Domain Names

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. 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

DOMAIN NAME DISPUTES
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 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.

DOMAIN NAME DISPUTES
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." 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

DOMAIN NAME DISPUTES
"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 another’s trademark as the domain name for a non-commercial gripe site does not constitute trademark infringement or dilution in violation of the Lanham Act. To run afoul of the Lanham Act, a mark must be used in connection with the sale of goods or services. A web site which is merely critical of another’s goods or services does not fit this bill. The Ninth Circuit accordingly affirmed the District Court’s grant of summary judgment, dismissing plaintiff’s trademark infringement and dilution claims. The Ninth Circuit reversed, however, so much of the District Court’s decision which dismissed plaintiff’s Anticybersquatting Consumer Protection Act (“ACPA”) claim. The ACPA does not have a commercial use requirement, and, accordingly, establishing that the mark was used as the domain for a non-commercial gripe site does not absolve the griper from potential liability under the ACPA. Because that was the basis on which the lower court dismissed plaintiff’s ACPA claim, its dismissal was reversed. The matter was remanded to the District Court to determine whether defendant used the mark with a bad faith intent to profit therefrom, in violation of the ACPA. Defendant Michael Kremer (“Kremer”) was dissatisfied with the hair restoration services he was provided by plaintiff Bosley Medical Institute (“Bosley Medical”). As a re sult, 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 plaintiff’s 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 defendant’s use of the mark violated the ACPA. Kremer moved for summary judgment, arguing that the non-commercial use of plaintiff’s 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 Act’s (“FTDA” ) strictures against “another person’s 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.

DOMAIN NAME DISPUTES
The Court held that neither Kremer’s links to his lawyer’s 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: Kremer’s 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 Kremer’s site commercial. At no time did Kremer’s 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 Medical’s contention that Kremer’s use of its mark was commercial because it prevented users from obtaining plaintiff’s 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 plaintiff’s mark was not one against which the Lanham Act was desi gned to protect. Said the Court: [T]he appropriate inquiry is whether Kremer offers competing services to the public. Kremer is not Bosley’s 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 Bosley’s 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. Kremer’s use of the Bosley Medical mark simply cannot mislead consumers into 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 competitor’s sale of a similar product under Bosley’s mark, but from Kremer’s criticism of their services. Bosley cannot use the Lanham Act either as a shield from Kremer’s 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 Kremer’s 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 ACPA’s prohibitions against the registration of another’s mark with a bad faith intent to profit thereon, as well as the Act’s listing of noncommercial use as o nly 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 plaintiff’s 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 Court’s grant of Kremer’s motion to dismiss under California’s SLAPP statute. Said the Court: An infringement lawsuit by a trademark owner over a defendant’s unauthorized use of the mark as his domain name does not necessarily impair the defendant’s 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 entertainmentindustry 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. 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

DOMAIN NAME DISPUTES
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 top-level domain with their corporate name or trademark as the second-level domain, the addition of ".com" is of diminished importance in distinguishing the mark. The 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

DOMAIN NAME DISPUTES
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." 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."

DOMAIN NAME DISPUTES
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 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

DOMAIN NAME DISPUTES
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. 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.

DOMAIN NAME DISPUTES
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." 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."

DOMAIN NAME DISPUTES
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 Porsche-buy.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. 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.

DOMAIN NAME DISPUTES

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.

DOMAIN NAME DISPUTES
Edgar Online, Inc. v. Dan Parisi Civ. No. 99-2288 (D.N.J., June 4, 1999) 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: 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:

DOMAIN NAME DISPUTES
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.

DOMAIN NAME DISPUTES
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) 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 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.

DOMAIN NAME DISPUTES
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.

DOMAIN NAME DISPUTES
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. 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.

DOMAIN NAME DISPUTES
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. 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.

DOMAIN NAME DISPUTES
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, 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.

DOMAIN NAME DISPUTES
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 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 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 noncompetitors, 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,

DOMAIN NAME DISPUTES
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. 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."

DOMAIN NAME DISPUTES
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 e-mails 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 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.

DOMAIN NAME DISPUTES
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: 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.