Summaries are arranged in reverse chronological order. To find a particular case, use the find feature in your browser or scroll through the text.
Farm, LLC vs. Sportsman's Market, Inc., 2000 U.S. App. LEXIS 1246 (2d
This is the first appellate case decided under the new ACPA (Anti-Cyberpiracy Act). Sportsman's Market - a catalog company targeted at aviation enthusiasts uses the logo and trademark "sporty's" to identify its catalogs. Omega Engineering, a catalog company that sells mainly scientific instruments, registered the domain name sports.com. Omega's owner is a pilot who was familiar with Sportsman's catalogs and the Sporty's trademark. Nine months after registering sportys.com, Omega transferred the name to a subsuidary it created to grow and sell Christmas trees. It named the subsidiary Sporty's Farm and sold the rights to sportys.com to the subsidiary. The case was originally filed under the Federal Trademark Dilution Act (FTDA), but the ACPA was passed before the appellate court rendered its decision. The appellate court determined that new law applied on appeal. It then analyzed the facts in the case and found that there was more than enough evidence in the record to demonstrate bad faith. Neither Sporty's Farm nor Omega had any intellectual property rights in sportys.com and Sporty's Farm did not begin use of the name in a bona fide offering of goods or services until after the litigation began. Most importantly, however, the court holds that although the "unique circumstances" of the case do not fit neatly within the bad faith factors enumerated by Congress, there is sufficient evidence to find bad faith. For instance, the court found that Omega planned to enter into direct competition with Sportsman's in the pilot and aviation consumer market and thus their primary intent was to prevent Sportsman's from using the sportys.com domain name. The court found that Omega created the Sporty's Farm business solely to find a use fo the sportys.com name in some commercial fashion and thus keep the name away from Sportsman's and protect against a posible infringement claim. Because the domain name was registered prior to the passage of the ACPA, the court refused to award damages to Sportsman's Market.
WorldSport Networks Ltd. v. Artinternet S.A., 2000 U.S. Dist. LEXIS 17 (E.D. Pa. 1/3/2000)
Defendant, a French organization registered a variety of domain names
including the WorldSport trademark. Plaintiff, an Irish organization
sued to enjoin this behavior. Defendant admitted that they had no
right to use the mark and stipulated that their use of the mark constituted
infringement. The court initially ordered that NSI not allow anyone
to register a name similar to the one that was determined to infringe.
NSI challenged this order claiming that it did not have the resources to
evaluate every requested domain name for possible similarity. In
APril, 1999, the court amended its order and to only require that NSI screen
applications by the defendant for similarity. NSI again sought modification.
In a January 3, 2000 order, the court once again modified its early decision.
NSI is no longer responsible for preventing similar registrations by the
defendants. Instead, if the defendants register a domain name, they
are required to file with the Court and with the plaintiffs a report setting
forth that the register does not violate the court's order. Thus
the court determined that NSI need not screen domain name registrations
in order to comply with the court order.
Shade's Landing v. Williams, 1999 U.S. Dist. LEXIS 19782 (D. Mn. 12/22/99)
Plaintiff Shade's Landing registered the domain name Home-Market.com
in connection with its web site referral network targeted at businesses
in the real estate industry. The company offered registration in
the referral network to be accessed b consumers through the Home-Market.com
web page. The primary business of the plaintiff is web site development
services for real estate agents. Defendant provides web site development
services for real estate agents and registered Home-Market.net as a host
for his client's web sites. The court concluded that the marks were
essentially identical since the only distinction is the difference in gTLD
which is highly significant. Despite this, however, the court denied
plaintiff's motion for preliminary injunction. One factor considered
what that while the parties compete with each other for the same business,
the plaintiff does not market its web page development services through
its Home-Market.com web site.
HQM Ltd. and Hatfield, Inc. v. William Hatfield, 1999 U.S. Dist. LEXIS 18598 (D. Md. Dec. 2, 1999)
Defendant William Hatfield registered the domain name hatfield.com for
email purposes. Plaintiff - HQM - owns a trademark in Hatfield in
connection with meat products. Defendant filed a Rule 12(b)(6) motion
to dismiss. Although many domain name cases are determined in summary
judgment, the use of a 12(b)(6) motion is not common. Nonetheless,
the court granted defendant's motion. Citing several prior cases
including Lockheed v. NSI and Panavision, the court emphasized that mere
registration of a domain name without more does nt constitute use of the
name as a trademark. Additionally, the court held that the .com designation
alone does not establish commercial use. Thus the court held that
simply registering and activating the domain name under the .com designation
does not constitute commercial use. In this case the defendant had not
responded to letters by the trademark holder, but the court indicates that
such failure to respond does not constitute commercial use and thus does
not impact the decision. The plaintiff also alleged that its inability
to use its trademark as a domain name constituted blurring because potential
customers might fail to find their web site. The court held that
such facts are not sufficient to satisfy dilution.
CCBN.com, Inc. v. C-Call.com, Inc., 1999 U.S. Dist. LEXIS 18187 (D. Ma. 11/18/99)
Plaintiff CCBN uses its StreetEvents.com web site to provide access to events calendaring service regarding stock market information. Defendant C-Call.com uses its StreetFusion.om web site to offer similar stock market information about publicly traded companies. Access to the StreetEvents.com site was free at the time of the suit while subscriptions to the StreetFusion.com site cost up to $400,000. The issue in this case turns on priority. While plaintiff used the mark on its page beginning in January 1999, at that time the site was only available to limited number of subscribers in a test version. Plaintiff promoted its service at a trade fair in February, 1999 and the first advertising was published in May, 1999. The company applied for service mark registration on June 2, 1999.
Defendant launched its web site under a different name (c-call.com) in November, 1998. It registered the domain name StreetFusion.com on April 2, 1999 and filed a trademark application on April 7, 1999. Its web site was operational at the new address as of late-April, 1999 and a press release announced the launch of the site on May 1, 1999.
Plaintiff asserts senior rights to the StreetEvents.com mark. The question, however, is what constitutes "use" of the mark in the context of the internet. Advertising and promotional use along are not sufficient to constitute use in commerce unless such pre-sales marketing is extensive. There was no evidence in the record of extensive marketing ad thus plaintiff did not establish use in commerce prior to April, 1999 at the earliest. The court determines that the record is unclear as to which company actively began providing services in commerce under the disputed mark first.
Under the reasoning of this court, it is clear that establishing a web
site with only minimal test marketing (or simply announcing the intention
of a future service) will not constitute sufficient "use in commerce" to
establish priority for trademark infringement.
Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980 (9th Cir. 10/25/99)
Lockheed Martin sued NSI for contributory infringement. The district
court granted summary judgment in favor of NSI. On appeal, the Ninth
Circuit upheld the district court's judgment. The court ruled that
NSI's involvement does not extend beyond registration, and thus a trademark
holder could not hold the registrar liable for contributory infringement.
According to the court, NSI cannot reasonably be expected to monitor the
internet for infringement.
Hasbro v. Clue Computing, 66 F.Supp.2d 117 (D. Mass., Sept. 2, 1999)
Defendant Clue computing registered clue.com in June, 1994 and uses the Web site to advertise its business including Internet consulting, training, system administration, and network design. Plaintiff, Hasbro brought suit against Clue Computing for trademark infringement and dilution of the Clue trademark. The court granted summary judgment for Clue Computing. While Hasbro attempted to argue that the two companies provided competing services, the court rejected Hasbro's argument that Hasbro's on-line technical support for the game constitutes substantial product overlap with Clue Computing technical services. Following traditional trademark infringement analysis of the eight factors, the court determined that Hasbro failed to demonstrate that there was any likelihood of confusion. The opinion is most cited, however, for its dilution analysis. First, the court determined that while the Hasbro mark had acquired secondary meaning it was not famous. The court indicates that there is a high standard for finding that a mark is famous. Courts should be "discriminating and selective in categorizing a mark as famous," and thus should apply a "rigorous standard of fame." Additionally, the court refused to find a per se category of dilution for use of anothers trademark as a domain name. While some prior cases (primarily cybersquatting cases) had language that could be interpreted as providing for such a per se rule, the court specifically rejected per se dilution. Instead it held 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."
Avery Dennison Corporation v. Jerry Sumpton, et al., 189 F.3d 868 (9th Cir. 8/23/99)
Jerry Sumpton and his company Freeview registered thousands of domain names - primarily typical surnames - and used these domain names to offer "vanity" email addresses to people who want an address incorporating their name. Two of the names registered included avery.net and dennison.net. Avery Dennison brought suit against Sumpton claiming trademark dilution. The district court granted an injunction in favor of Avery Dennison. The Ninth Circuit reversed claiming that Avery Dennison failed to meet the required of elements of dilution. The court concluded that the Avery and Dennison trademarks were not famous. Although the court acknowledged that the trademarks had reached a level of distinctiveness, dilution requires that a mark be both distinctive and famous. According to the court for a mark to meet the "famousness" element of dilution it must be truly prominent and renowned. Additionally, the court held that Avery Dennison failed to meet a second requirement for dilution: commercial use. Commercial use under the dilution statute requires that the defendant use the trademark as a trademark, capitalizing on its trademark status. In this case, the defendants were using the domain names as surnames with the intent to capitalize on the surname status and not the trademark status. Thus the defendant's use does not constitute "commercial use" for the purposes of trademark dilution.
court opinion is also available. Avery Dennison Corporation v.
Sumpton, 999 F.Supp. 1337, (C.D.Cal. 1998)
The defendant registered 12,000 domain names in the .net domain that corresponded to typical surnames. Their stated intent (and apparent business practice) was to license these domain names to individuals for use as email addresses. Thus one could open an email account with the defendant using the domain name that corresponds to one's surname as part of the email address. The 12,000 registered names included avery.net and dennison.net. Avery Dennison sued claiming trademark infringement. The court, in a scathing opinion, held that the domain names diluted the trademarks. The court holds that "for purposes of the [Lanham] Act, a famous mark is ‘used in the ordinary course of trade’ when (a) it is registered as a domain name by a registrant who is not otherwise identified by or associated with any of the commonly accepted meanings of the domain name, and (b) it is not used by the registrant as its own domain name, but rather is held by the registrant for sale or license to others." (1339-1340). Additionally, the court subscribes to the Panavision precedent that "it is the registration of the trademark name as a domain name, which denies the holder of the famous trademark from using its trademark name as an internet domain name, that dilutes the ability to identify goods and services." (1341) Note that in this situation, Avery Dennison had already registered names corresponding to its trademarks in the more typical .com domain. The defendant's actions only prevented Avery Dennison from using their trademarks in the less popular .net domain.
Interstellar Starship Services Limited v. Epix, Inc., 184 F.3d 1107 (9th Cir, July 19, 1999)
Epix, Inc., the owner of the Epix trademark, manufactures and sells video imaging hardware and software products. Interstellar Starship Services, Ltd. (ISS) registered epix.com as a domain name and displayed photos of a drama group along with information about how the pictures were transferred to a computer and touched up for posting. The district court granted summary judgment in favor of ISS. The Ninth Circuit reversed, holding that it is not appropriate to grant summary judgment when there are genuine issues of material fact. In fact, the court indicated that summary judgment is generally disfavored in the trademark arena. While the general business of ISS did not seem to be related to the business of Epix, the court concluded that it is the use of the epix.com website, rather than the entirety of the business transacted under the ISS name, that is the relevant criterion. Because there were genuine issues of material fact, the court held that Epix must be granted to right to go to trial on its infringement claim.
The earlier district
court opinion is also available. Interstellar Starship Serv.
Ltd. V. Epix, Inc., 1197 WL 736486 (D. Or. Nov. 20, 1997).
Defendant Interstellar Starship registered and used the domain name epix.com to publicize a theater group performing the Rocky Horror Picture Show. Plaintiff, Epix, Inc., a circuit board and computer program manufacturer owns the federally registered trademark Epix. While the trademark was found to be valid, the court determined that the use by defendant did not infringe on the plaintiff's trademark because the required element of likelihood of confusion was missing. The court emphasizes that the relevant likelihood of confusion "is confusion that affects the purchasing decisions of actual or prospective purchasers of the products of Epix, Inc." Additionally, the court indicates that the "law does not per se prohibit the use of trademarks or service marks as domain names. Rather, the law prohibits only uses that infringe or dilute an owner's trademark or service mark." While there was no evidence of bad faith, the court emphasizes that intent is not necessary for a finding of likelihood of confusion.
Note that often a likelihood of confusion analysis includes not only
confusion that would lead to a mistaken purchase, but also confusion that
would lead a potential consumer to believe that the product sold
is affiliated with the trademark owner. See Data Concepts v. Digital
Consulting, Inc., for a case with that holding.
Washington Speakers Bureau, Inc. v. Leading Authorities, Inc., 49 F.Supp.2d 496 (E.D. Va., May 19, 1999)
Leading Authorities, a direct competitor or Washington Speakers Bureau
(WSB) registered a variety of domain names incorporating parts the Washington
Speakers Bureau trademark. The court found that registration and
use of these domain names constituted trademark infringement and ordered
the defendant to relinquish ownership of the domain names. Concerned
that the domain names could be registered to a third party stranger if
relinquished, Leading Authorities requested a stay of the order pending
appeal. If no stay was granted, the names would be returned to the
registrar and would become available on a first-come first-serve basis
to any interested takers. Although the court initially granted the
stay, it then reconsidered and denied the stay. The court's decision
was based on its determination that Leading Authorities was not likely
to success on the merits of its appeal. Thus Leading Authorities
was once again ordered to relinquish ownership of the domain names and
to notify WSB of the precise date on which it relinquished the names so
as to provide WSB with the best chance of registering these names if it
Brookfield Communications v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir., April 22, 1999)
This case analyzes the priority issue as well as reviewing standard
trademark infringement in a case where a competitor has registered another's
mark as a domain name. Brookfield, the owner of the moviebuff trademark
sued West Coast to prevent its use of the moviebuff.com domain name for
its web site. While overall the companies provided some different
services, they were both provided similar searchable databases of movie
information. Thus the court held that the proximity of their products
is quite high. According to the court, the relatedness of the overall
company mission is not relevant. The focus is instead on whether
they consuming public is likely to associate the defendant's product with
the plaintiff's. Proceeding through the standard eight factor test,
the court finds that the plaintiff is likely to succeed on the merits and
thus grants a preliminary injunction. Before addressing the infringement
issue, the court establishes that the plaintiff is the senior user.
Without such a holding, an infringement analysis is irrelevant. In
order to determine which party has priority, the court undergoes a tacking
analysis. It concludes that West Coast video cannot tack its use
of moviebuff.com to its prior trademark registration of "The Movie Buff's
Movie Store" because the two marks are not legally identical. In
further analyzing the priority issue, the court determines that mere registration
"does not in itself constitute "use" for purposes of acquiring trademark
priority." Nor is registration with an intent to use the name commercially
sufficient to convey trademark rights. To establish priority, one
must demonstrate 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.
Columbia Insurance v. Seescandy.com, 185 F.R.D. 573 (N.D. Ca. 3/8/99)
The holder of the See's Candy and See's Candies trademark sued the registrants
of seescandies.com and seescandy.com. The registrants of these domain
names had not provided sufficient contact information for the trademark
holder to find them in order to serve the complaint. The court denied
the trademark holder's request for a temporary restraining order, but granted
the trademark holder the right to conduct discovery to determine the identity
of the defendant in order to make service of process possible. The
court acknowledged a general interest in allowing innocent parties to participate
online without fear that someone will attempt to discover their identity.
The court concluded, however, that where a plaintiff can show that its
claim would survive a motion to dismiss, then the plaintiff can establish
a right to determine the identify of the party causing the harm.
Archdiocese of St. Louis v. Internet Entertainment Group, Inc., (E.D.Mo. 2/12/99)
Defendant registered papalvisit.com domain name and used the name to provide limited information on the Pope's upcoming visit. The site was primarily used, however to advertise defendant's adult entertainment site and list off-color jokes about the church. Plaintiff, owner of the Papal Visit trademark, brought suit alleging trademark infringement, dilution and unfair competition. The court granted a preliminary injunction, finding that plaintiff's were likely to prevail on their dilution claim. The court found that the Papal Visit marks were famous and that their association with adult entertainment sites would likely cause tarnishment.
The decision was published on February 12, 1999, but is no longer available
after a court order issues March 26, 1999.
Jews for Jesus v. Brodsky, 993 F.Supp. 282 (D. NJ. 1998))
The analysis in this case is very similar to Planned Parenthood.
Defendant owned the domain name jewsforjesus.com which linked to a site
that disparaged Jews for Jesus and provided another link to a pro-Judaism
site. Defendant admitted that his site was intended to "intercept
potential converts." Plaintiff, Jews for Jesus, sued to prevent plaintiff
from using the domain name. A preliminary injunction was granted
after the court determined that the plaintiff would likely succeed on the
merits. The court analyzes trademark infringement, dilution and unfair
competition. It claims that the plaintiff would be likely to succeed
on all three counts. The case relies heavily on Planned Parenthood.
The Third Circuit then upheld without issuing an opinion. Rather
than viewing this as protected speech, the court viewed the fact that the
defendant registered the exact name in order to discredit and disparage
the trademark owner as additional evidence of infringement.
Bally Total Fitness Holding Corporation v. Andrew Faber, (C.D. Ca. 1998)
Defendant Faber posted a web site at www.compupix.com/ballysucks critiquing
Bally's fitness centers. Bally filed suit claiming trademark infringement,
dilution and unfair competition. The court granted defendant's motion
for summary judgment on all three claims. Using traditional trademark
infringement analysis, the court held that Faber had demonstrated that
there was no likelihood of confusion. This determination was based
in part on the fact that the goods were not related and that a reasonable
consumer would not mistake Faber's site for Bally's official site (given
that Faber says his site is unauthorized and that he has superimposed the
word "sucks" over the Bally's mark). Bally's dilution claim
fails because the court classifies Faber's site as a consumer commentary
rather than commercial use.
Playboy Enterprises, Inc. v. AsiaFocus International, 1998 WL 724000 (E.D.Va.)
Defendant AsiaFocus International maintained web sites using the domain
names asian-playmates.com and playmates-asian.com in connection with pictures
of adult nude women and related merchandise. Determining that the
Playboy mark deserves a high degree of protection as a strong mark, the
court decided that the use of the two domain names infringed on Playboy's
"playmate" trademark. The court emphasized the similarity of the
goods and services offered and indicated that the differences between the
registered mark "playmate" and the domain names was minimal. In determining
that the use of the domain names also diluted the Playmate mark, the court
focused on the intent of the defendants.
Toys "R" Us, Inc. v. Feinberg and Guns are We, 1998 WL 760219, Oct. 28, 1998, (SDNY).
Plaintiff Toys "R" Us sued defendant Guns are We for use of the domain
name gunsareus.com. The court granted the defendant's motion for
summary judgment after concluding that the plaintiff had not demonstrated
any evidence of likelihood of confusion or dilution. In determining
that there is no likelihood of confusion the court indicated that it is
unlikely that a prudent consumer would be misled into thinking that Toys
"R" Us had sponsored a small gun shop web site targeting primarily gun
dealers. Additionally the court emphasized that the gunsareus.com
domain name did not use the infamous "r" but instead spelled out the word
"are." Additionally, in its dilution analysis, the court noted that
the title of the web page was not "Guns Are US" or "Guns ‘R’ Us," but instead
"Guns Are We." Thus the distinctiveness of the "R" Us family of marks
was not likely to be blurred.
Data Concepts, Inc. v. Digital Consulting, Inc., 150 F.3d 620, (6th Cir., August 1998).
Data Concepts, Inc., owner of the domain name dci.com, supplies computer software for data management. Digital Consulting, Inc., owner of the trademark DCI, provides training and educational services in many computer related fields. The District Court in the case granted summary judgment for Digital, holding that the use of dci.com infringed on the DCI trademark. The Sixth Circuit court reversed and remanded for additional consideration. Although Data Concepts had used a stylized mark incorporating the letters d, c, and i, since 1982, they had only registered the stylized mark and not simply the letters dci. The court determined, therefore, that Digital was the senior user of the mark DCI which they had registered in 1987. The Sixth Circuit analyzed the traditional likelihood of confusion factors and determined that additional information was needed to determine if infringement had occurred. Two areas of the analysis are important when compared with other domain name infringement cases. First, the court indicates that likelihood of confusion is not measured simply by whether a buyer might accidentally purchase the good, but also by whether a buyer might mistakenly believe that the good is affiliated with the trademark owner. (626). Second, the court indicates that evidence of intent does merit weight as a factor in likelihood of confusion. (627).
Additionally, the concurring opinion raises the interesting issue of
whether or not use of the domain name dci.com constitutes use of a trademark
Panavision v. Toeppen, 141 F.3d 1316 (9th Cir. 4/17/98)
Dennis Toeppen had registered a multitude of domain names incorporating
famous trademarks including panavision.com. When contacted by Panavision,
owner of the trademark, he offered to sell the domain name to them for
$13,000. Toeppen had previously offered similar sales to other trademark
owners for domain names incorporating their marks (Intermatic and American
Standard). Panavision filed suit claiming trademark dilution.
Toeppen argued that the requirements for dilution were not met because
his use of the domain name to display the city of Pana, IL did not constitute
commercial use. The court determined that Toeppen's business is to
register trademarks as domain names and then sell them to the rightful
trademark owners. As such, they found the requisite commercial use.
Panavision establishes the principle in cybersquatting cases that the offer
to sell a domain name to the trademark holder constitutes use in commerce
for purposes of trademark infringement. Establishing commercial use,
however, is not sufficient. The plaintiff must also show that there
has been dilution. Here the Ninth Circuit indicates that a court
need not rely on the traditional definitions of blurring or tarnishment
to find dilution. Because Toeppen's conduct diminished the capacity
of the Panavision marks to identify and distinguish Panavision's goods
and services on the Internet, the court finds that dilution has occurred.
While this is one of the older cases and its interpretations have been
questioned by scholars, it has frequently been relied on by courts throughout
the US in subsequent cases.
CD Solutions, Inc. v. CDS Networks, Inc., 15 F.Supp.2d 986, (D. Or., April 1998).
Plaintiff, CD Solutions - owner of the domain name cds.com - was granted
declaratory judgment that the cds.com did not infringe the trademark CDS
registered by CDS Networks. The District Court emphasized that the
relevant confusion is the confusion that affects the purchasing decisions
of the customers and that there would be no such confusion in this case.
CD solutions sells compact disks while the CDS trademark of CDS Networks
is registered for printing and document services. Additionally, the
court notes that there is not prohibition against the use of trademarks
as domain names, only those that infringe or dilute are prohibited. (citing
Lockheed Martin v. NSI 43 USPQ2d 1056 (C.D.Cal., 1997)).
Teletech Customer Care Mgmt., Inc. v. Tele-Tech Co., 977 F.Supp. 1407 (C.D. Cal. 1997).
Defendant Tele-Tech registered and used the domain name teletech.com
for its company web site. The court granted a preliminary injunction
preventing continued use of the domain name. The court determined
that the plaintiff was likely to succeed on the merits of its dilution
claim since the TeleTech trademark is probably famous. Relying on
the Toeppen cases, the court determined that dilution probably exists if
the trademark owner is prevented from using its federally registered mark
as its domain name. Although this seems to be a case where the defendant
had legitimately registered the name for business purposes and not simply
as a cybersquatter, the court indicated that such a distinction is irrelevant
in granting preliminary injunction. Because the defendant can use
its exact name "tele-tech" (with a hyphen) as a domain name, the case is
unlike many other cases where a conflict arises between two companies with
similar names. In its likelihood of confusion analysis, the court
indicates that the plaintiff will have to show more than "brief confusion"
on the part of the Internet browser who accesses defendant's web site to
prove likelihood of confusion. Thus the court decided that it was
unlikely that TeleTech would succeed on its likelihood of confusion claim.
Juno Online Service v. Juno Lighting, Inc., 979 F. Supp. 684 (N. D. Ill. 1997)
This case presents an interesting twist in domain name / trademark infringement
suits. The plaintiff, Juno On-line, owns the domain name juno.com.
The plaintiff sued the defendant, Juno Lighting, owner of the trademark
Juno for declarative relief from the court indicating that its use of juno.com
does not infringe or dilute the Juno Lighting trademark. The plaintiff
also sued Juno Lighting for trademark misuse. After requesting that
Juno On-line relinquish its right to the juno.com domain name, Juno Lighting
registered the domain name juno-online.com. The court did not rule
on whether such behavior might constitute trademark misuse because it determined
that trademark misuse can only be raised as a defense to an infringement
suit and not as an affirmative claim. Because Juno Lighting
registered juno-online.com but did not actually use it, the court determined
that there was no use in commerce as required by the Lanham Act, section
Green Prods. Co. v. Independence Corn By-Prods. Co., 992 F.Supp.1070 (N.D. Iowa Sept. 25, 1997).
Both companies were direct competitors in the corncob by-product industry.
ICBP registered greenproducts.com, but had not yet posted a web site when
Green Products sued them. Even though no web site had been posted,
the court held that ICBP intended to use its confusing domain name to lure
potential customers to the site once it was created. While
customers might not be confused as to the affiliation once they got to
the site, they may simply purchase ICBP's products rather than searching
for Green Products' site and thus ICBP would benefit unfairly from the
use of Green Products' name. The court acknowledged that this
is a different interpretation of consumer confusion than is typically used
to find trademark infringement. Typically, courts examine whether
a company intended to confuse consumers into thinking that its own products
were made by a competitor company. Because ICBP could deceptively
lure potential customers to its own site where they would be told how ICBP
is better than Green Products, the court found such deceptive use of a
competitor's trademark to qualify as consumer confusion. On these
facts the court found that there was infringement.
Planned Parenthood Federation of America v. Bucci, 42 U.S.P.Q.2d 1430 (S.D. NY, 3/19/97)
This case sets out the analysis used by most courts in likelihood of confusion cases. Although the court engages in a traditional trademark infringement analysis under Section 1114 of the Lanham act, the analysis is similar for unfair competition under Section 1125(a). In this case, the court sets out a broad interpretation of "use in commerce" and "use in connection with goods and services" that allows it to apply the Lanham Act. The court states that because the defendant's actions affect plaintiff's ability to offer plaintiff's services over the internet, the actions are "in commerce." Additionally, the court states that the "nature of the Internet indicates that establishing a typical home page on the Internet, for access to all users, would satisfy the Lanham Act's "in commerce" requirement. The court holds that the "defendant's use of plaintiff's mark is "commercial" for three reasons: (1) defendant is engaged in the promotion of a book, (2) defendant is, in essence, a non-profit political activist who solicits funds for his activities, and (3) defendant's actions are designed to, and do, harm plaintiff commercially." The court further finds that defendant's goal of political activism did not confer immunity from the Lanham Act. "Defendant's use of another entity's mark is entitled to First Amendment protection when his use of that mark is part of a communicative message, not when it is used to identify the source of a product." By using the mark as a domain name, defendant identifies the web site as being the product of the plaintiff, not merely a communicative message and thus his infringement is not protected by the First Amendment.
While this is one of the older cases (1997) and its interpretations
have been questioned by scholars, it has frequently been relied on by courts
throughout the US in subsequent cases.
Gateway 2000, Inc. v. Gateway.com, Inc., 1997 U.S. Dist. Lexis 2144 (W.D.NC February 6, 1997).
Gateway.com, Inc. reserved the domain name gateway.com years before
the mega computer maker Gateway 2000 attempted to register the name.
Gateway 2000 sued but lost because the court found that Gateway.com had
a legitimate reason for owning the domain name and had chosen it six years
earlier - long before domain names had the value that they do today and
before Gateway 2000 became a well-known trademark. One of the keys
to the decision was that the defendant was not opportunistically trying
to get value by using a well-known mark.
Intermatic Inc. v. Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996).
Defendant Dennis Toeppen registered over 240 domain names incorporating
famous trademarks including intermatic.com. Intermatic, a manufacturer
of of electrical and electronic products sued alleging trademark infringement
and dilution. The court granted summary judgment for Intermatic on
the dilution causes of action but dismissed the motion for summary judgment
for trademark infringement and unfair competition concluding that Intermatic
had not established that there was a likelihood of confusion caused by
Toeppen's intermatic.com web page. The court granted the motion for
summary judgment for Intermatic as to dilution after finding that the Intermatic
mark was famous and that Toeppen's intent to arbitrage the name constitutes
commercial use. The court found that Toeppen's use was likely to
cause dilution by lessening the capacity of Intermatic to identify its
goods by means of the Internet. While this appears to be a grant
of a per se dilution rule, the court distinguishes cases where there are
legitimate competing uses of the same name.