Designer Skin LLC v. S & L Vitamins, Inc., et al.
Trademark - Dilution - Internet Library of Law and Court Decisions - Updated November 3, 2008
437 F. Supp. 2d 273 (D.N.J., July 13, 2006)
Federal District Court holds that the use of plaintiff's 'JR Cigars' trademark as a keyword in GoTo.com's pay-for priority search engine to trigger the display of advertisements from third party competitors constitutes a "trademark use" sufficient to support trademark infringement and dilution claims under the Lanham Act. Such trademark use arises out of GoTo.com's acceptance of bids from JR Cigar's competitors for a linkage to plaintiff's marks, by which GoTo trades on the value of those marks. Such trademark use also arises out of GoTo's act of giving such advertisers priority over 'natural' search results, and thereby steering potential customers away from JR Cigar to its competitors. Finally, such trademark use arises out of GoTo.com's use of a "Search Term Suggestion Tool" to assist in marketing JR Cigar's marks to its competitors, which tool shows the search traffic attracted by plaintiff's mark.
The Court went on to deny cross-motions by JR Cigar and GoTo.com for summary judgment, holding issues of fact precluded its determination of the likelihood of consumer confusion arising out of such usage of plaintiff's marks, and hence from resolving the trademark infringement claims at issue.
Finally, the Court dismissed claims advanced by plaintiff under both New Jersey's Consumer Fraud Act, N.J.S.A. §56:8 et seq. and the federal Telemarketing and Consumer Fraud and Abuse Prevention Act, 15 U.S.C. §6102(b). The Court held that plaintiff lacked standing to proceed under New Jersey's Consumer Fraud Act, and that the reach of the Telemarketing Act did not extend to the acts at issue in the case at bar.
Case No. 00-CV-4882 (FB), 2002 U.S. Dist. Lexis 1129 (E.D.N.Y., January 22, 2002)
In this domain name dispute, Court denies plaintiffs' motion for summary judgment, seeking to hold defendant liable for trademark infringement, as well as for violations of the Federal Trademark Dilution Act and the Anticybersquatting Consumer Protection Act ("ACPA"), as a result of defendant's use of plaintiffs' trademark "ABC Carpet and Home" in a domain name. Court holds that issues of fact preclude it from determining whether defendant acted in bad faith in selecting this domain name, given that he had been doing business under the name "American Basic Craft Carpet and Home Restoration" since 1980, and claimed to have adopted the domain name at issue, "ABcarpetandhome.net", because it was an abbreviation of his business name. This issue of fact precluded the court from granting summary judgment on plaintiffs' ACPA claim, which requires, among other things, a finding that defendant used the mark at issue in bad faith. This issue of fact also led the Court to deny summary judgment on plaintiffs' infringement claim. The court denied plaintiffs' motion with respect to their dilution claim on the ground that issues of fact existed as to whether plaintiffs' mark was famous.
46 F. Supp.2d 444, Civ. Act. No. 98-102-A, (E.D. Va., Nov. 10, 1998)
Court found that defendants were guilty of both dilution and false designation of origin in violation of the strictures of the Lanham act, because they sent approximately 92 million unsolicited spam e-mails to AOL subscribers advertising pornographic web sites, each of which contained a forged header falsely indicating that the spam was sent from an AOL account holder utilizing AOL computers. Because this conduct was prohibited by AOL's Terms of Service, the court also found that it constituted a trespass to chattels, and ran afoul of both the Computer Fraud and Abuse Act and the Virginia Computer Crime Act. The court further found that defendants violated the Computer Fraud and Abuse Act, 18 U.S.C. section 1030 (a)(2)(c), by becoming AOL subscribers and using the access accordingly granted to AOL's system to run extractor programs that harvested the e-mail addresses of potential spam targets in violation of AOL's Terms of Service. The court issued an injunction, enjoining defendants from continuing to send unsolicited spam, or harvest AOL subscriber e-mail addresses.
24 F.Supp.2d 548 (E.D.Va., October 29, 1998)
Court awards AOL summary judgment against a spammer, finding that the sending of over 60 million pieces of unauthorized junk e-mail to AOL subscribers after receipt of cease and desist letters constituted an actionable trespass to AOL's computer network. In reaching this conclusion, the court relied on Compuserve Inc. v. Cyber Promotions, 962 F. Supp. 1015 (S.D. Ohio 1997). The court further held that by including forged headers in much of this e-mail which indicated the e-mail came from an "aol.com" member account, defendants had both diluted plaintiff's famous mark and used it to falsely designate the e-mails' origin in violation of the Lanham Act. Implicit in the court's decision is a holding that a famous mark is tarnished when associated with the sending of spam.
34 F. Supp. 2d 1145 (E.D. Mo., Feb. 12, 1999)
In this domain name dispute, Court issued preliminary injunction, enjoining defendant from continuing to operate websites at domain names containing plaintiffs' common law trademark "Papal Visit 1999" which mark was used by plaintiff to promote the Pope's January 1999 visit to St. Louis, Missouri. Defendant's websites contained information about the Pope's visit and St. Louis, as well as advertising for, and links to, separate adult websites operated by the defendant. These adult sites, in turn, solicited membership for use of the sites, and offered to sell various adult entertainment products and services. There was no indication in the court's decision that these links led to sales by defendant of any products or services to Missouri residents. There was, however, a finding by the court that Missouri residents had complained to plaintiffs about defendant's sites. These contacts with Missouri were held sufficient to confer specific personal jurisdiction over the defendant on the Missouri District Court. The court awarded plaintiffs injunctive relief because it found that plaintiffs were likely to prevail on their Federal trademark claim that defendant was diluting plaintiffs' famous marks by tarnishing them. The court found that plaintiffs' marks "are famous and distinctive." This was apparently based on plaintiffs' use of the marks for approximately seven months, and their expenditure of a "considerable amount of money" advertising the marks. Tarnishment arose by the association of the mark with "websites advertising and promoting adult entertainment materials and services."
469 F.3d 534, No. 05-2359 (6th Cir., November 27, 2006)
The Sixth Circuit affirms the District Court's award of summary judgment to plaintiffs, and holds that defendant Bob D'Amato infringed and diluted plaintiffs' famous "Audi," "Quatro," and Audi Four Ring Logo marks, and violated the Anticybersquating Consumer Protection Act. Defendant was held to have infringed plaintiffs' marks by operating a website at the domain www.audisport.com, at which both goods such as hats and shirts bearing the "Audi Sport" logo, and advertising space, were offered for sale. The Sixth Circuit accordingly affirmed the District Court's decision, which permanently enjoined defendant from making continued infringing use of Audi's trademarks, directed D'Amato to transfer the audisport.com domain to plaintiffs, and awarded plaintiffs Audi AG ("Audi") and Volkswagen of America Inc. ("Volkswagen") attorneys' fees as the prevailing party. The Court reached this result notwithstanding both defendant's claim that his use of Audi's marks on his website in connection with the sale of goods was orally authorized by an Audi dealer, and his placement of a disclaimer on defendant's site after receipt of a cease and desist letter. A written agreement between Audi and the dealer made clear that the dealer lacked authority to so authorize defendant's use of Audi's trademarks.
189 F.3d 868 (9th Cir., August 23, 1999)
Overturning a decision by the District Court, the Ninth Circuit Court of Appeals held that defendants' registration of domain names containing plaintiff's trademarks "avery" and "dennison" for the purpose of licensing those domain names to third parties for use as "vanity" e-mail addresses did not dilute plaintiff's marks under either Federal or California law.
Defendant Freeview has registered thousands of domain name. While most of these domain names contain common surnames, a number contain common trademarks or "lewd" language. According to the Court, these domain names were registered for the purpose of offering "vanity e-mail addresses to users for [a] ...fee." Among the domain names defendant registered were "avery.net" and "dennison.net." Besides being trademarks, Avery and Dennison are common surnames.
Plaintiff Avery Dennison sells office products and industrial fasteners under its registered trademarks "Avery" and "Dennison" respectively. These marks have each been registered and in continuous use for over 60 years. Plaintiff spends more than $5 million per year advertising its products, and boasts annual sales of approximately $3 billion. Plaintiff markets its products on the Internet at the domains "avery.com" and "dennison.com."
Claiming that defendants' acts violated both the Federal Trademark Dilution Act and California Business and Professional Code Section 14330, plaintiff commenced suit. To prevail on a claim under the Federal Trademark Dilution Act, the plaintiff must "establish that (1) its mark is famous; (2) the defendant is making commercial use of the mark in commerce; (3) the defendant's use began after the plaintiff's mark became famous and (4) the defendant's use presents a likelihood of dilution of the distinctive value of the mark." The Ninth Circuit held that plaintiff failed to establish either that its marks were famous, or that defendant was making commercial use thereof. As a result, it granted summary judgment to defendants, dismissing plaintiff's dilution claims. The court held that defendants were not utilizing plaintiff's marks in commerce, but rather were utilizing the marks to capitalize on their status as surnames. Said the court:
[Defendants] do not use trademarks qua trademarks as required by the case law to establish commercial use. Rather, [defendants] use words that happen to be trademarks for their non-trademark value.
Of note, the court held that "cybersquatting dilution", caused by the registration of a famous trademark as a domain name, can occur. "Cybersquatting dilution ... can occur if potential customers cannot find a web page at 'trademark.com.'"
CV 97-407 JSL, 999 F.Supp. 1337 (C.D. Cal. Mar. 16, 1998) rev'd. 189 F.3d 868, 1999 U.S. App. Lexis 19954 (9th Cir., August 23, 1999)
Cybersquatters held to have violated Federal Trademark Dilution Act by registering domain names containing plaintiff's federally licensed marks for the purpose of licensing such names to third parties. Court directed defendants to convey to plaintiff two domain names containing plaintiff's marks for $600.
2005 WL 331561 (N.D. Ill., Feb. 8, 2005)
Court holds that defendant’s use of plaintiff’s famous mark, and 15 variants thereof, in domain names that take consumers to a website at which both plaintiff’s products and those of its competitors are sold, dilutes plaintiff’s mark. As a result, the Court grants plaintiff’s motion for summary judgment on its claim for trademark dilution in violation of the Lanham Act.
29 F. Supp. 2d 1161 (C.D.Cal., Nov. 23, 1998)
In Bally, the court awarded defendant summary judgment, dismissing claims of trademark infringement and dilution brought by plaintiff as a result of defendant's operation of a web site titled "Bally sucks", at which defendant airs criticism of plaintiff's health club operations. The site opens with the image of plaintiff's federally registered trademark "Bally", across which appears the word "sucks." The site states it is unauthorized, and no products are sold or offered for sale on the site. Plaintiff's trademark infringement claims failed because plaintiff could not establish that consumers were likely to be confused by this use of the "Bally" mark as to the source of the "Bally sucks" website. Quite the contrary, the court concluded that the average consumer would assume that plaintiff Bally neither approved nor sponsored the site. Plaintiff's dilution claim failed, in part, because defendant's use of the mark was not commercial, an essential element of a dilution claim. The court also held that a dilution by tarnishment claim could not be sustained as a result of the placement of a link on a website that, without authorization, contains a parties' trademark, which link took the user to another site which allegedly contained offensive materials, but not the trademark at issue. Of note, the court determined that a party has the right to use an entity's trademark in meta tags to promote a non-commercial site critical of the entity that owns the mark.
C.A. No. 6:06-109-HMH (D.S.C. October 22, 2007)
Granting defendant’s motion for summary judgment, the District Court dismisses defamation, trademark infringement, and invasion of privacy claims brought by plaintiffs against a blogger. The claims arose out of defendant’s publication of articles on his blog, featuring plaintiff’s trademark, that were critical of plaintiffs’ eBay auction listing business.
The Court held plaintiff’s trademark dilution claims failed because defendant used the mark in connection with “news reporting and news commentary,” a non-actionable use under the Federal dilution statute. The Court held plaintiffs’ defamation claims failed because the statements at issue – which purportedly accused plaintiff Schmidt of being a “yes man” ‘who overpromised and underdelivered’ were non-actionable statements of opinion. Finally, the Court held plaintiffs’ invasion of privacy claims – which were premised on a link on defendant’s blog to another site which contained a picture of plaintiffs – failed. The Curt rested this holding on its determination both that South Carolina does not recognize a claim for false light invasion of privacy, and that, in any event, the link and article in question did not cast plaintiffs in a false light. The Court also grounded its rejection of this claim on its holding that the link and corresponding use of the photo did not constitute a viable ‘wrongful appropriation of personalty’ invasion of privacy claim, given that plaintiffs had consented to the use of their photo on the internet site on which it was contained.
332 F.Supp.2d 722, Civ. No. 00-5157 (WHW) (D.N.J., August 26, 2004)
Court holds that competitor's use of plaintiff's trademark in content and meta tags of a web site on which replacement parts for plaintiff's products are sold neither infringes nor dilutes plaintiff's mark in violation of the Lanham Act. Defendant is allowed to use plaintiff's mark in this fashion both to promote the sale of replacement parts manufactured by plaintiff, as well as those manufactured for use in plaintiff's products by third parties. The Court accordingly granted defendant's motion for summary judgment and dismissed the trademark infringement, unfair competition and dilution claims plaintiff advanced against defendant in this action.
No. 04-3690 (3rd Cir., May 2, 2005)
In this domain name dispute, the Third Circuit affirms District Court's decision, enjoining defendant from continuing to use plaintiff's mark in the domain name of a gripe site he operated at that domain, and directing defendant to cancel his registration of that domain. The courts' rulings were premised on their determinations that plaintiff, the Board of Directors of the Sapphire Bay Condominiums West, was likely to prevail on its claims that defendant's conduct infringed and diluted plaintiff's mark in violation of the Lanham Act. Notably, defendant's gripe site initially proclaimed itself the "Official Web Site of Sapphire Bay Condominiums West." The Third Circuit noted that its decision was "not precedential."
403 F.3d 672 (9th Cir., April 4, 2005)
In this domain name dispute, the Ninth Circuit holds that the use of another’s trademark as the domain name for a non-commercial gripe site does not constitute trademark infringement or dilution in violation of the Lanham Act. To run afoul of the Lanham Act, a mark must be used in connection with the sale of goods or services. A web site which is merely critical of another’s goods or services does not fit this bill. The Ninth Circuit accordingly affirmed the District Court’s grant of summary judgment, dismissing plaintiff’s trademark infringement and dilution claims.
The Ninth Circuit reversed, however, so much of the District Court’s decision which dismissed plaintiff’s Anticybersquatting Consumer Protection Act (“ACPA”) claim. The ACPA does not have a commercial use requirement, and, accordingly, establishing that the mark was used as the domain for a non-commercial gripe site does not absolve the griper from potential liability under the ACPA. Because that was the basis on which the lower court dismissed plaintiff’s ACPA claim, its dismissal was reversed. The matter was remanded to the District Court to determine whether defendant used the mark with a bad faith intent to profit therefrom, in violation of the ACPA.
157 F. Supp. 2d 549, Civ. Act. No. 00-1793 (E.D.Pa. August 7, 2001)
Plaintiff, holder of a federally registered trademark in the mark "Chambord" for sale of a liqueur and assorted food products, brought this action under the Anticybersquatting Consumer Protection Act, and for trademark infringement and dilution, against defendant, who holds a federally registered trademark in the mark "Chambord" for the sale of coffee makers. The action was triggered by defendant's registration of the domain name "chambord.com," at which it planned to, but had not yet offered for sale its coffee makers. The court dismissed the action, holding, inter alia, that (a) the ACPA claim failed because defendant had not acted in bad faith in continuing to utilize its federally registered mark for the sale of coffee makers; (b) the trademark infringement claim failed because the initial interest confusion doctrine (a consumer looking for company's As site finds company B's instead) was inapplicable to situations where the parties in question did not offer competing goods; and (c) the dilution act claim failed because plaintiff's mark was not famous at the time defendant commenced its use of the mark.
No. CV 05-3699-PHX-JAT (D. Arizona, May 19, 2008)
Court holds that unauthorized internet reseller of plaintiff’s tanning products is not guilty of trademark infringement as a result of its use of plaintiff’s trademarks in the meta tags of a website at which such products are sold, and as search engine keywords triggering the display of a link to such a website. In reaching this result, the Court rejected plaintiff’s claim that such use of its marks causes actionable ‘initial interest confusion’ by directing those searching for plaintiff’s site to that of the defendant. To sustain such a claim, holds the court, defendant’s conduct must be deceptive. Plaintiff failed to meet this burden because defendant’s site does indeed offer plaintiff’s products for sale, and thus, its use of plaintiff’s mark in the site’s meta tags is not deceptive, but rather accurately describes the contents of defendant’s site. This was true, held the Court, notwithstanding the fact that S & L offered plaintiff’s competitors products for sale on its site as well.
The Court also dismissed trademark dilution claims arising out of defendant’s use of plaintiff’s marks. The Court held that, under the circumstances, defendant’s use of plaintiff’s marks in the meta tags of its site, and as search engine key words, constituted a permissible nominative fair use of those marks. To establish that a use of a trademark qualifies as a permissible nominative fair use, the defendant must ‘do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.’ Notably, the Court reached this result because plaintiff failed to submit adequate evidence as to the impact this use of its marks had on the listing of defendant’s site in search results for plaintiff’s mark. The Court left open the possibility that such a use of plaintiff’s mark may not qualify as a nominative fair use if in fact it caused defendant’s site to appear at or near the top of search engine results for plaintiff’s mark, and thereby suggested that plaintiff sponsored or endorsed defendant’s site.
The Court denied so much of defendant’s motion for summary judgment which sought dismissal of copyright infringement claims arising out of its use of electronic renderings of plaintiff’s products to promote the sale of such products on its web site. Issues of facts as to whether defendant copied such images from plaintiff’s web site, or created its own, precluded an award of summary judgment. In allowing this claim to proceed to trial, the Court rejected defendant’s argument that its alleged use of plaintiff’s images was protected as a fair use. Notwithstanding the fact that defendant’s use did not effect the potential market for plaintiff’s images – which plaintiff does not offer for sale – the Court rejected defendant’s fair use argument, pointing to the fact that its use was commercial, and copied plaintiff’s image, which was a creative work, in its entirety.
Finally, the Court rejected plaintiff’s claim for intentional interference with contractual relations, which arose out of prohibitions contained in contracts with plaintiff’s distributors precluding their resale of plaintiff’s products to Internet resellers such as defendant. Defendant obtained plaintiff’s products from tanning salons, to whom the distributors were permitted to sell such products. Because there was no evidence either that such tanning salons were acting as defendant’s agent in purchasing goods from plaintiff’s distributors, or that defendant directly purchased such goods from the distributors in breach of the prohibitions contained in their agreements, this claim failed.
Civ. Act. No. H-00-450, 129 F. Supp.2d 1033 (S.D. Tex., January 24, 2001) aff'd., 286 F.3d 270 (5th Cir., 2002)
In this domain name dispute, Court enjoined defendants from continuing to utilize the domain name ernestandjuliogallo.com, and directed them to transfer the name to plaintiff E. and J. Gallo Winery ("Gallo"), which holds a trademark in the mark "Ernest and Julio Gallo." The court further awarded Gallo statutory damages under the Anticybersquatting Consumer Protection Act ("ACPA") in the amount of $25,000 as a result, inter alia, of defendants' registration of the domain name at issue, and their use of that domain name to operate a web site that commented on this lawsuit, and contained articles critical of alcohol consumption. Defendants had also registered some 2000 other domain names, a number of which contained the names of famous companies, cities and buildings.
2006 WL 737064, Civil No. 04-4371 (D. Minn. 2006) (JRT/FLN)
The Court holds that the purchase of keyword advertisements triggered by a search containing another's trademark constitutes a use of that mark in commerce sufficient to give rise to trademark infringement claims. The Court accordingly denied a motion by defendant The MLS Online.com to dismiss trademark infringement claims arising out of its purchase of keyword advertisements from Google and Yahoo that displayed 'sponsored links' to defendant's website when a user entered plaintiff's Edina Realty trademark as a search term.
The Court also denied defendant's motion to dismiss trademark infringement claims arising out of its use of plaintiff's mark in hidden text and links found on its website, and in the text of its sponsored links, which motion was premised on the ground that this was a permitted nominative fair use of plaintiff's marks. Adopting the 'fair use' test followed by the Third Circuit, the Court held such uses of plaintiff's mark were not necessary to the description of defendant's product or services.
Finally, the Court dismissed trademark dilution claims advanced by plaintiff Edina Realty as a result of its failure to provide evidence of actual dilution.
177 F. Supp. 2d 661, 2001 U.S. Dist. Lexis 21302 (E.D. Michigan, December 20, 2001)
Court denies Ford Motor Company's motion for a preliminary injunction seeking to enjoin defendants from continuing to automatically redirect users from a web site defendants operate at www.fuckgeneralmotors.com to the web site operated by Ford at www.ford.com. Defendants achieve this redirection via a link embedded in the programming code of defendants' web site, which link utilizes Ford's mark. The court held that Ford could not succeed on the merits of its federal trademark dilution claim, because defendants were not using plaintiff's mark in commerce. The court further held that Ford could not succeed on its trademark infringement and unfair competition claims, because defendants were not using plaintiff's mark in connection with the sale, or advertising for sale, of any goods or services. Finding that plaintiff would not succeed on the merits of its claims, the court denied plaintiff's motion.
Case No. C03-05340-F (N.D. Cal., March 30, 2005)
Court denies Google's motion to dismiss trademark infringement and dilution claims asserted by American Blind, which claims arose out of Google's alleged use of American Blind's trademarks to trigger the display of third party advertisements in search engine results for those marks. The Court declined, on this motion, to hold that use of American Blind's trademarks in this fashion was insufficient to give rise to trademark infringement or dilution claims because it did not constitute a use of the marks to identify the source of goods or services supplied by Google. The Court did dismiss the tortious interference with prospective business advantage claim asserted by American Blind, holding that American Blind had failed to allege the interference with sufficiently certain economic relationships necessary to proceed with such a claim.
Case No. 03-5340 JF (RS) (N.D. Cal., April 18, 2007)
District Court holds that Google’s use of defendant American Blind & Window Factory’s (“ABWF”) trademarks to trigger the display of competitors’ ads as part of Google’s “Ad Words” program is a use of those marks in commerce within the meaning the Lanham Act. These competitors’ ads are displayed by Google as ‘sponsored links’ and do not contain defendant’s trademarks. The Court accordingly allows ABWF to proceed with trademark infringement claims arising from such use of its marks, finding that ABWF had presented sufficient evidence of consumer confusion to survive Google’s motion for summary judgment. This evidence included the results of a survey that reported that 29% of consumers believed that such “sponsored links” were affiliated with the company that owned the trademark the consumer used to initiate his search. The Court held as a result that whether consumers were in fact confused by “sponsored links” that do not contain defendant’s mark was an issue of fact requiring resolution at trial.
The Court did dismiss so much of defendant’s claims that were premised on its “American Blind” and “American Blinds” marks, which the Court held were descriptive. Because ABWF did not submit sufficient evidence to establish that these (then) common law marks had developed sufficient secondary meaning to be entitled to protection from Google’s conduct at the time Google began its allegedly infringing activity, the Court dismissed so much of ABWF’s claims as were grounded on the alleged use of its American Blind and American Blinds marks.
Finally, the Court dismissed ABWF’s Federal and California dilution claims, finding that ABWF had failed to submit sufficient evidence that its marks were “famous,” a prerequisite to such dilution claims. It should be noted that the court designated its decision as “not for citation.”
66 F. Supp. 2d 117 (D. Mass., Sept. 2, 1999), aff'd., 232 F.3d 1 (1st Cir., 2000)
In this domain name dispute, Court grants defendant summary judgment, dismissing claim that defendant's use of the domain name "www.clue.com" infringes and dilutes plaintiff Hasbro Inc.'s ("Hasbro") federally registered trademark "clue."
Plaintiff Hasbro sells children's toys and related items, including the board game "Clue." Hasbro obtained federal trademark registration for the mark "clue" in 1950, which it has used continuously since in its sales of the "Clue" board game. During this period of time, Hasbro has spent millions of dollars advertising its mark, which, according to the Court, "has gained widespread recognition [both] in the United States and abroad." Defendant Clue Computing Inc. is a small computer consulting firm which in 1994 registered the domain name "www.clue.com" at which it operates a web site to promote its business.
On defendant's motion, the court dismissed plaintiff's claim that defendant's use of its mark in this fashion infringed and diluted plaintiff's famous mark in violation of both the Lanham Act and Massachusetts Anti-Dilution Act. Plaintiff's infringement claim failed because, as determined by the Court, plaintiff failed to show the likelihood of consumer confusion needed to establish such a claim. In reaching this conclusion, the Court relied on a number of factors, including the limited evidence of actual consumer confusion arising out of defendant's use of the "clue.com" domain name during the four year period in which defendant was engaged in such conduct, and the dissimilar nature of the products offered by the parties.
In reaching this conclusion, the court rejected the "initial interest confusion" doctrine which formed the basis of the Ninth Circuit's decision in Brookfield Communications. Said the Court:
[T]he kind of confusion that is more likely to result from Clue Computing's use of the "clue.com" domain name - namely, that consumers will realize they are at the wrong site and go to an Internet search engine to find the right one - is not substantial enough to be legally significant. "[A]n initial confusion on the part of web browsers ... is not cognizable under trademark law."
The Court also held that plaintiff had failed to establish its entitlement to relief under the Federal Trademark Dilution Act because plaintiff's mark was not famous. In reaching this result, the court relied primarily on the fact that "clue", the mark in question, was a common term used in a significant number of trademarks not owned by plaintiff.
The Court further held that even if the mark "clue" was famous, plaintiff was not entitled to relief because defendant's use did not dilute the distinctive quality of plaintiff's mark, another prerequisite to relief under the Act.
The Court rejected plaintiff's claim that defendant's mere use of the "clue" mark in a domain name, without more, constituted per se dilution of plaintiff's "famous" mark in violation of the Act. Said the Court:
Holders of a famous mark are not automatically entitled to use that mark as their domain name; trademark law does not support such a monopoly. If another Internet user has an innocent and legitimate reason for using the famous mark as a domain name and is the first to register it, that user should be able to use the domain name, provided that it has not otherwise infringed upon or diluted the trademark.
1996 WL 84853 (W.D. Wash. 1996)
Defendants utilized "Candyland" in its domain name for a sexually explicit site. Hasbro, owner of a federal trademark in the name Candy Land, utilized principally in connection with a children's game, claimed that defendants' conduct violated federal and Washington trademark anti-dilution statutes. On Hasbro's motion, the court issued a preliminary injunction, enjoining the defendants from continuing to use the name Candyland, inter alia, in their site's domain name. Defendants were, however, permitted by the court to post for 90 days a referral notice at their former URL address http:/www.candyland.com informing those interested in the site of its new location.
328 F.3d 1108 (9th Cir. May 9, 2003), amended and superseded by Horphag Research Ltd. v. Pellegrini, 337 F.3d 1036, 67 U.S.P.Q.2d 1532, 3 Cal. Daily Op. Serv. 6649, 2003 Daily Journal D.A.R. 8380 (9th Cir.(Cal.) Jul 29, 2003) (NO. 01-56733, 02-55142) , Petition for Certiorari Filed, 72 USLW 3393 (Nov 20, 2003)(NO. 03-773)
The Ninth Circuit affirmed so much of the District Court's decision which held that defendant infringed plaintiff's trademark by his "pervasive" use of plaintiff's mark in both the metatags and text of his websites, on which he sold a competing product. The Ninth Circuit also affirmed so much of the District Court's decision which awarded plaintiff substantial attorneys' fees for this infringement, agreeing with the lower court's determination that this was an "exceptional" case justifying such an award in light of defendant's willful use of the mark.
The Ninth Circuit reversed and remanded so much of the District Court's decision that held that defendant's conduct diluted plaintiff's mark, in light of the Supreme Court's recent decision in Moseley v. V. Secret Catalogue, Inc, which mandated proof of actual dilution to sustain a trademark dilution claim.
(N.D. Ill. October 3, 1996)(Magistrate's Report)
The unauthorized use of a famous trademark in a domain name of a non-commercial site for the purpose of selling or licensing the same to the trademark owner constitutes a violation of both the Federal and Illinois Anti-Dilution statutes and will be enjoined.
993 F. Supp. 282 (D.N.J. Mar. 6, 1998) aff'd. 159 F. 3d 1351 (3d Cir. 1998)
In this domain name dispute, the court enjoined defendant's unauthorized operation of a website at "jewsforjesus.org" which site was highly critical of the plaintiff organization "Jews for Jesus." Plaintiff owned a federally registered trademark in the phrase "jews for jesus" with the "o" depicted as a Jewish Star, and a common law service mark in the phrase "jews for jesus." Defendant's conduct constituted violations of the Lanham Act's prohibitions against trademark infringement, dilution and unfair competition, as well as various New Jersey state statutes. Neither the fact that defendant did not use an identical replica of plaintiff's mark in its domain name nor the disclaimer that appeared on defendant's site pronouncing its nonaffilation with plaintiff's organization were sufficient to alter the court's view. Moreover, defendant's conduct was found to be "in commerce" and "in connection with goods or services", essential prerequisites to plaintiff's federal Lanham Act claims, even though defendant did not offer anything for sale on his site, nor solicit funding for his activities. The fact that defendant's site was intended to harm and disparage plaintiff, and contained a link to an unaffiliated site which sold merchandise made such conduct commercial.)
205 F.Supp.2d 942, Case No. 02 C 2171 (N.D. Ill., June 7, 2002)
Court finds that plaintiff Kraft Foods Holding, Inc. ("Kraft"), owner of the famous federal trademark "Velveeta," is likely to prevail on its claim of trademark dilution as a result of defendant's use of the mark "King VelVeeda" on a website featuring adult images and illustrations of drug use, and at which defendant offers for sale various non-cheese products. As a result of the tarnishment of plaintiff's mark arising out of such activities, the court issued a preliminary injunction, enjoining defendant from further use of his "King VelVeeda" mark.
Civ. No. 96-CV-4693 (District Ct. of the State of Colorado, Co. of Denver, Sept. 26, 1997)
Plaintiffs' used the famous trademark "Rockies," owned by defendant the Colorado Rockies Baseball Club, Ltd., in connection with plaintiffs' sports-oriented website. The Court held that such use on a site which included copyrighted materials belonging to defendants and a link to a site offering to sell "official Rockies Merchandise" constituted trademark infringement, unfair competition and a violation of federal antidilution statutes and enjoined plaintiffs from continuing such conduct.
97 Civ. 7191 (SS) (S.D.N.Y., September 10, 1998)
Defendants' use on their website of plaintiff's federally registered mark "Barbie" to advertise the sale of adult entertainment services held to tarnish plaintiff's famous mark in violation of the Federal Trademark Dilution Act. As a result, the court permenantly enjoined defendants from further use of plaintiff's mark. The Court also found that defendants willfully intended to trade on the goodwill of plaintiff's mark. This was evidenced by the fact that defendants caused the phrase "Barbie's Playhouse" to appear on their site in a font and colors virtually identical to those used by plaintiff to market its products. The court accordingly awarded plaintiff damages in an amount equal to the gross sales defendants derived from the website.
573 US 418 (Supreme Court, March 4, 2003)
Resolving a split in the Circuits, the Supreme Court holds that a plaintiff must submit evidence of actual dilution, rather than a likelihood of dilution, to prevail on a dilution claim brought under the Federal Trademark Dilution Act ("FTDA"). The Court accordingly reversed the decision of the Sixth Circuit, which had granted summary judgment to the owners' of the trademark "Victoria's Secret" on their federal dilution claims. These claims arose out of defendants' operation of a store under the name "Victor's Little Secret" at which defendants sold adult novelties and lingerie. The Sixth Circuit's decision was based on the likelihood that plaintiffs' mark would be tarnished by association with such products. The Supreme Court reversed because the record was devoid of any evidence of actual dilution or injury to plaintiffs' mark as a result of defendants' activities.
378 F.3d 1002 (9th Cir., 2004), cert. denied (2005)
Applying the "initial interest confusion" doctrine, the Ninth Circuit holds that defendant Nissan Computer's display of advertisements promoting the sale of automobiles on its Nissan.com website infringes the trademark held by plaintiff Nissan Motors in its federally registered "Nissan" trademark, and accordingly affirms the District Court's decision enjoining defendants from continuing such activity.
The Court further holds, however, that Nissan Computer's display of links on its site to a web site operated by a company owned by Uzi Nissan, the owner of Nissan Computer, which web site purports to describe the instant litigation and contains disparaging remarks about Nissan Motors, is non-commercial speech that neither infringes plaintiffs' mark nor runs afoul of the Federal Trademark Dilution Act despite its potentially negative impact on plaintiffs' commercial activities. The Ninth Circuit holds such speech protected by operation of the First Amendment, and accordingly reverses so much of the District Court's decision that enjoined defendant Nissan Computer from placing such links on its Nissan.com site.
Finally the Court held that issues of fact prevented a determination at this time as to whether defendants' use of plaintiffs' Nissan mark violated the FTDA. To establish such a dilution claim, held the Court, the plaintiff must establish that its mark was famous when defendant first commenced a potentially diluting use thereof. Disagreeing with the court below, the Ninth Circuit held that such use commenced when defendant began to call its business 'Nissan Computer,' and not when it subsequently registered the Nissan.com domain name for use in that business. As there was an issue of fact as to whether the Nissan mark was famous as of 1991, when Nissan Computer commenced its operations, the court denied plaintiffs' motion for summary judgment, and remanded the question of defendants' violation of the Federal Trademark Dilution Act to the District Court.
115 F. Supp.2d 1108, Civ. No. 00-308 (DSD/JMM) (D. Minn. September 25, 2000)
Court denies plaintiff's application for a preliminary injunction, enjoining defendant from operating a web site critical of plaintiff and its business practices at the domain www.northlandinsurance.com
115 F. Supp. 2d 772 (E.D. Mich., August 25, 2000), aff'd. in part, vacated in part and remanded, 319 F.3d 243 (6th Cir. 2003)
In this trademark infringement suit, the court enjoined defendant, a truck listing service, from using plaintiff's registered federal trademarks in either the domain name, meta tags, site title or wallpaper of web sites that inform consumers of entities offering plaintiff's trucks for sale.
1999 U.S. Dist Lexis 6552 (E.D.Va. April 9, 1999)
Court issues a preliminary injunction, enjoining defendants from continuing to operate a web site at wwwpainewebber.com. Defendants commenced operation of this site in the hopes of capitalizing on typographical errors made by surfers seeking Paine Webber's own web site, located at www.painewebber.com. Surfers who failed to type in the period found in plaintiff's domain name between the www and painewebber were unexpectedly taken to a web site featuring pornography. The court based such an award on its determination that plaintiff was likely to prevail on its federal dilution claim, given that plaintiff's mark "paine webber" was famous, and was being tarnished by its association, as a result of defendant's acts, with pornography.
No. 05-56794 (9th Cir. November 5, 2007).
Ninth Circuit holds that plaintiff Perfumebay.com, Inc.’s use of the trademark “PerfumeBay” as a cojoined term infringes defendant eBay’s famous trademark, and is likely to cause consumer confusion. The Ninth Circuit rested this determination on the similarity of the parties’ marks – PerfumeBay contains the entire eBay mark – the similarity of the products and services offered by the parties to the public – each facilitate the public’s purchase of perfume – and the fact that both parties use the Internet to market their products.
The Court further held that plaintiff’s use of PerfumeBay as a cojoined term diluted defendant eBay’s famous mark. Due to the strength and highly distinctive nature of eBay’s mark, plaintiff’s mark did not need to be ‘identical or nearly identical’ to eBay to sustain a dilution claim. Instead, given the fame of the eBay mark, eBay could prevail even if plaintiff’s mark was ‘a bit different’ provided consumers would view it as essentially the same as eBay’s mark, as was the case here.
As a result, the Ninth Circuit enjoined plaintiff from continuing to use PerfumeBay as a cojoined mark, either in the domain name of its site, on its website, or in Internet advertising.
The Ninth Circuit held that plaintiff’s use of the mark “Perfume Bay” as separate words, however, did not infringe eBay’s mark. When separated, “Perfume Bay” did not contain defendant eBay’s entire mark, nor was it likely to cause consumer confusion. As a result, the Ninth Circuit allowed plaintiff to continue its use of “Perfume Bay” on its website, or otherwise, so long as the words were not cojoined.
Finally, the Ninth Circuit affirmed the District Court’s denial of plaintiff’s application for attorneys’ fees, holding it was not the prevailing party in this litigation.
97 Civ. 0629 (KNW)(S.D.N.Y. March 26, 1997), aff'd. 152 F. 3d 920 (2d Cir., Feb. 9, 1998), cert. denied, 525 U.S. 834 (1998)
Defendant enjoined from continuing to utilize plaintiff's service mark, Planned Parenthood, in its domain name, at which is found a web site featuring references to a book espousing anti-abortion positions. Such use held to violate Lanham Act and not to be protected by First Amendment
354 F.3d 1020 (9th Cir., Jan. 14, 2004)
Reversing the decision of the court below, the Ninth Circuit Court of Appeals denied the motion of defendants Netscape Communications Corp. ("Netscape") and Excite, Inc. ("Excite") for summary judgment, and allowed plaintiff Playboy Enterprises Inc. ("Playboy") to proceed with trademark infringement and dilution claims brought as a result of defendants' practice of keying banner ads for 'adult' products to plaintiff's trademarks. Keying is a practice used by the operators of search engines to generate revenue via the sale of banner ads. For a fee, the search engine operator will display an advertiser's ad along with, and on, a search results page, when a consumer types one of a series of designated terms into the operator's search engine. In this fashion, defendants keyed the display of their clients' adult-oriented ads to plaintiff's marks. The Ninth Circuit held that when the advertiser's banner ad is not labeled so as to identify its source, this practice could result in trademark infringement by application of the 'initial interest confusion' doctrine. The Ninth Circuit accordingly refused to dismiss plaintiff's trademark infringement claims. The Ninth Circuit further held that issues of fact also precluded the dismissal of plaintiff's dilution claims.
Judge Berzon wrote a concurring opinion, in which he sharply criticized Brookfield Communications, the Ninth Circuit decision from which the 'initial interest confusion' doctrine springs, and the overbroad interpretation he believes it has been given by other jurists. Specifically, Judge Berzon believes that keying clearly labeled ads to plaintiff's marks should not give rise to a trademark infringement claim because the consumer is not confused when he elects to visit the clearly labeled web site of the mark holder's competitor, in lieu of that of the mark holder.
55 F. Supp. 2d 1070, 1999 U.S. Dist. Lexis 9638, Case No. CV 99-320 AHS (C.D. Cal., June 24, 1999), aff'd. 202 F.3d 278 (9th Cir. 1999)
The court denied plaintiff's motion for a preliminary injunction enjoining defendants from continuing to "key" advertisements for adult entertainment products to the words "playboy" and "playmate." Plaintiff Playboy holds federal trademarks in both "Playboy" and "Playmate," which marks it uses in connection with the sale of adult entertainment products. Defendants Netscape and Excite each operate search engines. For a fee, defendants will display an advertiser's banner ads in random rotation on web pages containing the results of searches produced by defendants' search engines. For an increased fee, defendants will display an advertiser's banner ads whenever a user utilizes one of a series of designated terms in his search. This practice, known as "keying," allows the advertiser to target his ads and reach a more receptive audience.
Defendants key various adult entertainment ads to a group of over 450 terms, which include the terms "playboy" and "playmate." As a result, individuals who use one of those terms in a search are greeted not only by a list of web sites which contain the word "playboy" or "playmate", but also by a paid banner advertisement from a purveyor of adult entertainment services. These banner ads do not contain either the word "playboy" or "playmate."
Plaintiff argued that this practice constitutes both trademark infringement and dilution, in violation of federal law and the laws of the State of California. The court disagreed.
The court held that defendants' activities did not constitute either trademark infringement or dilution because defendants were not using plaintiff's trademarks, a perquisite for such a claim. Instead, held the court, defendants were simply using words found in the English language over which plaintiff did not hold a monopoly. Defendants' use of "playboy" and "playmate" in their keying activities is but one of several permitted uses that do not require a trademark owner's consent.
The court further held that plaintiff's infringement claim failed because plaintiff had not shown consumer confusion, or that individuals who saw the banner ads on web pages containing their search results believed that those ads were affiliated with or endorsed by Playboy. In reaching this conclusion, the court held the Ninth Circuit's "initial interest confusion" doctrine, set forth in Brookfield, inapplicable to the case at bar.
Plaintiff's dilution claim failed because plaintiff could not show that defendants' actions blurred or tarnished plaintiff's marks, or otherwise lessened their ability to serve as an advertising agent for goods or services.
Lastly, the court held that defendants' use of "playboy" and "playmate" in keying was both a permitted fair use of plaintiff's marks, as well as a use protected by the First Amendment.
279 F3d 796 (9th Cir., February 1, 2002)
The Ninth Circuit Court of Appeals holds that defendant Terri Welles' use of plaintiff's trademarks "Playboy" and "Playboy Playmate of the Year" in the meta tags, masthead and various banner advertisements appearing on her web site neither infringe nor dilute those marks. These uses of plaintiff's marks by defendant, a model named by plaintiff as "Playmate of the Year" in 1981, are permissible nominative uses necessary to allow Ms. Welles to accurately describe herself and the content of her site. Such nominative uses of a mark are permissible when (1) the product being described is not readily identifiable without use of the trademark; (2) only so much of the mark is used as is reasonably necessary to identify the product; and (3) the user of the mark does nothing that suggests sponsorship by the owner of the mark. Plaintiff's trademark dilution claims failed because a nominative use is exempt from anti-dilution laws, as such a use refers to plaintiff's own product and therefore does not create an improper association between plaintiff's mark and the product of another. In reaching these determinations, the Ninth Circuit affirmed the decision of the district court below.
The Ninth Circuit also held that defendant's repeated use of the alleged mark "PMOY '81" in the wallpaper of her site was not a permitted nominative use because it was not necessary to describe Ms. Welles in light of the court's determination that she can use the phrase "Playboy Playmate of the Year 1981" on her web site. As such, the court reversed so much of the decision of the district court which dismissed the trademark infringement and dilution claims plaintiff asserted as a result of this use, and remanded those claims to the district court for a determination as to whether "PMOY '81" is a mark entitled to trademark protection.
Civ. Action No. 96-6961, 1998 U.S. Dist. Lexis 17282 (E.D. Pa., November 2, 1998)
After a bench trial, the court held that defendant Universal infringed, counterfeited and diluted plaintiff's trademarks "Playboy" and "Bunny" in violation of the Lanham Act by utilizing these marks without authorization on a subscription website offering access to "hard core" erotic pictures. Defendant Universal titled its site "Playboy's Private Collection," which title appeared on every page of the site. In addition, defendant Universal used the term "bunny" in its navigational bar, used the mark "Playboy" in the path of its domain name (www.adultsex.com/playboy/members/pictures), invited users to "send e-mail to Playboy at adultsex.com" and linked its site to one operated by plaintiff Playboy. Because the court concluded that "defendants' intentionally adopted Playboy and Bunny trademarks in an effort to capitalize on [Playboy's] established reputation," the court awarded plaintiff statutory damages of $10,000, together with reasonable costs and attorneys' fees. Defendant's principal was also held liable because he made the decision to use plaintiff's marks on defendant's site.
51 F. Supp. 2d 707 (E.D. Va., June 8, 1999), vacated and remanded 215 F.3d 1320 (4th Cir., 2000)
Court grants defendants' motion to dismiss complaint for want of personal jurisdiction on the grounds that the Federal Trademark Dilution Act does not permit the prosecution of in rem actions against domain names which allegedly dilute famous trademarks.
Plaintiffs, owners of the trademarks "porsche" and "boxster", brought suit under the Federal Trademark Dilution Act, claiming that 128 domain names, including "porsche.com", diluted their famous marks. Plaintiffs elected to proceed with this suit in a novel manner. Rather than file an in personam action against those who had registered the allegedly offending domain names, plaintiffs commenced an in rem action against the 128 domain names themselves.
The court held that this procedure was not authorized by the Act. Moreover, such a procedure, if authorized, would call into question the constitutionality of the statute, as it would permit the assertion of personal jurisdiction over parties without regard to the level of their contacts with the forum. The court accordingly dismissed the complaint.
456 F.Supp.2d 393 (N.D.N.Y., September 28, 2006)
Federal District Court holds that Google's use of plaintiff's trademark "Rescuecom" as a keyword in Google's "Ad words" program to trigger the display of "sponsored link" advertisements from third party competitors for a fee is not a "trademark use" of plaintiff's mark, as the mark is not being used to identify the source of any goods or services. The same holds true of Google's use of plaintiff's trademark in its "Keyword Suggestion Tool," in which Google recommends to potential advertisers, including plaintiff's competitors, keywords they may be interested in using, for a fee, as a trigger for the display of their advertising. Notably the advertisements themselves, which appear along with search results for plaintiff's mark, were not alleged to display plaintiff's Rescuecom mark.
As a result, the Court grants Google's motion to dismiss trademark infringement, unfair competition and dilution claims brought by plaintiff under the Lanham Act, as such claims require a showing of actionable "trademark use" which, the Court holds, Rescuecom cannot make. Having dismissed plaintiff's federal claims, the Court declined to exercise pendant jurisdiction over plaintiff's state law claims, including a claim for tortuous interference.
In reaching this result, the District Court elected not to follow decisions reached by the courts in Geico v. Google, 330 F.Supp. 2d 700 (E.D. Va. 2004) and Edina Realty v. MLS Online.com, 2006 WL 737064 (D.Minn., March 20, 2006) which had denied motions to dismiss trademark infringement claims arising out of similar activity. The Court, instead, followed the path taken by the court in Merck & Co. Inc. v. Mediplan Health Consulting, Inc., 425 F.Supp. 2d 402 (S.D.N.Y. 2006), which dismissed similar claims on the ground, inter alia, that there was no "trademark use."
391 F.3d 439, 2004 U.S. App. Lexis 25479 (2d Cir., December 10, 2004)
In this domain name dispute, Second Circuit affirms the dismissal of trademark infringement claims brought by Savin Corporation, a maker of photocopiers, printers, fax machines, and other office equipment, against the Savin Group, Savin Engineers and Savin Consultants arising out of defendants' use of plaintiff's "Savin" trademark in, among other things, web site domain names, to market their professional engineering companies. The Second Circuit held that consumers were unlikely to be confused by these competing uses of the "Savin" mark, in part because of the differing services and products the parties offer to the public.
The Second Circuit reversed so much of District Court's decision that dismissed claims plaintiff brought under the Federal Trademark Dilution Act ("FTDA") and its New York State counterpart, New York Gen. Bus. Law §360-1, and remanded those claims to the District Court for reconsideration. The Second Circuit held that the District Court had improperly concluded that the Supreme Court's decision in Moseley mandated, in the instant case, that plaintiff must provide evidence of actual dilution to proceed with claims under either statute. As to the FTDA, the Second Circuit held that such a showing is not necessary where the junior user used a mark identical to the famous mark owned by the senior user. As to New York law, the Second Circuit held that Moseley's pronouncement did not effect the showing necessary under New York State law. Under New York State law, a claim for dilution could proceed on a showing of a mere likelihood of dilution -- the submission of evidence of actual dilution mandated by the Supreme Court in Moseley was not required.
Case No. 97 C 5803, 1997 U.S. Dist. Lexis 14851 (N.D. Ill. Sept. 19, 1997)
(Court denies plaintiffs' request for a Temporary Restraining Order enjoining defendant from using plaintiffs' federally registered trademark "Snap-On" as part of its logo "Snap! Online." Such use did not constitute dilution of a famous mark in violation of the Lanham Act, given, inter alia, that (a) plaintiffs' mark was not famous outside the automotive industry; (b) defendant's use did not target the automotive industry but rather was related to a venture designed to help individuals find their way on and around the Internet; and (c) there was little likelihood that defendant's use of the mark within its own logo would blur or reduce the ability of plaintiffs' to use their mark to sell their products.)
343 F.3d 249, No. 02-2069 (4th Cir., Sept. 4, 2003)
Vacating the decision of the court below, the Fourth Circuit Court of Appeals holds that defendant Travelers Indemnity Company of America ("Travelers") is obligated under an insurance policy it issued to defend Nissan Computer Corporation ("NCC") in a trademark infringement and dilution suit brought by Nissan Motor Company ("Nissan") arising out of NCC's use of the "Nissan" mark in the domain names of NCC's web sites. NCC had used the "Nissan" mark, which is also the last name of NCC's owner, on web sites which contained advertisements for both competitors' automobiles and NCC's own hosting and internet access services. The Fourth Circuit held that Travelers was obligated to defend NCC against Nissan's claims under an insurance policy which protected NCC from any "advertising injury" sustained by a third party which was caused by an "offense [NCC] committed in the course of advertising NCC's goods, products or services."
162 F.Supp. 2d 372, Civ. Act. No. 00-3343 (E.D. Pa., August 27, 2001)
In this domain name dispute, Court grants defendant's motion for summary judgment, dismissing the claims of unfair competition and trademark dilution advanced by plaintiff, owner of the federally registered trademark "Strick," against defendant as a result of defendant's registration of the domain name "strick.com." The Court reached this decision, in large part, because (a) the parties' respective businesses did not compete for the same customers, as plaintiff sold transportation equipment such as freight semi-trailers, while defendant sold computer consulting services, and (b) "strick" was defendant Strickland's nickname.
Case No. 96-8377 MRP (D. Cal. May 9, 1997)
Court enjoins defendant from using plaintiff's famous federally registered service mark "Teletech" in the domain name "teletech.com" on the grounds that such use violates the Federal Trademark Dilution Act. Court holds that defendant can continue to operate a website at "tele-tech.com", a mark defendant was using in commerce prior to plaintiff's use of its "Teletech" mark to promote a business that provides different services to its clientele than those provided by plaintiff.
20 F. Supp. 2d 775 (D. N.J., Sept. 25,1998)
Court holds that defendant's use of "Citigroup" as the name for the entity resulting from the merger of Citicorp and Travelers' Group does not infringe plaintiff's federally registered trademark "The CIT Group" when used in mediums other than the Internet. Notwithstanding the fact that plaintiff and defendant are direct competitors in a number of financial services markets, the court found that consumers were not likely to be confused by the two names. In reaching this conclusion, the court relied principally on the fact that the services offered by both parties were very expensive, and would be purchased by sophisticated consumers who would take great care to insure they were dealing with the entity they wanted to do business with. The court also relied on the fact that the names were frequently presented in logo form, which emphasized their differences.
The court further held that defendant's use of "Citigroup" would not dilute plaintiff's mark in violation of the Federal Anti-Dilution Act, both because plaintiff's mark was not famous, and because consumers would not confuse the two marks. The court found that plaintiff's mark was not famous despite the fact that plaintiff had expended over $50 million in advertising its mark over a ten year period, had net income in 1997 of in excess of $2 billion, and that "in certain markets the CIT Group mark has achieved a degree of success, particularly in the fields of equipment financing and leasing and commercial financing."
Lastly, the court held that if used as a domain name, "citigroup.com" would cause consumer confusion between the parties, as plaintiff operated a website at "citgroup.com." This, according to the court, arose predominantly from the fact that in this medium, both names appeared in block capital letters. Defendant Citicorp had not yet determined whether it intended to operate a site at this domain name. The court accordingly granted plaintiff permission to challenge such use in the future should defendant elect to proceed with operation of a website at "citigroup.com."
No. 98 CV 7338 (N.D. Ohio, June 16, 1998)
Operation of website titled "Web-A-Sketch" on which users could draw pictures in a manner similar to the famous "Etch-A-Sketch" toy, and deployment on that site of the trademark "Etch-A-Sketch" in ways designed to attract those using search engines to find "Etch-A-Sketch," constituted dilution of plaintiff's famous "Etch-A-Sketch" mark, as well as trademark infringement. The court further held that posting notices on the site requesting users to object to plaintiff's attempt to enforce its trademark rights constituted denigration of plaintiff without cause in violation of Ohio state unfair competition statutes.
368 F.3d 433 (5th Cir. 2004)
Reversing the District Court, the Fifth Circuit holds that defendant's operation of a non-commercial gripe site at a domain which varied from plaintiff's mark solely by the subtraction of the letter "s" did not violate either the Federal or Texas State Dilution Acts, nor did it run afoul of the Anticybersquatting Consumer Protection Act ("ACPA"). The Court determined that defendant's actions were not motivated by the requisite bad faith intent to profit from the use of the mark, but rather, by defendant's desire to inform the public about his dispute with plaintiff and the services it offered him. The absence of such bad faith was fatal to plaintiff's ACPA claim. Plaintiff's Federal Dilution Act claim failed because defendant's use was not commercial.
1996 U.S. Dist. Lexis 17090 (N.D. Cal. October 29, 1996)
(Use of "Adults R Us" in domain name enjoined because such use impermissibly dilutes plaintiffs' famous federal trademarks in "Toys R Us" and the "R US" family of marks in violation of 15 U.S.C. §1125(c)(1). Such dilution was found to occur as a result of the tarnishing of the marks caused by their association with defendants' sale of sexual devices and clothing under the "Adults R Us" banner).
26 F. Supp. 2d 639 (S.D.N.Y., October 28, 1998) vacated, 201 F.3d 432 (2d. Cir., Nov. 10, 1999)
Court held that defendants' use of the domain name "gunsareus.com" in connection with the operation of a website selling firearms neither infringed nor diluted plaintiffs' famous Toys "R" Us family of marks. In rejecting plaintiffs infringement and unfair competition claims, the court determined that consumers were not likely to be confused by defendants' use of the "gunsareus" domain name into believing that plaintiffs were affiliated with defendants, who sold firearms out of a single small shop and on their website. Plaintiffs' dilution claims failed because, in the court's opinion, defendants' "are us" domain name was not sufficiently similar to plaintiffs' "R" us family of marks to cause consumers to relate defendants' business to that of plaintiffs. As such, defendants' use of "are us" in its domain name would neither tarnish nor blur plaintiffs' marks.
306 F.3d 509 (7th Cir., October 4, 2002)
Reversing the decision of the court below, the Seventh Circuit Court of Appeals holds that a reseller of "Beanie Babies" did not violate the Federal Trademark Dilution Act when she used plaintiff Ty Inc.'s "Beanies" trademark in the title and domain name of her web site, at which site approximately 80% of the toys offered for sale are used "Beanie Babies" manufactured by Ty.
478 F.3d 413, No. 06-1826 (1st Cir., February 23, 2007)
Court dismisses cyberstalking and security law claims advanced by plaintiffs under Florida state law against defendant Lycos, holding such claims barred by the immunity afforded Lycos under Section 230 of the Communications Decency Act (“CDA”). Such claims arose out of statements critical of plaintiff Universal Communication Systems (“UCS”) and its CEO, Michael Zwebner, that were posted by third parties on a message board found on a website operated by Lycos at the domain Raging Bull.com Plaintiffs claimed that defendants, including Lycos, were involved in a scheme to manipulate plaintiff’s stock price. Plaintiffs claimed that defendants shorted UCS stock, and then posted derogatory comments on RagingBull.com in an attempt to drive the stock price down. Such a claim, held the court, sought to hold Lycos liable for its role in the publication of these statements, which were authored by third parties, and as such was barred by operation of the CDA. The cyberstalking claim was similarly barred because the act on which such claim rested was the publication of derogatory statements on the RagingBull.com message board authored by third parties. As such, this claim too, sought to hold Lycos liable for its role in the publication of such statements, and was barred by application of the CDA.
The court also dismissed federal cyberstalking claims asserted by plaintiffs against Lycos under 47 USC Section 223, holding that this statute did not create a private right of action for a civil suit.
Finally, the Court dismissed trademark dilution claims advanced by plaintiffs under Florida state law. These claims were premised on the use of UCS’ trademark as the name for a message board on Raging Bull.com at which third parties posted statements critical of plaintiffs. The Court held that, despite the fact that the message boards contained advertising, such a use did not constitute the requisite use in commerce of plaintiffs’ mark. In addition, such use of plaintiffs’ mark to describe a message board that contained statements about plaintiffs was not actionable under the dilution act.
2000 U.S. Dist. Lexis 2670, 106 F. Supp. 2d 845 (E.D.Va., Feb. 24,2000) aff'd., 238 F3d.264 (4th Cir., January 22, 2001)
In this domain name dispute, Court grants defendants Volkswagen AG and Volkswagen of America Inc. (collectively "Volkswagen") summary judgment, holding that plaintiff's use of defendants' famous "vw" trademark in the domain name "vw.net", which also happen to be the initials of plaintiff's firm, constitutes cyberpiracy, trademark dilution and trademark infringement.
The court found that plaintiff had run afoul of the newly enacted Anticybersquatting Consumer Protection Act by registering a domain name containing defendants' famous trademark. The court held that plaintiff undertook such registration with a bad faith intent to profit from a previously registered mark within the meaning of the Act. In reaching this conclusion, the court relied on the fact that "Virtual Works has never registered a trademark or conducted business using [the vw] initials," "vw" was not the legal name plaintiff's entity, plaintiff's use of the vw mark has created a likelihood of confusion and that there was evidence of actual consumer confusion in the form of e-mails received by plaintiff that were intended for defendants, plaintiff has posted disparaging remarks about defendants at the web site it operates at the vw.net domain, plaintiff had offered to sell the domain to defendants and defendants' trademark was famous. Although not recited in the court's opinion, it appears from plaintiff's web site that plaintiff and its predecessors registered the domain name in 1996, and used it to promote their web site hosting and development business.
The court further found that plaintiff had infringed and diluted defendants' trademark. On this latter point, the court stated:
Recent case law holds that internet cyberpiracy constitutes per se trademark dilution. ... VW being associated with Virtual Works instead of Volkswagen constitutes trademark dilution.
2:01-CV-00294-LRH-LRL (D. Nev., December 27, 2007)
On remand, the District Court adheres to its initial decision, and holds that defendant’s use of the domain name evisa.com to promote its language service business dilutes plaintiff Visa International Service Association’s famous ‘visa’ trademark. Following the Supreme Court’s interpretation of the Federal Trademark Dilution Act (“FTDA”) announced in Moseley v. V Secret Catalogue, the District Court found the requisite evidence of actual dilution in the defendant’s use of a trademark – evisa – substantially similar to plaintiff’s famous Visa mark in its own domain name. This, the Court held, had the effect of both preventing plaintiff from using that domain to market its products, and of placing plaintiff’s reputation at the mercy of defendant. Importantly, the Court did not rely on direct evidence of actual dilution, or on evidence that consumers actually associated defendant’s evisa mark with plaintiff or its products. As a result, the District Court granted plaintiff summary judgment on its trademark dilution claim.
33 F. Supp. 2d 488 (E.D. Va., Feb. 2, 1999)
In this domain name dispute, Court holds that defendant's use of the domain names www.washingtonspeakers.com, www.washington-speakers.com, www.washingtonspeakers.net and www.washington-speakers.net infringed the common law trade name of its competitor the plaintiff in "Washington Speakers Bureau" and accordingly directed defendant to relinquish ownership of those domains. Both parties aid the public in locating speakers for lectures.
The court concluded that the plaintiff had shown the requisite likelihood that consumers would be confused by defendant's use of a "colorable imitation" of plaintiff's mark in a domain name. The court determined that the public did not associate the abbreviated phrase "Washington Speakers," descriptive of services offered by both parties to the lawsuit, with the plaintiff. The court nonetheless determined that defendant's actions were likely to confuse the public because the services the parties offered to the public were virtually identical, the parties advertised in the same medium (the Internet), the mark was used in a domain name, which gives rise to a particular potential for confusion, and the fact that, in the court's opinion, defendant adopted the domain names at issue in a bad faith effort to attract business otherwise headed for plaintiff. This latter finding was premised in large part on the fact that defendant, at the time it registered the domain names at issue, had also registered the domain names of a number of its competitors, and was aware of plaintiff and its tradename.
Lastly, the court found that plaintiff's dilution claim was without merit because plaintiff's mark was not famous.
Pinehurst, Inc. v. Brian Wick, et al.
256 F. Supp. 2d 424 (M.D. N.C., 2003).
Finding that defendant cybersquatters violated both the Anticybersquatting Consumer Protection Act (“ACPA”) and the Federal Trademark Dilution Act (“FTDA”), the court directed defendants to transfer to plaintiff domain names containing plaintiff’s famous “Pinehurst” mark, enjoined defendants from further using “Pinehurst” in a domain name, and awarded plaintiff both statutory damages in the amount of $100,000 and attorneys fees. Plaintiff is the owner of the world famous Pinehurst Golf Resort. The court found that defendants had registered the domain names in question – pinehurstresort.com and pinehurstresorts.com - with a bad faith intent to profit therefrom because, among other things, they had registered over 8000 domain names, many of which contained the trademarks of well-known corporations, golf courses or law firms, had offered, in settlement, to transfer the domain names at issue to plaintiff in exchange for a ‘contribution’ to their legal expenses and had registered additional ‘typo’ domains after the commencement of this suit. Such a finding also rested on defendants’ stated purpose in registering these and other domains, which was to “mess” with “corporate America,” as well as on the fact that the domains at issue had been registered by an entity named NameIsForSale.com
In reaching this result, the court rejected defendants’ claim that their conduct was a permissible ‘parody’ of plaintiff’s mark. Such a defense failed, in part, because the content of defendants’ site – on which was located images of a miniature golf course and a trailer park – was not seen until after the user had already made a decision to enter the site based on the domain names at issue, which did not parody plaintiff or its golf course. Said the court “A parody must convey two simultaneous and contradictory messages, that it is the original but also that it is not the original and is instead a parody. … Looking at Defendants’ domain names alone, there is no suggestion of a parody. … The domain names convey the first message, that it is the original, but the second message, that it is ‘not the original and that it is a parody, is discovered only by accessing the website and reading through the website’s content.”
The court further held that defendant had violated the FTDA by virtue of having registered the domain names in question, and thereby having prevented plaintiff from using them in commerce. This reduced the selling power of plaintiff’s famous
The Network Network v. CBS Inc., et al
No. CV 98-1349, 2000 US Dist. Lexis 4751, 2000 WL 362016 (C.D. Cal. Jan. 18, 2000)
The Network Network's registration and use of the domain name "www.tnn.com" neither infringed CBS's famous trademark "TNN" - (shorthand for "The Nashville Network") - nor diluted that mark. The Nashville Network is a cable television network that broadcasts country music and country lifestyle programming; The Network Network provides consulting and training to information technology managers and professionals.
On the parties’ cross-motions for summary judgment, the District Court held that The Network Network’s use of its tnn.com domain did not dilute CBS’s famous mark under the Federal Trademark Dilution Act because such use commenced before that mark became famous. “[T]he statute looks to the mark’s fame at the time of the mark’s first commercial use, not when the first use occurs that the mark owner finds objectionable.”
The Court also rejected CBS’s trademark infringement claims, finding there was little likelihood that consumers would be confused by plaintiff’s use of tnn.com given the widely divergent nature of the product and services offered by the parties to the public.
The Court rejected CBS’s initial interest confusion claim for the same reason. Said the Court:
For the same reasons, the Court also rejected CBS’s corresponding California state law dilution and infringement claims, and accordingly resolved this domain name dispute in plaintiff's favor.