D.  Interesting Decisions

Courts

Intermatic Inc. v. Toeppen, 947 F.Supp. 1227 (N.D.Ill.1996) registering a domain name with intent to sell is commercial use of another’s mark.  Set very strict standard for dilution by use of domain names but defendant was a bad actor.  Standard was almost a per se rule of dilution.

Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 51 U.S.P.Q.2d 1801, (9th Cir.(Cal.), 1999) the court found that the "district court erred in holding that Appellants' use of avery.net and dennison.net constituted commercial use under the Federal Trademark Dilution Act" even though the defendant was using these names as part of their business." Id. at 880.  The defendant's use was a fair use and this court considered such uses not to be "commercial use" under the statute.

Per Se rule of dilution by mere use has been expressly overruled by several courts.  In Hasbro, Inc. v. Clue Computing, Inc. , 66 F.Supp.2d 117, 132 (1999)

Lockheed Martin Corp. v. Network Solutions Inc., 43 U.S.P.Q.2d 1056, 1058 (C.D.Cal.1997), where Judge Pregerson wrote:  [T]he 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 a trademark or service mark owner's mark.  When a domain name is used only to indicate an address on the Internet and not to identify the source of specific goods and services, the name is not functioning as a trademark. Lockheed, 985 F. Supp. at 956.

Sex.com - No not property
LucentSucks.com - Yes is property
 

Electronics Boutique Holding Corp. v. Zuccarini,   2000 U.S. Dist. LEXIS 15719 (E.D. Pa., Oct. 30, 2000). Largest statutory award to date under the Anticybersquatting Consumer Protection Act of 1999. The defendant, who was ordered to pay $530,000 in damages and attorney's fees.  Defendant had earned up to $1 million dollars per year by registering domain names based on misspelled web sites.  Plaintiff was awarded default judgment when Defendant refused to appear.  Plaintiff received $27,487.00 for legal services where counsel billed 116.95 hours at a rate of $210 per hour.  Additionally, four other attorneys logged a total of 13.25 hours at rates ranging from $140 to $300.
 

Northland Ins. Cos. v. Patrick Blaylock 2000 U.S. Dist. LEXIS 14333 (D. Min., Sept. 25, 2000).  Defendant's use of the northlandinsurance.com domain name for the purpose of criticizing the plaintiff's  insurance company and not for commercial gain did not constitute infringement.
 

Arbitration

Over 1700 decisions so far.  70-80% in favor of Complainants.

List of Approved Dispute resolution Providers .

List of Proceedings Under Uniform Domain Name Dispute Resolution Policy
 

J. Crew International, Inc. v. crew.com WIPO Case No. D2000-0054, Registration of domain names for speculative purposes constitutes an abusive registration when (1) the respondent has no demonstrable plan to use the domain name for a bona fide purpose prior to registration or acquisition of the domain name; (2) the respondent had constructive or actual notice of another's rights in a trademark corresponding to the domain name prior to registration or acquisition of the domain name; (3) the respondent engages in a pattern of conduct involving speculative registration of domain names; and (4) the domain name registration prevents the trademark holder from having a domain name that corresponds to its registered mark. (See dissent by Gerry Davis).

New Rule was then implemented in Sadd.com.  SADD, Inc. v. Steven Weber, et al.  WIPO Case No.D2000-0170.  Same arbitrator as crew.com, applied his new rule, and ignored legal precedent from Avery v. Sumpton.

Sporoptic Pouilloux S.A. v. William H. Wilson ,  WIPO Case No. D20000-0265 (June 16, 2000).   In a domain name dispute regarding buyvaurnetsunglasses.com, WIPO ruled that an admittedly infringing name adopted in bath faith cannot be canceled or transferred unless the name has actually been used by its registrant.
 

Tata Sons Limited v. D & V Enterprises   WIPO Case No.D2000-0479, bodacious-tatas.com.  Tata Group of Companies, which has an annual turnover of over US $9 Billion owns TATA mark.  "The Complainant submits that the adoption of the well-known and distinctive name by the Respondent has been done with the sole intention of passing off its erotic and pornographic services to users of the Internet. Whether or not this was the sole intention of the Respondent is immaterial since, on the evidence, this, at the very least, was the principal aim ."

"...when an Internet user carries out a search for the Complainant’s TM TATA at any of the Internet Search Engines, the result would include the Respondent’s unauthorized website along with the genuine websites of the Complainant. Such a manipulation induces a potential customer or client into believing that the Respondent's site, containing pornographic material, has been licensed or authorized by the Complainant or, possibly, that it is owned by the Complainant."
 

Hearst Communications Inc. v. Spencer ,  FA0093763 (NAF, Apr. 13, 2000).  In a case against the owner of esquire.com, NAF found the name confusingly similar to Hearst's Esquire magazine trademark. The panel also found that Spencer had no legitimate interest in the name and that his registering the name with the intent of selling constitutes bad faith.  In addition to the subject domain name, Spencer has registered a number of generic names as well as many others which are identical or confusingly similar to the registered trademarks of other entities (i.e. acurasource.com, buicksource.com, chryslersource.com, dodgesource.com, gmcsource.com, lincolnsource.com, mazdasource.com, mercurysource.com, nissansource.com, pontiacsource.com, and porschesource.com). Spencer’s complete list of names was not provided to the panel. Spencer neither has nor had any legitimate connection with any of these trademarks. Rather, Spencer established an internet business called "Domain Names for Sale!" which listed these and other registered domain names for sale at prices considerably above the cost of acquiring them.
 


Anthony J. DeGidio Esq., 419-382-9590 FAX 419-382-9592
Email: tony@cyberlawyer.com