeakers.com, www.washington-speakers.com, www.washingtonspeakers.net and www.washington-speakers.net infringed the common law trade name of its competitor the plaintiff in "Washington Speakers Bureau" and accordingly directed defendant to relinquish ownership of those domains. Both parties aid the public in locating speakers for lectures.
The court concluded that the plaintiff had shown the requisite likelihood that consumers would be confused by defendant's use of a "colorable imitation" of plaintiff's mark in a domain name. The court determined that the public did not associate the abbreviated phrase "Washington Speakers," descriptive of services offered by both parties to the lawsuit, with the plaintiff. The court nonetheless determined that defendant's actions were likely to confuse the public because the services the parties offered to the public were virtually identical, the parties advertised in the same medium (the Internet), the mark was used in a domain name, which gives rise to a particular potential for confusion, and the fact that, in the court's opinion, defendant adopted the domain names at issue in a bad faith effort to attract business otherwise headed for plaintiff. This latter finding was premised in large part on the fact that defendant, at the time it registered the domain names at issue, had also registered the domain names of a number of its competitors, and was aware of plaintiff and its tradename.
Lastly, the court found that plaintiff's dilution claim was without merit because plaintiff's mark was not famous.
Claim No. FA0204000109386 (NAF, May 24, 2002)
In this domain name dispute brought under the Uniform Domain Name Dispute Resolution Policy (UDRP), the Panel holds that a non-exclusive reseller of parts for Complainants' products does not have a right to use Complainants' mark in domain names 'pointing' to a web site at which parts for both Complainants' products, and those of its competitors, are sold. The Panel accordingly directed the reseller to transfer the domain names in dispute to Complainants.
Civ. Act. No. 99-CV-616, 1999 U.S. Dist. Lexis 6080 (E.D. Pa., April 28, 1999)
(Court holds that it has the power to and issues an order directing the non-party Network Solutions Inc. ("NSI") to transfer an infringing domain name registered by the defendants to the owner of the infringed mark, and to refuse to register proscribed domain names by defendants in the future which will similarly infringe plaintiff's trademark. On NSI's application, the court modified its prior order so as to remove the order's direction that NSI prevent "any party" from registering a name similar to plaintiff's trademark. Such aspect of the order, held the court, imposed an unreasonable burden on NSI and went beyond the permissible authority of the court to prevent defendants from engaging in infringing activities in the future.)
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.
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:
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.
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:
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.
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.
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:
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
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:
Said the First Circuit:
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.
SMC Promotions, Inc., et al. v. SMC Promotions, et al.
355 F. Supp.2d 1127 (C.D. Cal. 2005)
Court finds web developer guilty of copyright infringement by copying without authorization plaintiff Specialty Merchandise Corporation’s (“SMC”) copyrighted photographs and descriptions of its products, and an uploading them on clients’ websites, who are authorized distributors of plaintiffs’ products. In reaching this result, the Court held the web developer was not authorized to engage in such activity, notwithstanding the fact that its clients were licensed by SMC to place the photos on their own websites. This license was expressly limited by SMC to the distributor, who was not allowed to “delegate or authorize any other person to do so, whether on [the distributor’s] behalf, or otherwise.” Because the web developer had copied works in which plaintiff SMC held copyright without authorization, it was found guilty of copyright infringement.
The Court also found the web developer guilty of trademark infringement, by using plaintiff’s ‘SMC’ trademark in the domains of various websites at which it advertised it web development services for SMC distributors. These domains included SMCPromotions.com, SellSMC.com, and SMCForums.com. The Court found that defendants’ use was likely to cause consumer confusion. In reaching this result, because the matter arose ‘in the context of the Internet,’ the Court relied on three of the 9th Circuit’s eight ‘Sleekcraft’ factors for evaluating consumer confusion, known as the ‘internet trinity.’ Each of these three factors, held the Court – the similarity of the marks used, the related nature of the parties’ goods and services, and the parties’ simultaneous use of the internet as a marketing channel – pointed strongly in favor of a finding of likely consumer confusion. Notably, defendants were competing with an affiliate of SMC, plaintiff eMerchants Club, which also offered web development services to SMC distributors. The use on defendants’ site of a disclaimer, disclaiming affiliation with plaintiffs, and the addition of generic terms such as ‘sell’ ‘promotion’ or ‘forum’ in the domain names, did not alter this conclusion. Said the Court:
The Court’s finding was buttressed by the presence of actual confusion on the part of a SMC distributor who thought defendants were affiliated with plaintiffs when he hired them. Because the remaining five “Sleekcraft” factors did not ‘weigh strongly’ against a finding of likelihood of confusion, the Court found defendants guilty of copyright infringement.
Plaintiff SMC and its affiliates import and distribute various products through a network of distributors known as members. The products plaintiffs sell are depicted in catalogues, which contain copyrighted photos and descriptions of those products. Members can access these photographs and descriptions on a secure portion of plaintiff’s website, and are allowed to display them on their own website. Plaintiff SMC’s affiliate offers SMC members web development services. Defendants were attempting to compete with this affiliate for the web development business of SMC members, which efforts gave rise to this suit.
The Network Network v. CBS Inc., et al
No. CV 98-1349, 2000 US Dist. Lexis 4751, 2000 WL 362016 (C.D. Cal. Jan. 18, 2000)
The Network Network's registration and use of the domain name "www.tnn.com" neither infringed CBS's famous trademark "TNN" - (shorthand for "The Nashville Network") - nor diluted that mark. The Nashville Network is a cable television network that broadcasts country music and country lifestyle programming; The Network Network provides consulting and training to information technology managers and professionals.
On the parties’ cross-motions for summary judgment, the District Court held that The Network Network’s use of its tnn.com domain did not dilute CBS’s famous mark under the Federal Trademark Dilution Act because such use commenced before that mark became famous. “[T]he statute looks to the mark’s fame at the time of the mark’s first commercial use, not when the first use occurs that the mark owner finds objectionable.”
The Court also rejected CBS’s trademark infringement claims, finding there was little likelihood that consumers would be confused by plaintiff’s use of tnn.com given the widely divergent nature of the product and services offered by the parties to the public.
The Court rejected CBS’s initial interest confusion claim for the same reason. Said the Court:
For the same reasons, the Court also rejected CBS’s corresponding California state law dilution and infringement claims, and accordingly resolved this domain name dispute in plaintiff's favor.
Additional cases can be found in the Trademark section of the Index.
This policy governs disputes between trademark owners and those owning domain names that contain the trademark, or a mark confusingly similar thereto, over those domain names.
These rules govern the manner in which UDRP proceedings are conducted.
ICANN provides a series of searchable databases of the UDRP decisions issued by the panels of a number of its authorized dispute resolution service providers, including WIPO and NAF. In addition to a full-text word search of the panel decisions, these databases are searchable by the domain name that was the subject of the UDRP proceeding, the parties to the proceeding, and the date the proceeding was commenced.
WIPO provides this searchable database of the UDRP decisions issued by its panels.
WIPO has prepared this helpful overview of the decisions of various WIPO arbitation panels on numerous questions that often arise in UDRP proceedings.
The National Arbitration Forum (NAF) provides this searchable database of the UDRP decisions issued by its panels.
ICANN provides this list of the entities authorized to conduct UDRP proceedings.
This link will take you to the Complaint filed in a UDRP Proceeding concerning the domain name dustindiamond.com. I did not draft this complaint.
This link will take you to the Complaint filed in a UDRP Proceeding concerning the domain name direction.com. I did not draft this complaint.
WIPO provides this UDRP Domain Name Dispute Complaint form, complete with annotated instructions as to how it should be completed.
This link will take you to the Response filed in a UDRP Proceeding concerning the domain name savinsucks.com. I did not draft this response.
WIPO provides this UDRP Domain Name Dispute Response form, complete with annotated instructions as to how it should be completed.
Read my article, The Anticybersquatting Consumer Protection Act - Key Information, published in the September 9, 2005 edition of the New York Law Journal.