Вы находитесь на странице: 1из 28

DOMAIN NAME DISPUTES

IN THE UNITED STATES DISTRICT COURT


FOR THE NORTHERN DISTRICT OF ILLINOIS
ACTMEDIA, INC., a Delaware corporation,
Plaintiff,
v.
ACTIVE MEDIA INTERNATIONAL, INC. an Illinois corporation,
Defendant.
Case No. 96C3448.
July 12, 1996
FINAL JUDGMENT AND PERMANENT INJUNCTION
Opinion: Judge Zagel:
This matter having come before the Court upon the Complaint For Damages And
Injunctive Relief filed by ActMedia, Inc. ("Plaintiff") against Active Media
International, Inc. ("Defendant"), the Court having reviewed the Complaint and all
other matters of record, and being otherwise knowledgeable of the premises, it is
hereby;
FINALLY ORDERED, ADJUDGED, AND DECREED as follows:
Pursuant to 15 U.S.C. Section 1121(a), this Court has original subject matter
jurisdiction over this action as it arises under U.S.C., Title 15, Chapter 22 (the
"Act"), and involved Defendant's unauthorized use and false designation of origin
in commerce of a federally registered trademark owned by Plaintiff. This Court
has personal jurisdiction over Defendant because it is a Illinois corporation doing
business in the State of Illinois. Pursuant to 28 U.S.C. Section 1391(b)(1), venue
is proper before this Court.
Since June of 1972, Plaintiff has provided advertising and promotional services,
domestically and internationally, through use and ownership of trademark
"ActMedia" ("Mark"), relating to the promotion of goods and services of others
through planning, arranging, and designing in-store signage, print displays, video
and audio displays, sampling and couponing events, conducting demonstrations,
and providing post-event analysis and demonstrations (the "Services"). Plaintiff
has become widely known in the marketplace as a preeminent source for such
Services. The Services are strongly associated with and identified by Plaintiff's
registered Mark, which has been continuously owned and used by Plaintiff in
commerce since June of 1972. On April 8, 1986, Plaintiff registered the Mark with
the United States Patent and Trademark Office, Registration No. 1389.370.

DOMAIN NAME DISPUTES

Pursuant to 15 U.S.C. Section 1065, Plaintiff has the incontestable right to use
the Mark in commerce in connection with the Services.
The Mark has also been affixed to and used in commerce in connection with a
wide variety of promotional and sales items, such as posters, signs, display units,
uniforms, and promotional materials. Through great expense and effort incurred
by Plaintiff, the Mark has become known in commerce as a strong identifier of
the source of the Services and these related consumer items: that source being
Plaintiff. As a direct result of Plaintiff's extensive efforts, the Mark has acquired
substantial and valuable secondary meaning.
In or about 1995, Plaintiff began implementation of its plan to go "on line" through
the Internet. In or about February, 1996, Plaintiff attempted to reserve the Internet
domain name, "actmedia.com" ("Domain Name"), as its Internet address. When it
attempted to reserve the Domain Name, Plaintiff discovered for the first time that
Defendant, without authorization from Plaintiff, had already reserved the Domain
Name. Defendant's reservation of the Domain Name has precluded Plaintiff from
reserving an Internet domain name incorporating its registered Mark.
Defendant's reservation of the Domain Name violates 15 U.S.C. Section 1125
and Illinois common law because it: (a) constitutes unauthorized use and
misappropriation of Plaintiff's Mark; (b) constitutes false designation of origin; (c)
is likely to cause confusion in the marketplace that Plaintiff and Defendant are
affiliated; and (d) is likely to cause confusion that Plaintiff sponsors or approves
Defendant's commercial activities. Further, Defendant's reservation of the
Domain Name also violates the Illinois Anti- Dilution Act, III.Rev.Stat ch 140,
Section 22, because it creates a likelihood of dilution of the distinctive quality of
the Mark. Plaintiff has no adequate remedy at law, and has and will continue to
suffer irreparable harm if Defendant continues its unauthorized use and
misappropriation of the Mark by precluding Plaintiff from using its Mark as an
Internet domain name. The public interest will be served by issuing the injunctive
relief requested by Plaintiff.
Relief Granted
Plaintiff is hereby granted the following permanent injunctive relief:
1. 1. Pursuant to 15 U.S.C. Section 1116, the Illinois Anti-Dilution Act, and
Illinois common law, Defendant, and officers, agents, servants, employees, and
attorneys, and those persons in active concert or participation with them who
receive actual notice of this Final Judgment And Permanent Injunction are hereby
mandatorily and permanently enjoined from using or infringing in any manner
Plaintiff's registered trademark, "ActMedia;"
2. 2. Pursuant to 15 U.S.C. Section 1116, the Illinois Anti-Dilution Act, and
Illinois common law, Defendant, and its officers, agents, servants, employees,
and attorneys, and those persons in active concert or participation with them who

DOMAIN NAME DISPUTES

receive actual notice of this Final Judgment And Permanent Injunction are hereby
directed to immediately release to Plaintiff their interest(s) in the Internet Domain
Name, "actmedia.com", and immediately transfer all interests in said Domain
Name to Plaintiff, and execute all documents necessary to immediately effect
such transfer of the Domain Name to Plaintiff;
3. 3. The Court reserves jurisdiction to enforce the requirements of this Final
Judgment And Permanent Injunction.
So Ordered, in Chambers on this 12th day of July 1996.
Archdiocese of St. Louis, et al. v. Internet Entertainment Group, Inc.
34 F. Supp. 2d 1145 (E.D. Mo., Feb. 12, 1999)
Plaintiffs Archdiocese of St. Louis ("Archdiocese") and Papal Visit 1999, St. Louis
owned common law trademarks in a number of marks including "Papal Visit
1999," which marks they used to promote the Pope's January 1999 visit to St.
Louis, Missouri. Defendant operated websites at the domain names
"papalvisit.com" and "papalvisit1999.com." These websites provided limited
information about both the Pope's then upcoming visit and St. Louis in general. In
addition, they "provided advertising for defendant's adult entertainment websites,
hyperlinks to these other websites, and an assortment of 'off-color' stories and
jokes regarding the Pope and the Roman Catholic Church."
Plaintiffs objected to this use of their marks, and brought suit alleging federal and
state law claims for trademark infringement, dilution and unfair competition. On
plaintiffs' motion, the court issued a preliminary injunction, enjoining the
defendant from continuing to operate the websites at the domain names at issue.
Defendant opposed this motion in part on the ground that the court lacked
personal jurisdiction over it. Relying on defendant's contacts with Missouri via the
operation of the challenged websites, the court rejected this argument and held
that it could exercise specific personal jurisdiction over the defendant in claims
arising out of the operation of these websites.
As stated above, defendants operated websites available via the World Wide
Web to all residents of the United States, including those of Missouri, at domain
names that allegedly incorporated plaintiffs' common law trademarks. These
websites merely contained information about the Pope's visit, as well as
advertising for, and links to, 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. The court did not indicate in
its decision that any Missouri residents had actually bought anything after
reaching defendant's adult sites via links from the sites at issue. It did, however,
find that "a number of Missouri residents contacted the Archdiocese to complaint
about defendant's papal visit websites."

DOMAIN NAME DISPUTES

These contacts with Missouri were held sufficient to confer jurisdiction on the
Missouri District Court. The court rejected defendant's argument that the
websites at issue were "passive" sites which would not confer jurisdiction on the
court. Instead the court held that these websites:
actively not only provides information about the papal visit and St.
Louis, but aggressively encourages users to hyperlink to other websites
which advertise, promote and sell adult entertainment services and
products. It is clear to this Court that [defendant] may have been
communicating its activities globally, but by specifically utilizing the papal
visit to St. Louis, using domain names which mirrored the alleged
trademarks consistently publicized by the Archdiocese of St. Louis
throughout St. Louis and the immediate metropolitan area, and providing
information about St. Louis, [defendant] intended to reach Internet users in
Missouri. ... [and] availed itself of the privilege of conducting activities in
Missouri.
Arguably, this decision holds that the addition of an advertisement and link to a
website, which links that website to another at which the webmaster sells
products, is sufficient to transform an otherwise passive site into a site whose
operation subjects the webmaster to jurisdiction wherever it is available.
Finding that it had jurisdiction over the defendant, the court proceeded to award
plaintiffs injunctive relief. In so holding, the court found that plaintiffs were likely to
prevail on their Federal trademark claims 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."
The court rejected defendant's argument that it had a First Amendment right to
use the marks because defendant did not use the marks as part of a
communicative message. Instead, its use of the marks in domain names, which
serve as "source identifiers," is not protected by the First Amendment. Said the
court:
Defendant's use of the plaintiffs' marks is entitled to First Amendment protection
when its use of the marks is part of a communicative message, not when the
marks are used to identify the source of a product, or in this case, the websites
belonging to or being sponsored by the plaintiffs.

DOMAIN NAME DISPUTES

Bosley Medical Institute, Inc., et al. v. Michael Steven Kremer


403 F.3d 672 (9th Cir., April 4, 2005)
In this domain name dispute, the Ninth Circuit holds that the use of anothers
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 anothers goods or
services does not fit this bill. The Ninth Circuit accordingly affirmed the District
Courts grant of summary judgment, dismissing plaintiffs trademark infringement
and dilution claims.
The Ninth Circuit reversed, however, so much of the District Courts decision
which dismissed plaintiffs 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 noncommercial gripe site does not absolve the griper from potential liability under the
ACPA. Because that was the basis on which the lower court dismissed plaintiffs
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.
Defendant Michael Kremer (Kremer) was dissatisfied with the hair restoration
services he was provided by plaintiff Bosley Medical Institute (Bosley Medical).
As a result, he launched a web site at the domain BosleyMedical.com that was
highly critical of plaintiff and its services. Bosley Medical is a registered
trademark owned by plaintiff, which it uses to market its hair restoration services.
Kremer did not sell or offer to sell any products at this site, nor did he derive any
revenue from its operation. No advertisements were displayed on this site. The
only links on the site were to the website of the lawyers representing Kremer, and
to another site Kremer operated at bosleymedicalviolations.com. This second
site, in turn, contained a link to a newsgroup which contained advertisements for
plaintiffs competitors.
After acquiring the BosleyMedical.com domain, but prior to the launch of his
website, Kremer sent Bosley Medical a letter urging them to engage in settlement
discussions. Failing that, Kremer would publicize his negative views about
Bosley Medical on the Internet. The letter did not contain an express offer to sell
the BosleyMedical.com domain to plaintiff.
Bosley Medical responded by commencing this suit, asserting, inter alia, claims
for trademark infringement and dilution under the Lanham Act, as well as a claim
that defendants use of the mark violated the ACPA.

DOMAIN NAME DISPUTES

Kremer moved for summary judgment, arguing that the non-commercial use of
plaintiffs mark in his web site did not run afoul of the Lanham Act. The Ninth
Circuit agreed.
To establish an infringement claim under the Lanham Act, the trademark owner
must demonstrate a use of his mark in commerce . . . in connection with the
sale, offering for sale, distribution or advertising of any goods or services . . ..
15 U.S.C. 1114(1)(a). The Ninth Circuit held an analogous requirement is
found in the Federal Trademark Dilution Acts (FTDA) strictures against
another persons commercial use in commerce of a mark or trade name . . .. 15
U.S.C. 1125(c)(1).
The Ninth Circuit held such a requirement was lacking in a non-commercial gripe
site. Kremer derived no revenue from the operation of his site, which contained
no advertisements, nor offered any products for sale. It merely contained
information critical of Bosley Medical.
The Court held that neither Kremers links to his lawyers site, nor his links to a
sister site which contained a link to a newsgroup that displayed competitors
advertising, rendered his site commercial. Said the Court:
Kremers website contains no commercial inks, but rather contains links to a
discussion group, which in turn contains advertising. This roundabout path to the
advertising of others is too attenuated to render Kremers site commercial. At no
time did Kremers BosleyMedical.com site offer for sale any product or service or
contain paid advertisements from any other commercial entity.
In reaching this result, the Court rejected Bosley Medicals contention that
Kremers use of its mark was commercial because it prevented users from
obtaining plaintiffs goods and services. This argument had found favor with the
Fourth Circuit in People for the Ethical Treatment of Animals v. Doughney, 263
F.3d 359 (4th Cir. 2001).
The appropriate inquiry, held the Court, was instead whether Kremer offers
competing services. Failing that, his use of plaintiffs mark was not one against
which the Lanham Act was designed to protect. Said the Court:
[T]he appropriate inquiry is whether Kremer offers competing services to the
public. Kremer is not Bosleys competitor; he is their critic. His use of the Bosley
mark is not in connection with a sale of goods or services it is in connection
with the expression of his option about Bosleys goods and services.
The dangers that the Lanham Act was designed to address are simply not at
issue in this case. The Lanham Act, expressly enacted to be applied in
commercial contexts, does not prohibit all unauthorized uses of a trademark.
Kremers use of the Bosley Medical mark simply cannot mislead consumers into

DOMAIN NAME DISPUTES

buying a competing product no customer will mistakenly purchase a hair


replacement service from Kremer under the belief that the service is being
offered by Bosley. Neither is Kremer capitalizing on the good will Bosley has
created in its mark. Any harm to Bosley arises not from a competitors sale of a
similar product under Bosleys mark, but from Kremers criticism of their services.
Bosley cannot use the Lanham Act either as a shield from Kremers criticism, or
as a sword to shut Kremer up.
The Court held that the Anticybersquatting Consumer Protection Act (ACPA) did
not impose the same commercial use requirement. The Court rejected Kremers
argument that such a commercial use requirement was found in the language of
15 U.S.C. 1125(c)(4). While that language states that a noncommercial use of
the mark shall not be actionable under this section, the Court held this
language inapplicable to ACPA claims. The Court rested its decision, in part, on
the ACPAs prohibitions against the registration of anothers mark with a bad faith
intent to profit thereon, as well as the Acts listing of noncommercial use as only
one factor to be used by the Court in analyzing whether the defendant acted in
bad faith. Because the lower court held to the contrary, its decision was
reversed, and plaintiffs ACPA claims remanded for a determination of whether
Kremer acted in bad faith, in light, inter alia, of his pre-launch letter threatening to
publish his criticisms of Bosley Medical if his dispute was not settled.
Finally, the Ninth Circuit reversed the District Courts grant of Kremers motion to
dismiss under Californias SLAPP statute. Said the Court:
An infringement lawsuit by a trademark owner over a defendants unauthorized
use of the mark as his domain name does not necessarily impair the defendants
free speech rights.

DOMAIN NAME DISPUTES

Brookfield Communications Inc. v. West Coast Entertainment Corp.


174 F.3d 1036 (9th Cir. April 22, 1999)
Plaintiff Brookfield Communications Inc. ("Brookfield") is in the business of selling
information about the entertainment industry. Commencing in or about 1993,
Brookfield began marketing software under the mark "MovieBuff" which provides
users with a database of entertainment-industry related information. Sometime in
1996 or 1997 Brookfield began marketing its "MovieBuff" software on an Internet
site, as well as offering on-line access to a searchable database which also
contained entertainment-industry related information. In August 1997, Brookfield
filed for federal registration with the PTO of its "MovieBuff" mark, which
registration issued in 1998.
Defendant West Coast Entertainment Corporation ("West Coast") is one of the
largest video rental chains in the United States. Since at least 1988, it has used
the term "Movie Buff" in various advertising slogans. In 1991, West Coast
received federal servicemark registration of its mark "The Movie Buff's Movie
Store."
In 1996, West Coast registered the domain name "moviebuff.com" with Network
Solutions Inc. ("NSI"). It did not commence operation of a web site at
"moviebuff.com" at that time, however. In or about November 1998, West Coast
issued a press release announcing that it would soon commence operation of a
web site at "moviebuff.com" that would offer the public access to an extensive
searchable database of information concerning movies. Brookfield responded by
commencing suit, charging defendant with trademark infringement and unfair
competition in violation of the Lanham Act.
Brookfield sought to enjoin defendant both from operating a site at
"moviebuff.com", and from using the phrase "moviebuff" in meta tags contained
on its site. The district court denied Brookfield's application. The Ninth Circuit
reversed, and awarded Brookfield the requested injunctive relief.
West Coast argued that injunctive relief should not issue because it, and not
Brookfield, was the senior user. As stated by the Court "the first to use a mark is
deemed the 'senior' user and has the right to enjoin 'junior' users from using
confusingly similar marks in the same industry and market or within the senior
user's natural zone of expansion."
West Coast argued that it's use of the "moviebuff" mark on the Internet predated
Brookfield's use in that medium, and that West Coast was, accordingly, the
senior user. West Coast pointed to the fact that it registered its domain name
"moviebuff.com" with NSI in 1996, before Brookfield began offering a searchable
database online.

DOMAIN NAME DISPUTES

The court rejected this argument on the ground that the mere registration of a
domain name with NSI, without more, does not constitute use of the mark for the
purpose of establishing trademark rights. This is true, determined the court,
whether the registrant has plans to use the name in commerce at a latter point in
time. 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."
West Coast was not operating a web site at its "moviebuff.com" domain name at
the time Brookfield commenced use of the "MovieBuff" mark on the Internet. Nor
had West Coast extensively advertised it's intended use of the mark. Instead, it's
use was limited to use of "moviebuff" in "limited e-mail correspondence with
lawyers and a few customers ...". This was insufficient to establish the requisite
use in commerce required to confer trademark rights. Said the court:
Registration with Network Solutions, however, does not in itself constitute "use"
for purposes of acquiring trademark priority. The Lanham Act grants trademark
protection only to marks that are used to identify and to distinguish goods or
services in commerce - which typically occurs when a mark is used in
conjunction with the actual sales of goods or services. The purpose of a
trademark is to help consumers identify the source, but a mark cannot serve a
source-identifying function if the public has never seen the mark and thus is not
meritorious of trademark protection until it is used in public in a manner that
creates an association among consumers between the mark and the mark's
owner. ... The district court, while recognizing that mere registration of a domain
name was not sufficient to constitute commercial use for purposes of the Lanham
Act, nevertheless held that registration of a domain name with the intent to use it
commercially was sufficient to convey trademark rights. This analysis, however,
contradicts both the express statutory language and the case law which firmly
establishes that trademark rights are not conveyed through mere intent to use a
mark commercially nor through mere preparation to use a term as a trademark.
After finding that Brookfield had a protectable 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.
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 toplevel 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

DOMAIN NAME DISPUTES

irrelevance of the ".com" becomes further apparent once we consider similarity in


meaning. The domain name is more than a mere address; like trademarks,
second level domain names communicate information as to source. As we
explained in Part II many Web users are likely to associate "moviebuff.com" with
the trademark "MovieBuff" thinking that it is operated by the company that makes
"MovieBuff" products and services.
As a result, the court enjoined West Coast from operating its web site at the
"moviebuff.com" domain.
The court also enjoined defendant from using the "moviebuff" mark in meta tags
on its site. While recognizing that use of the "MovieBuff" mark in meta tags
required a different analysis than that which governed use of the mark in a
domain name, the court nonetheless held that such use was impermissible given
the facts of the case before it.
In reaching this conclusion, the court found that use of the "moviebuff" mark in
meta tags would cause prohibited "initial interest confusion." Use of the
"moviebuff" mark in a meta tag would cause West Coast's site to join that of
Brookfield on a list of search results produced by search engines. As a result,
surfers originally seeking Brookfield by inputing "moviebuff" in a search engine
might instead find West Coast's site. Once there, that surfer might make a
purchase. While the surfer would not be confused as to the source of the product
at the time of its purchase (West Coast's site plainly indicates that the site is
operated by West Coast), the "initial interest confusion" which led the surfer to
the site is nonetheless actionable. By capturing the consumer's attention by using
plaintiff's mark, defendant is improperly benefitting from the goodwill associated
with it.
Said the court:
West Coast's use of "moviebuff.com" in metatags will still result in what is known
as initial interest confusion. Web surfers looking for Brookfield's "MovieBuff"
products who are taken by a search engine to "westcoastvideo.com" 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. Recently in Dr. Seuss, we explicitly recognized that the
use of another's trademark in a manner calculated 'to capture initial consumer
attention, even though no actual sale is finally completed as a result of the
confusion, may be still an infringement."

DOMAIN NAME DISPUTES

As a result, the court enjoined West Coast from using the mark "MovieBuff" in its
meta tags. The court held that West Coast could use the descriptive phrase
"Movie Buff" in its meta tags, provided it includes a space between the two
words. "In light of the fact that [moviebuff] is not a word in the English language,
when the term "MovieBuff" is employed, it is used to refer to Brookfield's products
and services, rather than to mean "motion picture enthusiast." The proper term
for the "motion picture enthusiast" is "Movie Buff," which West Coast certainly
can use. It cannot, however, omit the space."
Cardservice International Inc. v. McGee.
950 F. Supp. 737 (E.D.Va. Jan. 16, 1997)
In Cardservice, the court issued a permanent injunction, enjoining the defendant
from using "cardservice" in its domain name. The court found such use to
constitute infringement of plaintiff's trademark in the mark "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. Plaintiff was the owner of a federal trademark in the mark "Cardservice
International." Plaintiff was in the business of credit and debit card processing.
Defendant, in a competing business, registered the domain name
"cardservice.com" with NSI without plaintiff's permission. The user who accessed
this URL was taken to defendant's website, which advertised merchant card
services through a company called "EMS-Card Service on the Caprock." After
defendant refused to discontinue this conduct despite notification of plaintiff's
mark, plaintiff commenced this action, seeking a permanent injunction and other
relief. Plaintiff alleged that defendant's conduct constituted trademark
infringement, unfair competition, misappropriation and unjust enrichment. The
court agreed, and issued a permanent injunction, enjoining defendant from
further use of "cardservice" in its domain name or site. Of interest is the court's
discussion of the requirement that plaintiff prove not only that defendant had
infringed its mark, but also that such use "is likely to cause confusion among
consumers."
Effectively, the court held that because the defendant engaged in a competing
business, its mere use of the mark in its domain name was sufficient evidence to
establish the requisite likelihood of consumer confusion, because people surfing
the net and looking for plaintiff on the Internet and not being aware of its address,
would be likely to do so by inserting plaintiff's mark in a domain name, and, upon
arriving at defendant's site (instead of plaintiff's) would assume it was indeed
plaintiff's site. Said the court: Domain names present a unique circumstance
when determining the likelihood of confusion caused by possible trademark
violations. ... With regard to domain names, however, only one party can hold
any particular domain name. Who has access to that domain name is made even
more important by the fact that there is nothing on the Internet equivalent of a

DOMAIN NAME DISPUTES

phone book or directory assistance. A customer who is unsure about a


company's domain name will often guess that the domain name is also the
company's name. ,,, Thus, a domain name is more that a mere Internet address.
It also identifies the Internet site to those who reach it, much like a person's name
identifies a particular person, or, more relevant to trademark disputes, a
company's name identifies a specific company. .... Cardservice International's
customers who wish to take advantage of its Internet services but do not know its
domain name are likely to assume that "cardservice.com" belongs to Cardservice
International. These customers would instead reach McGee and see a home
page for "Card Service."
They would find that McGee's Internet site offers advertisements for and provides
access to the same services as Cardservice International - credit and debit card
processing. Many would assume that they have reached Cardservice
International or, even if they realize that is not who they have reached, take
advantage of McGee's services ... [c]onfusion will result among consumers who
are seeking Cardservice International by searching for its trademark as a domain
name on the internet
CCBN.Com, Inc. v. C-Call.Com, Inc.
1999 U.S. Dist. Lexis 18187 (D. Mass. Nov. 18, 1999)
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 to investment
professionals information about public companies provided by the investor
relations departments of those concerns. This information includes access to
company-hosted conference calls for investment professionals.
Plaintiff CCBN currently offers these services for free at a web site it operates at
"streetevents.com," for which name it has applied for federal trademark
protection. Defendant also offers its information at a web site located at the url
"streetfusion.com," for which mark it too has sought federal trademark
registration. 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.

DOMAIN NAME DISPUTES

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 marks at issue. The operative question,
held the court, was whether plaintiff had commenced use of its mark in
commerce. Such use can be shown "by demonstrating 'test market use' of the
mark preparatory to the provision of services." Relying on Future Domain Corp. v.
Trantor Sys. Ltd., 1993 U.S. Dist. Lexis 9177 (N.D. Cal. 1993) the court held that
"test marketing involves offering the product for sale through normal channels of
trade in limited markets for limited times."
Plaintiff registered its domain name in October 1998. In November and
December, plaintiff tested its brand name via telemarketing. It did not commence
operation of a web site at its "streetevents.com" domain until January 1999. At
that time, plaintiff, in an effort to test the site, provided an unidentified number of
individuals with access to the site for the purpose of obtaining their feedback. In
February, plaintiff distributed postcards and brochures concerning its web site at
a conference for investment professionals. In February and March, an
unspecified number of mailings concerning the site were sent to investment
professionals. The first advertisements for the site were not ordered until May
1999.
This evidence, concluded the court, was insufficient to permit it to determine if
plaintiff's use of the "streetevents.com" mark predated defendant's use of its
"streetfusion.com" mark, which appeared to commence in mid to late April, 1999.
At that time, defendant sought trademark registration for its mark, and
commenced operation of a web site, the launch of which was announced in a
May 1 press release. Said the court:
Because of the gaping holes in the record with respect to numbers of customers
and amount of promotional and advertising activities in the early part of 1999,
plaintiff has not established that it began to offer services in commerce under the
mark StreetEvents.com until April, 1999 at the earliest. ... Even in the absence of
establishing priority in actual sales, plaintiff may nonetheless prevail if it
establishes sufficient test-marketing. ... Because of the dearth of information on
the extent of test-marketing in the early months of 1999, plaintiff has not
established a likelihood of success on priority even under a test-marketing
theory.
The court went on to hold that even if plaintiff had commenced use of its mark
before defendant, it 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."

DOMAIN NAME DISPUTES

Because the purchasing decisions in question were made over a long period of
time by sophisticated professionals, and required a substantial expenditure, the
court held that this evidence did not demonstrate "actual confusion in purchasing
the parties' products."
The court also based its decision on the weakness of plaintiff's mark. Though it
found the mark "streetevents.com" to be suggestive, and not descriptive, it found
the mark weak because "of the short time [the mark] has been in use and the
common use of the word "street" in the financial world."
Dr. Ing. h.c.F. Porsche AG v. Del Fabbro Laurent
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.
Complainant Dr. Ing h.c.F. Porsche AG ("Porsche") is a company domiciled in
Germany which manufactures sports cars under the trademark "Porsche."
Complainant is the owner of numerous trademark registrations for the "Porsche"
mark throughout the world, which mark it uses in a web site it operates at the
domain Porsche.com.
Respondent is the registrant of the domains Porschebuy.com and Porschebuy.com. Respondent operates web sites at these domains at which users are
invited to view car offers, or place car ads, for used Porsches. Ads are not
accepted for cars made by any other manufacturer. No fees were charged either
to those who posted, or read, the car ads found on the sites.
Respondent's sites contained a disclaimer, stating that they are "not sponsored
by, authorized by, not sanctioned by" Porsche, which disclaimer was posted prior
to the receipt of any complaint from Complainant.
Respondent's sites contain links to other sites operated by Respondent at the
domains Ferraribuy.com, Jaguarbuy.com and Racecarbuy.com, at which sites are
offered for sale, respectively, Ferraris, Jaguars and race cars.
Porsche commenced this UDRP proceeding to compel Respondent to transfer
the Porschebuy domain names. The Panel denied Porsche's application, finding
Respondent had a "legitimate interest" in those domain names.

DOMAIN NAME DISPUTES

The Panel found that the domain names at issue were confusingly similar to
Porsche's mark, and hence that Porsche had met the first prong of the three part
showing required for relief under the UDRP. The addition of the word "buy" to a
domain name containing Complainant's mark in its entirety did not dispel any
such confusion.
However, the Panel found that Respondent had a "legitimate interest" in the
domain name sufficient to defeat Porsche's UDRP application.
The Panel adopted and applied the four part test enunciated in Oki Data v. ASD,
WIPO Case No. D2001-0903 (2001) to determine if Respondent's use was
legitimate. Under this test, to establish a legitimate interest in the domain name,
Respondent must show that Complainant's goods and services, and only
Complainant's good and services, are sold at the web site operated at the
domain name at issue; the site operated there accurately discloses respondent's
relationship with the mark holder; and respondent has not cornered the market
on domain names containing the holder's mark.
The Panel found Respondent met this burden. Respondent used the sites to
offer Complainant's goods - namely used Porsches; only used Porsches were
sold at the sites and not cars manufactured by any third parties; the sites
contained a disclaimer, clearly stating they were not affiliated with, nor sponsored
by, Porsche, and Respondent had only registered two domains containing
Porsche's mark, and had not thereby cornered the market in Porsche domains.
The presence of links to other sites, on which the cars described in the domain
names of those sites could be found, did not alter this result. Said the Panel:
Clearly designated links to web sites, under which other brands or products are
offered, cannot be considered as the offering of other brands or products under
the Domain Names, provided they take up only a minor part of the site and the
overall impression of that site remains that of a site offering corresponding
goods.
Accordingly, the Panel determined that Respondent had a legitimate interest in
the domain names in dispute, and resolved this domain name dispute by denying
Porsche's request for relief under the UDRP. In so doing, the Panel stated:
Under the present facts if the Panel were to find in favour of the Complainant, the
Panel can conceive of no case in which a party interested in the sale of certain
used goods could ever register a domain name descriptive of, at least to a
certain reasonable extent, that business.
Edgar Online, Inc. v. Dan Parisi
Civ. No. 99-2288 (D.N.J., June 4, 1999)

DOMAIN NAME DISPUTES

Plaintiff claims a common law trademark in the mark "Edgar Online." Plaintiff
registered the domain name "edgar-online.com" with NSI in August 1995, and
commenced operation of a website at that domain in October 1995. Plaintiff has
used the mark continuously since 1995. Since 1997, plaintiff has spent almost $1
million advertising this mark. Apparently, plaintiff's web site permits users, for a
fee, to conduct searches of the SEC's EDGAR database.
Defendant owns the domain name "edgaronline.com" which he registered in May
1996, after plaintiff registered its "edgar-online.com" domain name, and after it
commenced operation of a web site at that address. Defendant commenced
operation of a web site at "edgaronline.com" by at least April 1999. Defendant
receives no fees from the operation of this web site. Apparently, defendant's site,
like plaintiff's, links users to the SEC's EDGAR database. Defendant's site lacks
certain "enhanced features" found on plaintiff's site, however.
Claiming that defendant's activities constituted false designation of origin, unfair
competition and trademark infringement in violation of both the Lanham Act and
New Jersey state law, plaintiff sought a preliminary injunction enjoining defendant
from further use of the domain name "edgaronline.com." Finding that plaintiff was
likely to succeed on his claim of false designation of origin, the court issued the
requested injunctive relief.
"An unregistered mark is [entitled to] protect[ion under Section 43(a) of the
Lanham Act] only 'if the public recognizes it as identifying the claimant's goods or
services and distinguishing them from those [of] others.' This is the case if the
mark is inherently distinctive or if ... [it] has achieved secondary meaning ...". The
court held that, under this standard, plaintiff had submitted evidence sufficient to
establish that its unregistered mark was entitled to protection because it was
either suggestive or arbitrary (and hence inherently distinctive) or, if merely
descriptive, had acquired the requisite secondary meaning with the public based
on plaintiff's evidence of use and advertising.
To prevail on its 43(a) Lanham Act claim, the court held that "plaintiff must further
prove: (1) that defendant uses a false designation of origin, as defined in the Act;
(2) that such use of a false designation occurs in interstate commerce in
connection with goods and services; (3) that such designation is likely to confuse,
mistake or [cause] deception, and (4) the plaintiff has been or is likely to be
damaged."
The crucial issue here was whether defendant's use occurs in commerce in
connection with goods and services. 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 concluded that it did, notwithstanding its conclusion that plaintiff
"does not earn revenues from his website." Said the court:

DOMAIN NAME DISPUTES

As in Jews for Jesus v. Brodsky ... [defendant] uses a domain name that is
virtually identical to plaintiff's name mark, he thereby impedes some Internet
users from reaching plaintiff's website and interferes with plaintiff's distribution of
its services. In Jews for Jesus, confronted with such circumstances, the Court
determined that the false designation of origin occurred in interstate commerce
"in connection with goods and services" within the meaning of Section 43(a). The
same is true here."
The court further held that plaintiff had shown that it was likely to establish both
that defendant's use of the "edgaronline.com" domain name constituted a false
designation of origin, and would confuse consumers. In reaching this latter
conclusion, the court pointed to the similarity of the marks used by the parties,
the services they offer, the audience they seek to reach and the channels of
communication they use to reach this audience. Said the court:
The Court determines that it is self-evident that defendant's false designation of
origin is likely to cause confusion. By merely omitting a hyphen in typing the
domain name for plaintiff's website or by omitting a space in typing the name of
plaintiff's company, consumers access defendant's website, rather than plaintiff's.
In addition, once there, they find data similar to what they would expect to find on
plaintiff's website, but lacking the enhanced features which are the only
justification for plaintiff's charge of a fee for its service. Thus, inevitably,
unsuspecting consumers will reach defendant's website when searching for
plaintiff's; and it seems highly likely that some will leave the website, still
believing they have accessed the EDGAR database using plaintiff's service and
disappointed with what they believe to be plaintiff's website's features for which
they have paid a fee.
Lastly the court rejected defendant's fair use defenses. Defendant's first fair use
defense, advanced under the Lanham Act, was based on its claim that it was not
using plaintiff's mark in its trademark sense, but only as an accurate description
of the product it was offering. The court rejected this claim on the grounds that it
believed that defendant had adopted the name in a bad faith attempt to take
advantage of plaintiff's mark and the audience it attracted. Defendant's second
fair use defense was based on the First Amendment. The court rejected this
argument on the grounds that defendant's use was not part of a communicative
message entitled to First Amendment protection, but rather a means of
identifying the source of a product or service, which, under Planned Parenthood
was not entitled to First Amendment protection.
First Jewellery Company of Canada, Inc., et al v. Internet Shopping Network
LLC
2000 U.S. Dist. Lexis 794 (S.D.N.Y. Feb. 1, 2000)

DOMAIN NAME DISPUTES

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.
To prevail on a claim of trademark infringement under the Lanham Act "a plaintiff
has two obstacles to overcome: the plaintiff must prove that its mark is entitled to
protection and, even more important, that the defendant's use of its own mark will
likely cause confusion with plaintiff's mark." The court found that plaintiff was the
owner of a valid federally registered mark entitled to protection.
The court also determined that plaintiff had shown that defendant's use was likely
to cause confusion. The court reached this conclusion despite its determination
that plaintiffs' mark was a weak suggestive mark, and that defendant had not
selected its domain name in a bad faith attempt to profit on plaintiffs' mark and
goodwill.
The court rested its determination principally on the fact that defendant's use was
likely to cause plaintiffs' wholesale customers to believe that plaintiffs had
opened a retail outlet at which they would directly compete with them. The court
also pointed to the fact that while defendant did not adopt the name in bad faith,
it failed to engage in the simple precaution of performing a trademark search
before it commenced its use of the domain.
Defendant argued that the court should not issue the requested relief because
the hardship defendant would suffer if the requested injunction was granted
would far outweigh the harm plaintiff would suffer if the motion were denied.
Defendant pointed to the fact that it had spent over nine months and millions of
dollars designing, launching and advertising its site, and that much of the value of
this promotional work would be lost if defendant were forced to move its site. The
court recognized that in certain circumstances courts have refrained from issuing

DOMAIN NAME DISPUTES

injunctions where the harm to the junior infringing user of the mark far outweighs
that of the senior user. However, the court held that that was not true of the case
at bar. Rather, "there is no evidence to suggest that the harm that will befall
plaintiffs will be 'far outweighed' by the harm that will befall ISN in having to
modify its domain name."
Defendant also argued that plaintiffs' delay in seeking injunctive relief should
result in the denial of its application. Again, the court rejected defendant's
argument, finding that "plaintiffs sent a cease and desist letter promptly after
discovery of [defendant's] use of www.firstjewelery.com, and obtained an order to
show cause less than nine weeks later." Of interest is the court's comment that
"the owner of a registered mark would not necessarily expect that it was likely to
be infringed on the Internet and so police the Internet ..." for infringing uses.
Nonetheless, defendant's arguments caused the court to modify the relief it
granted plaintiffs. Instead of an immediate injunction, 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 Jewellery.
Hasbro, Inc. v. Clue Computing, Inc.
66 F. Supp. 2d 117 (D. Mass., Sept. 2, 1999), aff'd., 232 F.3d 1 (1st Cir., 2000)
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 who's
predecessor registered the domain name "www.clue.com" in 1994. Defendant
operates a website at "www.clue.com" which promotes defendant's computer
consulting business, and provides prospective customers with both the address
and means of contacting defendant.
Plaintiff claimed 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. The court disagreed, and dismissed plaintiff's
complaint in its entirety.

DOMAIN NAME DISPUTES

Plaintiff's infringement claim failed because, as determined by the Court, plaintiff


had failed to show the requisite likelihood of 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. The Court also pointed to the
dissimilar nature of both the products offered by plaintiff and defendant and the
consumers interested in purchasing them.
In addition, the court relied upon the different channels of advertising and trade
used by the parties to market their products. Though both parties marketed their
products on the Internet, plaintiff's Internet activities made up but a "very small
component" of its business regarding the Clue board game. This was significant,
said the court, because "[w]here products have some overlap in channels of
advertising and trade but primarily occupy different channels, courts have not
found likelihood of confusion based on this factor." Finally, in reaching its
determination that plaintiff had failed to demonstrate a likelihood of consumer
confusion, the court relied on the fact that there was no evidence that defendant
adopted its 'Clue Computing' name so as to create confusion among consumers
or improperly benefit from an association with plaintiff's mark.
Perhaps most interesting was the court's rejection of 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. Notwithstanding plaintiff's extensive
use and advertising of its "clue" mark and the widespread recognition it had
gained both inside and outside the United States, the court held the mark was
not "famous," a prerequisite to relief under the Federal Trademark Dilution Act. 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 Trademark Dilution Act.

DOMAIN NAME DISPUTES

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 thereof in violation of
the Act. Said the Court:
These courts seem to suggest that simply preventing a plaintiff from using his
own famous trademark as a domain name dilutes the plaintiff's ability to identify
his goods and services and may frustrate or deter potential consumers ... I join
those courts finding that, while use of a trademark as a domain name to extort
money from the markholder or to prevent that markholder from using the domain
name may be per se dilution, a legitimate competing use of the domain name is
not. 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.
The Court went on to hold that defendant's use neither blurred nor tarnished
plaintiff's famous mark. To constitute blurring, a plaintiff must show "one mark
seen by customers as now identifying two sources." "These guidelines seem to
require that consumers at least potentially associate the two products with the
same mark". Finding that "Hasbro's evidence is not sufficient to show as a matter
of law that consumers will see one mark as identifying two sources or will
associate both products with Hasbro's mark," the court dismissed Hasbro's
Federal Dilution claim.
Lockheed Martin Corporation v. Network Solutions, Inc.
Case No. 97-56734 (9th Cir., Oct. 25, 1999)
Plaintiff Lockheed Martin Corporation ("Lockheed") owns the federally registered
service mark "Skunk Works." Plaintiff learned that third parties not involved in this
action had registered with defendant Network Solutions Inc. ("NSI") domain
names containing plaintiff's "Skunk Works" mark, as well as variations thereof.
NSI, in turn, had listed these domain names on root servers so that users who
entered them would be transported to the computers designated in the third
parties' registration. Lockheed demanded that NSI cancel the registration of
these domain names, and cease registering them in the future. When NSI
refused because Lockheed's request did not conform to NSI's domain name
dispute resolution policy, Lockheed commenced suit.
Among other things, the suit charged NSI with contributory trademark
infringement as a result of its continuing involvement in the registration and
processing of the offending domain names. Plaintiff's theory was that NSI
facilitated the infringement by registering the allegedly infringing domain names.
Evidently, plaintiff was urging that NSI be forced to undertake some form of
screening so as to prevent the use of infringing domain names. The Ninth Circuit,

DOMAIN NAME DISPUTES

finding that defendant was not guilty of contributory infringement, affirmed the
lower court's decision dismissing plaintiff's claims.
"Contributory infringement occurs when the defendant either intentionally induces
a third party to infringe the plaintiff's mark or supplies a product to a third party
with actual or constructive knowledge that the product is being used to infringe
the service mark." Parties have been found guilty of contributory infringement
when they supply a product they know a third-party is reselling under a label
containing a trademark the third party has no right to use, or when they rent
space in a flea market to a third party they know to be selling infringing goods.
Upon examination, the Ninth Circuit determined that NSI did not supply a product
-- rather it supplied a service which the alleged infringer used to facilitate its
infringement. In such instances, the defendant must exercise "direct control and
monitoring of the instrumentality used by a third party to infringe the plaintiff
mark" to be liable for contributory infringement. The Ninth Circuit held that NSI
did not exercise such control, and accordingly that plaintiff's claim for contributory
infringement failed. Said the court:
The district court correctly recognized that NSI's remote translation service
does not entail the kind of direct control and monitoring required to justify
an extension of the "supplies a product" requirement. ("While the landlord
of a flea market might reasonably be expected to monitor the merchandise
sold on his premises, NSI cannot reasonably be expected to monitor the
Internet.")
In reaching this conclusion, the Ninth Circuit relied on its determination that
ninety percent of NSI's registration and routing of domain names is done
electronically without review by NSI personnel. Moreover, NSI does not check to
determine if a domain name it registers is in fact in use, or, if so, the manner in
which the name is being used. As such, the court adopted the following
conclusion of the district court:
Where domain names are used to infringe, the infringement does not
result from NSI's publication of the domain name list, but from the
registrant's use of the name on a web site or other Internet form of
communication with goods or services ... NSI's involvement with the use of
domain names does not extend beyond registration.
PaineWebber Inc. v. WWWPainewebber.com
1999 U.S. Dist Lexis 6552 (E.D.Va. April 9, 1999)
Plaintiff Paine Webber operates a web site at the domain name
www.painewebber.com. Defendants, hoping to capitalize on typographical errors
made by surfers seeking Paine Webber's web site, commenced operation of a
web site at wwwpainewebber.com. Surfers who failed to type in the period found

DOMAIN NAME DISPUTES

in plaintiff's domain name between the www and painewebber were unexpectedly
taken to a web site featuring pornography.
Claiming, among other things, that defendants' actions constituted infringement
of its famous mark in violation of 15 U.S.C. section 1115(c), plaintiff brought suit.
On plaintiff's application, the court granted plaintiff a preliminary injunction,
enjoining defendants from operating a web site at wwwpainewebber.com, using it
to link or forward visitors to other sites, or transferring or otherwise terminating
their ownership of this domain. The court also directed Network Solutions Inc. to
put the domain name on hold pending resolution of the suit.
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. Indeed, defendants' acts of causing the domain name to
automatically link to pornographic sites was held by the court likely to cause
irreparable injury to plaintiff.

DOMAIN NAME DISPUTES

Strick Corporation v. James B. Strickland


Civ. Act. No. 00-3343 (E.D. Pa., August 27, 2001)
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.
Plaintiff Strick Corporation manufactures transportation equipment, including
freight semi-trailers, which it markets for sale under the federally registered
trademark "Strick," a mark first registered in 1951.
Defendant James Strickland is a computer consultant and software developer. In
1995, defendant sought to register a domain name for use in connection with his
business. Finding his surname "Strickland.com" already taken, he elected to
register the domain "strick.com." "Strick" is defendant's nickname, and a name by
which he is commonly known.
After plaintiff unsuccessfully attempted to acquire the strick.com domain name
from defendant, plaintiff had NSI place the domain on hold. Plaintiff thereafter
challenged defendant's right to the domain name in an ICANN proceeding before
the National Arbitration Forum ("NAF") which upheld defendant's rights to the
domain. Because "the NAF decision is not binding on this Court, which has de
novo review of the matter," however, plaintiff was free to challenge defendant's
conduct in an action brought in federal court. Plaintiff commenced such an
action, asserting claims of common law unfair competition and federal and state
law dilution.
On defendant's motion for summary judgment, the Court dismissed plaintiff's
claims.
"[T]he essence of an unfair competition claim is the likelihood of [consumer]
confusion." A number of factors can be analyzed in determining the likelihood of
confusion. Analyzing these factors, the Court determined that consumers were
not likely to be confused by defendant's use of the "strick.com" domain name to
promote his computer consulting service business. In reaching this conclusion,
the Court relied on the fact that: (1) plaintiff and defendant do not sell competing
products, (2) consumers would not expect plaintiff, a seller of transportation
equipment, to expand its business to offer the consulting services sold by
defendant, (3) there was no evidence of actual consumer confusion during the 8
month period defendant operated a website at strick.com, (4) consumers will
exercise a relatively higher degree of care when purchasing products from

DOMAIN NAME DISPUTES

plaintiff and defendant due to the relative expense of the goods in question and
therefore be less likely to be confused as to the source of those products, and (5)
the Court's finding that defendant did not intend to deceive consumers into
believing he was associated with plaintiff by his use of his nickname as a domain
name.
Plaintiff sought to sustain its unfair competition claim by asserting that
defendant's registration of the "strick.com" domain name would result in "initial
interest confusion" by users who expected that name to yield plaintiff's website,
instead of defendant's. Following the lead of the Chattam Int'l. Inc. v. Bodum,
Inc., 2001 WL 894085 (E.D. Pa. August 7, 2001), the Court held that, given the
fact that plaintiff and defendant did not sell competing goods, any "initial interest
confusion" caused by defendant's use of the domain name "strick.com" was not
legally cognizable. Said the Court:
As Chatam observed, "initial interest confusion is of greatest concern
when products are in competition with each other." Id. at *6 (citation
omitted). "Where companies are non-competitors, initial Interest confusion
does not have the same consequence." Id. In any case, any initial
confusion that arises from Defendant's use of his strick.com domain site,
specifically, "that consumers will realize they are at the wrong site and go
to an Interact search engine to find the right one -- is not substantial
enough to be legally significant." Id. at *6-*7 (citing Hasbro Inc., 66 F.Supp.
2d at 125). It is clear that "internet surfers are inured to the false starts and
excursions awaiting them" and are "unlikely to be dissuaded, or unnerved"
when, "tak[ing] a stab at what they think is the most likely domain name for
a particular website" guess wrong and bring up another's web page. Id. at
*7 & n., 17 (citing Checkpoint Sys., Inc. v. Check Point Software Techs.,
Inc., 104 F.Supp. 2d 427, 462 (D.N.I. 2000) and The Network Network v.
CBS, Inc., 54 U.S.P.Q. 2d 1150, 1155 (C.D. Cal. 2000)). The Court agrees
with the reasoning of the district court in Chatam, and finds that any
confusion that a consumer may have when reaching Defendant's web
page rather then Plaintiff's site is not legally cognizable.
The Court also rejected plaintiff's dilution claims. Assuming, for the purpose of its
decision, that plaintiff's mark was famous, and that defendant had used it in
commerce, the Court held that plaintiff's federal dilution claim failed because
plaintiff could not establish that "defendant's use dilutes the mark's distinctive
quality by lessening the capacity of plaintiff's mark to identify and distinguish
goods and services," a prerequisite to a dilution claim. The Court held that no
blurring occurred as a result of defendant's use because consumers were not
likely to link plaintiff and defendant together, given the disparity between the
products they sold. Thus, according to the Court, consumers were not likely to
attribute defendant's commercial activities to plaintiff.

DOMAIN NAME DISPUTES

The Court also rejected plaintiff's claim that defendant's use caused the
necessary dilution by preventing plaintiff from using its mark as a domain name
for a website. Noting that other "courts have rejected this theory" the court stated
that "it is clear that nothing in trademark law requires that title to domain names
that incorporate trademarks be provided to trademark holder" "trademark
law does not support such monopoly."
Moreover, the Court noted that plaintiff did indeed have a presence on the web at
several other domains including stricktrailer.com and strickcorp.com, was easy to
find via search engines, and "any inconvenience to an Internet user searching for
plaintiff's website is trivial."
Virtual Works, Inc. v. Network Solutions, Inc., Volkswagen of America Inc.,
et al.
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)
Court grants defendants Volkswagen AG and Volkswagen of America Inc.
(collectively "Volkswagen") summary judgment, holding that plaintiff's use of
defendants' "vw" trademark in a domain name, which also happen to be the
initials of plaintiff's firm, constitutes cyberpiracy, trademark dilution and trademark
infringement.
The court does not recite in its opinion the nature of either plaintiff's business or
its use of defendants' "vw" trademark. From plaintiff's web site, however, (located
at www.vw.net) it appears that plaintiff and its predecessors have, since at least
1996, been engaged in the business of providing web site development, hosting
and other "e-commerce" solutions to its clients. Sometime in 1996, plaintiff's
predecessor Virtual Worlds registered the domain name "www.vw.net" at which it
apparently commenced a web site advertising its services. According to the
court, at some point in time, plaintiff offered to sell its vw.net domain to the
defendants. In addition, at some point in time, plaintiff posted on its web site
disparaging remarks about defendant, which contained, according to the court,
"references to Volkswagen as Nazi's using slave labor." The court also found that
there was evidence in the record of actual consumer confusion, in the form of emails plaintiff received that were intended for defendants.
Plaintiff commenced this action, charging the defendants with tortious
interference with plaintiff's "vw.net" domain name. Defendants counterclaimed,
alleging that plaintiff's use of defendants' mark in its "vw.net" domain constituted
cyber piracy, trademark dilution and trademark infringement in violation of the
Lanham Act.
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

DOMAIN NAME DISPUTES

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 has been used to
disparage defendants as set forth above, plaintiff had offered to sell the domain
to defendants and defendants' trademark was famous.
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.
Network Solutions Inc. v. Umbro International, Inc., et al.
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." To hold to the contrary, warned the court, would be to subject
practically any service to garnishment. Said the court:

DOMAIN NAME DISPUTES

If we allow the garnishment of NSI's services in this case because those


services create a contractual right to use a domain name, we believe that
practically any service would be garnishable. For example, if a satellite
television customer prepaid the fee for a particular channel subscription,
Umbro's position would allow garnishment of the subscription service. We
also are concerned that a decision to uphold the garnishment at issue
would be opening the door to garnishment of corporate names by serving
a garnishment summons on the State Corporation Commission since the
Commission registers corporate names and, in doing so, does not allow
the use of indistinguishable corporate names.
This decision was subject to a strong dissent by Senior Justice Compton. Justice
Compton opined that a domain name was a form of intangible personable
property. Under Virginia law, such property is subject to garnishment to the extent
the debtor has a possessory interest therein. The dissent opined that "the
judgment debtor, by virtue of the domain name registration agreements with NSI,
has a current possessory interest in the use of the domain names, that is, a
contractual right to the exclusive use of the names it has registered with NSI."
Accordingly, the dissent would affirm the ruling of the lower court, and hold that
the domain name at issue was subject to garnishment.