Domain Name Handbook
DNS NewsDomain DisputesU.S. PolicyICANNMailing ListsArchivesTable of ContentsReviews & CitesViewpointAcknowledgmentGlossarySpecial FeaturesBooklist

Si a jure discedas vagus eris, et erunt omnia omnibus incerta.
If you depart from the law, you'll wander without a guide, and everything will be uncertain to everyone.

ABCARPETANDHOME.NET

A.B.C. Carpet Co., Inc., et al. v Mehdi Naeini, Case No. 00-CV-4882 (FB), 2002 U.S. Dist. Lexis 1129 (E.D.N.Y., January 22, 2002). Plaintiffs have used the marks "ABC" and "ABC Carpet" for retail stores offering carpets and rugs since 1961 and "ABC Carpet and Home" since 1992. Defendant has operated a business under the name "American Basic Craft Carpet and Home Restoration" since 1980 for carpets and carpet cleaning services. When he registered the domain ABCARPETHOME.NET, he was unaware of plaintiff's use of the mark. Plaintiffs commenced a lawsuit claiming trademark infringement and dilution and violation of the ACPA,. The court denied plaintiffs' motion for summary judgment, holding that issues of fact precluded it from resolving the parties' disputes at this time. The court also denied the dilution claim, finding that Plaintiff's failed to show that the mark is famous.

AIMSTER.COM

America Online filed a federal suit against Aimster, claiming that the music file swiapping service is intentionally piggybacking on its own trademark AIM (AOL Instant Messenger) to confuse AOL customers. The suit , filed in Virginia federal court, follows a UDRP decision from the National Arbitration Forum, that AIMSTER.COM. was registered in bad faith. Aimster claims that its name derives from two sources which have nothing to do with AOL's AIM service. When the startup was launched in September of 2000, it originally operated only through AIM's platform. After a court order to relinquish the AIMSTER.COM domain name to AOL, Aimster was renamed Madster

AJAX.ORG

In September 1998, Colgate-Palmolive sent a cease and desist letter to the co-founder of AJAX.ORG, claiming that the site diluted the corporation's famous brand. The developer of the site began using the name of an ancient Greek warrior in high school ten years earlier. Within weeks of Colgate's demand, another site posted a petition with 1,368 signatures protesting the multinational's threats to shut down the small non-commercial operation. The corporation backed down in October, explaining that the site's content did not lead to customer confusion over its source.

ALIBABA.CN

A Beijing Intermediate People's Court ruled that the China Internet Network Information Center did not have the right to reserve Chinese domain names for companies that are well-known and ordered the administrator of .CN to treat all domain applicants equally. The dispute arose after CNNIC refused the application of Beijing Zhengpu Science Development Company for the Chinese name "Alibaba" in January 2000 on the grounds that the domain was reserved for Hong Kong-based Alibaba.com Corp., a well-known online business-to-business marketplace

ALITALIASUCKS.COM

Plaintiff is Alitalia, Italy's flagship air carrier. Defendent is a William Porta, a disgruntled passenger who registered ALITALIASUCKS.COM on October 26, 2000 after his luggage was lost. The suit, filed in federal court in Manhattan, alleges trademark infringement. Alitalia sent Porta a check for $840 plus two travel tickets on Dcember 19 to settle his claim, but he said unless he received unspecified "satifactory compensation", he would register the website, on which he posted a letter about how the airline had treated him, with 350 Internet search engines within 9 days.

ALTAVISTA.COM

A long and complex battle for the ALTAVISTA.COM domain name was settled in July 1998 when Compaq Computer Corp, owner of the popular Alta Vista search engine, reportedly agreed to pay a record-breaking $3.35 million to Alta Vista Technology, a California software startup, for the Internet address. Alta Vista Technology registered the domain name in 1994, more than a year before the search engine was launched. In March 1997, a federal judge ordered Alta Vista Technology to change its logo and add a disclaimer on the site, which attracts nearly a million visitors a day looking for the search engine. Compaq inherited the search engine when it bought Digital Equipment Corp. in January 1998.

AMAZON.GR, AMAZOM.COM, AMAZON.NE.KR

In July 2001, the Seoul District Court ordered cancellation of the domain name registration AMAZON.NE.KR by a Korean man. The presiding man said the registration infringed the trademark rights of AMAZON.COM by misapropriating its name and logo.

Online bookseller AMAZON.COM filed a lawsuit in the U S District Court for the District of Delaware, alleging trademark infringement, trademark dilution, copyright infringement,and violations of the federal RICO statutes, against two Greek citizens. The pair registered AMAZON.GR and AMAZON.COM.GR to host "Greece's Biggest Bookstore" with a website layout similar to that of AMAZON.COM. Two weeks after the lawsuit was filed, the copycat site changed its domain name to GREEKBOOKSONLINE.COM , although the disputed domain names still remain in use.
An online entrepreneur at AMAZOM.COM capitalizes on people's spelling errors. The website feeds customers not to the similarly named "World's Largest On-line Bookstore" at AMAZON.COM but to two competing booksellers. Earlier, however, Amazon Bookstore filed a suit in U.S. District Court in Minneapolis against AMAZON.COM, claiming the Seattle-based bookstore intentionally misappropriated the name when it launched its online operation in 1995. The parties reached a settlement with the cooperative assigning its common law rights to the online bookseller.

AMERICASCUP.COM

New Zealand's America's Cup team was granted a temporary restraining order on December 9, 1999, preventing two New Zealand men who registered AMERICASCUP.COM from using the domain name. The lawsuit was filed by Quokka Sports, a company handling AMERICASCUP.ORG for the New Zealand America's Cup yachting team, on November 29, 1999, the same day the U.S. anti-cybersquatting legislation was signed into law. The parties settled hours before a judge was to rule on the complaint, and the domain names were transferred to the America's Cup Properties.

AOLBETA.COM

16-year-old Nickolas Grove registered the domain AOLBETA.COM on August 20 after seeing the domain was available. The following day, the DNS settings were changed and the domain name was transferred to AOL. Grove is seeking legal assistance in the matter.

AOLSEARCH.COM, AOL-CASINO.COM, AOL.ORG
The U.S. District Court in Virginia ordered the Public Interest Registry, the registry for .ORG, to transfer AOL.ORG to America Online. AOL previously obtained an ACPA in rem jurisdictional ruling to transfer the domain but the Asian-based registrar refused to comply. The Virginia court ruled that there is no bar on ordering the registry to transfer a domain where the registrar is uncooperative.

In June 1999, NSI revoked a woman's AOLSEARCH.COM domain name when she failed to respond to its 30-day warning that a trademark claim had been initiated by America Online. The site was called African-American OnLineSearch , a clearinghouse for links about African-American issues and cultures. The registrant claimed she never received the notification, but NSI said the contact information was incomplete and transferred the domain name to America Online.
In June 1998, America Online obtained a cease and desist order against a German on-line casino operating at AOL-CASINO.COM for violation of its trademark rights.

APPLEIMAC.COM

A Canadian teen who registered APPLEIMAC.COM to advertise his web hosting company received a cease and desist letter on February 18, 1999 from Apple Computer Co. The 17-year old student countered with a demand that Apple donate 30 iMacs to a local school. In mid-April 1999, he agreed to surrender the domain name to the computer company.

AVERY.NET, DENNISON.NET
Avery Dennison Corp. v. Sumpton, 999 F. Supp. 1337 (C.D. Cal. 3/19/98): A federal judge in Los Angeles ruled that FreeView Listings, of Canada must relinquish AVERY.NET and DENNISON.NET to the trademark owner, Avery Dennison. Jerry Sumpton, founder of FreeView, was ordered to convey the domain names to Avery Dennison for $300 apiece. Sumpton has registered thousands of domain names, which he leases for an annual fee to people seeking e-mail addresses that match their surnames. The judge said Sumpton's use lessened Avery's ability to identify its products on the Internet, even though the company registered and uses the domain names AVERY.COM and AVERYDENISON.COM. The judge dismissed claims against NSI, which was named as a co-defendant in the litigation. On August 23, 1999, the Ninth Circuit Court of Appeals reversed the injunction against Sumpton, holding that the widespread use "Avery" and "Dennison" makes it unlikely that either can be considered a famous mark eligible for the dilution cause of action.

BARBIESPLAYPEN.COM,
BARBIESPLACE.COM,
BARBIEBENSON.COM,
BARBIESBEACHWEAR.COM,
BARBIESCLOTHING.COM

Mattel , manufacturer of the popular Barbie dolls, has aggressively pursued its trademark rights in the domain name system.

In Mattel, Inc. v. Barbie-Club.com, the 2nd Circuit upheld the Southern District's dismissal of an action brought by Mattel against 57 Internet sites. The court said the "basic jurisdictional grant" in the ACPA "contemplates exclusively a judicial district within which the registrar or other domain-name authority is located. A plaintiff must initiate an in rem action by filing in that judicial district and no other."

In Mattel, Inc. v. Adventure Apparel, (S.D.N.Y. September 19, 2001)--the court granted summary judgment to Mattel, holding that defendant violated the Anticybersquatting Consumer Protection Act by registering the BARBIESBEACHWEAR.COM and BARBIESCLOTHING.COM. Defendant argued that he intended to use the names for a parody site, a bona fide noncommercial or fair use under the ACPA. However, the judge noted that defendant parked the domain names at another domain name associated with the defendant's commercial Web site and rejected the parody argument. The court held that Mattel's "Barbie" trademark is famous and the domain names diluted the mark. The court further found that he domain names in question were confusingly similar to the distinctive "Barbie" mark. domain names at issue be cancelled, and awarded plaintiff $2000 in statutory damages for the two domain names registered. It did not award plaintiff attorneys' fees, nor did it direct the defendant to transfer the domain names to Mattel.

Mattel sued Internet Dimensions Inc. in Fort Lauderdale, Fla., for trademark infringement when it discovered a porn site called BARBIESPLAYPEN.COM. In mid-July 2000, a judge from the Southern District of New York ordered the site to stop using Mattel's "Barbie" trademark as part of its domain name and forced the registrant to cede the domain name to Mattel.

Elsewhere, (N.D. Cal 2/99): Mattel, filed a lawsuit in the U.S. District of Los Angeles against Internet Host, an ISP that registered BARBIESPLACE.COM and BADBARBIES.COM. The suit alleges that Oregon-based Internet Host intended to trade on dollmaker's goodwill and to extort payment to transfer the domain names to the trademark owner.

Mattel also complained to Barbie Doll Benson that her steamy website infringes on its well-known trademark. The exotic dancer received a letter demanding that she transfer her BARBIEBENSON.COM domain name to the toy manufacturer. Benson, who established the site in 1997 to break away from her stripping career, told Mattel to keep its hands off her domain.

BARCELONA.COM

In a UDRP decision that should cause concern for many Web-site- operating travel companies and city portals around the world, a WIPO arbitrator decided BARCELONA.COM should be taken away from the current registrants and awarded to the Spanish city of Barcelona. The domain was registered early in 1996 and used as a source of news and tourism information related to Barcelona. The arbitrator opined that people visiting the domain would expect an official site of the city and the resulting confusion constituted bad faith. The arbiter did not consider the operation of a Barcelona portal to constitute evidence of a legitimate right to the address and suggested that it is reasonable to assume that anyone using the address BARCELONA.COM "would normally expect to reach some official body or representative of the city oF Barcelona itself." The registrant filed a lawsuit in federal court to stay the transfer of the domain name. Barcelona City Council's motion to dismiss for lack of jurisdiction was rejected by the District Court at Alexandria, Virgina on March 16, 2001. A year later, chief judge for the Eastern District of Virginia, ruled in favor of the city of Barcelona with a decision based on trademark law in Spain. Judge Claude Hilton broke new ground with a ruling that says it was the intent of Congress to have ACPA apply to foreign trademarks. The 4th Circuit Court of Appeals reversed, remanded and vacated the lower court's decision, ruling that the lower court erred in applying Spanish law to an ACPA case.

BARGINBID.COM
Bargain Bid v. Ubid, E.D.N.Y. 99 CV 7598: In one of the first lawsuits to test the U.S Trademark Cyberpiracy Act, Bargain Bid was ganted a temporary injunction against Ubid and the registrant of BARGINBID.COM. The lawsuit alleged that the domain name was registered with the intent to divert consumers "during the height of the holiday shopping season" to the competitor's web site by using a common misspelling of "bargain".

BARRYDILLER.COM
Media mogul Barry Diller and his company, USA Networks, sued three men, who do business as Thoughts and Cybermultimedia, for hawking BARRYDILLER.COM for $10 million. The suit was filed in New York State Supreme Court on June 23, 1999. The defendants pooled about $40,000 to purchase domain names of famous people for resale. Diller was granted judgment by default when the defendants failed to appear in court or reply to the suit. The judge ordered an inquest on possible damages. The justice, ruling under the Anticybersquatting Consumer Protection Act, ordered the defendants to transfer the domain name to Diller and USA Networks but declined plaintiffs' request for $68,615 in attorney fees and damages.

BARTERCARD.ORG
On November 19, 1999, the Supreme Court of Queensland granting orders to proceed with the eviction of a company using the domain nameBARTERCARD.ORG. The application for interlocutory injunctions was brought by international trade exchange Bartercard to prevent rival AshtonHall from using the Bartercard name or trademark as a domjain name or email address. Lawyers claimed the BARTERCARD.ORG site substantially reproduced member information from Bartercard's National Directory and its own site.

BATTLEBOTS.ORG
Attorneys for the Comedy Central television show Battle Bots sent a cease and desist to the registrant of BATTLEBOTS.ORG, who operates a Unix-based Internet shell service, which includes Internet relay chat (IRC), email accounts, web pages and software programming. The registrant has used the term "bot" since 1994 and acquired the domain name in August 2000, several months before the trademark issued. Bowing to pressure, the registrant relinquished the domain name for $70 in September 2001.

BBC1.COM, BBC2.COM
The BBC won a High Court injunction blocking registrant Stephen Taylor of Britain from selling BBC1.COM and BBC2.COM. The BBC claimed trademark infringement, passing off and breach of contract in its litigation. The registrant was ordered to transfer the domain names to BBC and pay its legal costs.

BEANIEBABY.COM, BEANIE
COLLECTIBLES.COM, BARGAINBEANIES.COM
No. 99C 0692 (N.D. Ill - 2/3/99): Ty, Inc., manufacturer of the popular Beanie Babies stuffed toys, filed suit against a Missouri woman who registered the domain name BEANIEBABY.COM. Ty charged that the woman used the company's trademark as her website address to profit from Ty's name recognition. Her complaint for declaratory judgment and motion for dismissal were dismissed by the U.S. District Court of Missouri. Ty registered BEANIEBABIES.COM and reportedly was offered the BEANIEBABY.COM site for $1.25 million. The site posts a disclaimer that it is not affiliated with Ty. In April, Ty brought suit against an Arizona woman who registered BEANIECOLLECTIBLES.COM, which leads to information about an adult retirement community. In September 2002, the 7th Circuit Court of Appeals reversed a lower court decision and held that a reseller of "Beanie Babies" did not violate the Federal Trademark Dilution Act when she used plaintiff's "Beanies" trademark in the title and domain name of her web site, BARGAINBEANIES.COM, to market the product. The court relied on the fact that Ty's marketing strategy inlcuded creation of a secondary market and held that defendant's actions constituted neither a blurring nor tarnishment of plaintiff's marks.

BEWITCHED.COM

BEWITCHED.COM is the domain name Martin Wattenberg and his wife registered in May 1996 to market their Java applets. Two-and-a-half years later, they received a call from Columbia TriStar Interactive, demanding they relinquish the name which matched a popular TV show produced by TriStar in the 1960s. Columbia TriStar is a part of Sony, which owns two design marks for the show. The Wattenberg's sought help from the World Wide Web Artists Consortium (WWWAC) mailing list, with 3,000 subscribers. No lawsuits havbeen filed and Wattenberg is optimistic about reaching a settlement with the company.

BIRTHDAYBALLOONS.COM

NSI was taken to federal court by Plaintiff Bruce Watts, who sought to hold the registrar responsible for his inability to obtain a previously registered domain name, BIRTHDAYBALLOONS.COM. Watts' claim of antitrust violations were dismissed by the court in May 1999.

BLIZZARD.NET

Blizzard Entertainment, a division of software publlisher Davidson & Associates, Inc., sent a cease and desist letter to the registrant of BLIZZARD.NET, claiming use of the domain name is likely to deceive the public as it is "confusingly similar" to Davidson's trademark. There are a dozen registrations for the term "blizzard" in the USPTO trademark database--for electric fans, cryosurgical equipment, vaccuum cleaners, bicycles and ice cream confections--but Davidson's is for the words "Blizzard Entertainment".

CANADIAN.BIZ

Douglas Black, a University of Toronto graduate, registered CANADIAN.BIZ to use for an online business. Molson Breweries, owner of the "Canadian" trademark, was awarded tranfer of the domain name in a challenge under the registry's Start-Up Trademark Opposition Policy. Black challenged the decision, which was overturned by an Ontario court in July 2002. The judge noted that if the analysis used by the STOP panelist were correct, the only person who could register CANADIAN.BIZ without bad faith would be Molson, an approach that would grant the company defacto monopoly over the word Canadian in the domain name system.

CASARES.COM, CAESARSCASINO.COM, et. al.

Caesars World, Inc. v. Caesars-Palace.Com, et al. Civ. 99-550-A (E.D.Va.,March 3, 2000): Plaintiff asserted a claim under the Trademark Cyberpiracy Act and invoked its in rem provision. Defendants--CASARES.COM, CAESARES.COM, CEASARAS.COM, CEASARES.NET, CAESARES.NET, CEASARES.ORG, CEASAERES.ORG and others registered to Netgame, Inc.-- moved for dismissal asserting that the in rem provision is unconstitutional and violates rights to due process. The court holds that the provisions of the Anticybersquatting Consumer Protection Act that permit a trademark holder to proceed with an in rem action against a domain name do not violate the Due Process clause of the United States Constitution. The court determined that, for the purpose of the Act, Congress mandated that a domain name is property located in the forum in which the domain name registrar is located. Accordingly, the court denied defendants' motion to dismiss the complaint. ": There is no prohibition on a legislative body making something property. Even if a domain name is no more than data, Congress can make data property and assign its place of registration as its situs," the court wrote.

  • Caesars World, Inc. v. Caesars-Palace.Com, et al., Order, Civ. 99-550-A , E.D.Va. (March 3, 2000)

CASRO.COM

Attorneys for the Council of American Survey Research Organizations (CASRO), a national trade association of survey research firms, sent a cease-and-desist letter to Consumer.Net for claiming a name that would lure traffic and cause confusion with its own website at CASRO.ORG. CASRO.COM now maps instead to the website of the consumer information organization, Consumer.net.

CDS.COM

Civil No. 97-793-HA (D.Or. 4/22/98): CD Solutions, Inc., a replicator of compact disks, registered the domain name CDS.COM in February of 1996. Fifteen months later, CDS Networks, one of twelve owners of U.S. trademarks for "CDS", lodged a challenge for the domain name. On May 19, 1998, CD Solutions received a final judgment from the U.S. District Court for the District of Oregon that its CDS.COM domain name does not infringe the trademark registered to CDS Networks for printing and desktop publishing services. The court concluded that the mark itself now denotes a term in common usage and is not entitled to protection as a strong mark.

  • CD Solutions, Inc. Press Release re: Final Judgment (May 19, 1998)
  • CD Solutions, Inc. v. CDS Networks, et.al., #97-CV-793, Pacer Record (U.S. District of Oregon, - May 22, 1998)
  • CD Solutions, Inc. v. John Cleven Tooker, Commercial Printing Co., CDS Networks, et.al., #97-CV-793-HA, Opinion and Order (U.S. District of Oregon, - April 22, 1998)

CHAMBORD.COM

Chatam International Inc. v. Bodum Inc., E.D. Pa., No. 00-1793 (8/7/01). - Chatam sells a raspberry liqueur and fruit preserves under the trademark "Chambord." Bodum sells non-electric coffee makers under the same mark. A Bodum affiliate registered CHAMBORD.COM, and Chatam filed suit against Bodum for violations of the ACPA, trademark infringement, and trademark dilution. The court granted summary judgment in favor of Bodum Inc., relying on a safe harbor provision for those registrants who the court determines "believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful."

CHECKPOINT.COM

Checkpoint Systems, Inc., v. Check Point Software Technologies, Inc., 3d Circuit, No. 00-2373 (10/26/01) - The 3rd U.S. Court of Appeals affirmed a New Jersey U.S. District Court decision which held that the impact of a trademark "initial interest confusion" analysis must be weighed against such factors as the similarity of the companies' businesses and the sophistication of their customers. A property-protection company, Checkpoint Systems, filed suit against network firewall vendor Check Point Software, the registrant of CHECKPOINT.COM. "Initial interest confusion" is a concept wherein one company can divert the customers of another by imitating its trademarks, even if the confused consumers did not do business with the imitator. Nonetheless, the court found no evidence that Checkpoint Systems was known to those in the information technology world and did not order the domain name transferred to the plaintiff.

CHIA.BIZ, CHIA.INFO

Joseph Enterprises Inc. (JEI), which markets the Chia Pet planters, sued ued NeoPets, the popular virtual pet site, alleging cybersquatting for registering CHIA.BIZ and CHIA.INFO. The lawsuit was filed on June 3, 2002 in federal court in San Jose, Calif. JEI claims the virtual pet site is trying to trade unfairly off the Chia name. However, in March, NeoPets filed for trademark protection to use the Chia mark for plush toys, games and other items.

CHASE.CO.UK

Chase Manhattan Bank put the legal squeeze on Chase House and forced the small management consultancy business to sell its domain name, CHASE.CO.UK. Chase House was named after the two centuries old building in which the business is housed, but the bank claimed the company was trading off its familiar name and issued a claim in the High Court. Unable to afford a protracted legal fight, Chase House negotiated a settlement which included relinquishing the domain name, but staged a mock funeral and provided a virtual condolences book for supporters to sign. Chaser House will be resurrected as SOLUTIONSWAREHOUSE.COM.

CLAREMONT
MCKENNA.COM

The Assistant Vice President for Marketing and Public Relations at Claremont McKenna College in Southern California demanded that the students who established a website at CLAREMONTMCKENNA.COM relinquish the domain name to the admistration for a nominal fee. Although the college official praised the site, saying that it "showcases the entrepeneurial spirit of CMC," he claimed that the domain name infringes on the trademark rights of the college. The site included a disclaimer of affiliation with CMC with a link to the official website at MCKENNA.EDU, but the college president threatened the students with a lawsuit over rights to the name. In May, 1999, CMC issued a contract allowing the CMC students requiring the students to relinquish the domain name with a license to use for a renewable five-year term. Reportedly, a settlement was reachedin which CMC will purchase the rights to the domain name for $170,000. The college has agreed to establish a $120,000 account to fund fellowships to encourage enrepreneurial spirit and civil liberties. It will also pay $50,000 over ten years for an independent student-operated website at CMCSTUDENTS.COM. A complete history of this dispute has been moved to the new student website. Although the domain name dispute has been resolved, the principals involved are still arguing over the recollection and recitation of facts.

CLUE.COM

In 1996, Hasbro, Inc., an international toy manufacturer, challenged the registration of CLUE.COM by a two-person Colorado computer consultancy. Clue is the name of a classic children's board game. Clue Computing obtained a court order preventing suspension of the domain name. NSI filed federal interpleader against Clue Computing, which was dismissed. Next, Hasbro sued Clue in the District Court for Massachusetts, which ruled in September 1999 that Clue Computing is not infringing or diluting the rights of Hasbro in its domain name registration. The court said, "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." Thus, there was insufficient evidence to establish a likelihood of confusion between the board game and technology company's use of the trademark. On dilution, the judge wrote, "I find no calibrated fairness in awarding Hasbro equitable relief through an anti-dilution injunction granting it a nationwide monopoly in the use of this rather common word' against other companies like Clue Computing legitimately using that word in other contexts." Hasbro attorneys filed an appeal with the Court of Appeals for the First Circuit , which affirmed the decision of the District of Massachusetts on November 7, 2000.

CNNEWS.COM

The Cable News Network, known worldwide as CNN, sent a cease and desist letter to Shanghai-based Maya Online, registrant of CNNEWS.COM. The American company asserted that the domain registration and competitive news content on an associated website dilutes its rights in the CNN mark. CNN cited the Trademark Cyberpiracy Act, thoughtfully enclosing a Registrant Name Change Agreement with its demand for the name. The Asian ISP said CN represents China as its ISO-3166 country code and refused to honor CNN's demand. A senior judge in charge of intellectual property under the Beijing High People's Court said Maya appeared to have convincing reasons to defend its choice of domain name. CNN filed an in rem proceeding in Virginia federal court--(2001 U.S. Dist. Lexis 14693). The domain was registered with Eastern Communications, but the court held that the ACPA in rem provisions were met by virtue of Verisign's registry function, located in that state.The court ordered the domain name transferred to CNN but acknowledged that it could not create an order binding on a Chinese registrar. At the request of CNN, ICANN wrote to Eastern Communications that it is obliged to comply with the court order under the terms of its accredition agreement.

CONTAINERLIFT.COM

A High Court in New Zealand granted an interim injunction which prevents a manufacturer, Maxwell Rotor, from using the CONTAINERLIFT.COM domain name. The litigation was filed by two British companies, Containerlift Services and Containerlift Sales, and a New Zealand manufacturer, Steelbro. The High Court found that although the Containerlift companies had no reputation in New Zealand, had former had established a "significant business" in England and was well-known.  The court also also accepted evidence that the word "containerlift" was not used generically, and said the use of the CONTAINERLIFT.COM domain "will probably cause damage to the business or goodwill" of the UK Containerlift companies.

CORINTHIANS.COM

Jay D. Sallen V. Corinthians Licenciamentos LTDA and Desportos Licenciamentos LTDA: On May 18, 2000, Corinthians Licenciamentos, owners of the soccer team, filed a UDRP omplaint with WIPO, alleging that Sallen's domain name was similar to its rademark and that it has rights in Brazil to the name, "Corinthiao," the Portuguese equivalent of "Corinthians." A WIPO panel concluded that Sallen used the domain name in bad faith and ordered it transferred to the owners of the soccer team, Sallen filed a bid to have his use of the domain name declared legal under the ACPA,but the Court summarily dismissed it, citing lack of jurisdiction. That decision was reversed on appeal in December 2001. A 3-judge panel for the US Court of Appeals for the First Circuit found that the ACPA "grants domain name registrants who have lost domain names under administrative panel decisions applying the UDRP an affirmative cause of action in federal court for a declaration of nonviolation of the ACPA and for the return of the wrongfully transferred domain names." It slammed WIPO's interpretation from the UDRP, describing its fundamental structure as the "lowest common denominator of internationally agreed and accepted principles concerning the abuse of trademarks". Translation: The ACPA definitively trumps the UDRP.

CREDIT.COM

Ater receiving a letter in March 1999 from Creditcomm, of Virginia, demanding that CREDIT.COM change its name, the California company fought back by filing a million dollar lawsuit in federal court. The suit accuses Creditcomm of unfair trade practices. CREDIT.COM has been online since 1994 and provides credit reports, loan information and other services to 300,000 website visitors each month.

DATACENTER.COM

Sun Microsystems launched a trademarked enterprise service called DataCenter.com in Spring 1999, although the domain name has been registered to someone else since October 1997.

DB.CO.NZ

Dominion Breweries won its legal battle against a New Zealander who registered DB.CO.NZ in 1996 and subsequently attempted to sell it to the company for $25,000. Instead, the company initiated legal proceedings. The High Court awarded it the domain name plus substantial costs to the Plaintiff.

DELLPARTS.COM

U.S. District Court for the Western District of Texas, Cause No. A 00CA-101-SS: Dell Computer Corp. filed suit against 17companies and 6 individuals in 7 countries for registering domain names that use the "Dell" trademark. The defendants are accused of being cybersquatters with no intent to use the domain names, which include: The domain names include DELLBACKUP,COM, DELLMAC.COM, DELLSOLUTIONSLCOM, DELLPARTS.COM AMD 1-800-DELL.COM.

DIAMONDS.COM

The registrant of DIAMOND.COM filed suit in the Southern District of Florida against DIAMONDS.COM registrant Michael Rappaport for slander, cybersquatting and unfair competition. DeBeer's largest customer of rough diamonds, the Steinmetz Group, is DIAMOND.COM's principal investor. The Rappaport Report sets the guidelines for pricing diamonds in the wholesale industry. The plaintiff alleges deliberate and illegal opportunism in Rappaport's choise of domain name. Since both websites trade in diamonds, the lawsuit will turn on whether the domains are protectable service marks and whether there is a likelihood of confusion. If they are generic, neither party will be able to stop the other from using their respective domains.

  • Un-site-ly dissing match: Diamond vs. Diamonds, by Jared Paul Stern (NYPost - July 28, 2000)

DK64.COM

Nintendo of America filed lawsuitsin the U.S. District Court in Seattle against three individuals citing the new federal law banning cybersquatting. The suits cite not only trademark infringement but attempts to sell the domain names to Nintendo at extortionate prices. Registrants of PIKACHU.COM and DK64.COM were named in the litigation.

  • Game over, by Richard A. Martin Seattle Weekly - January 6-12, 2000)

DOLPHINS.COM, JETS.COM
In a $150,000 restraint of trade lawsuit filed at the end of 1999 in U.S. District Court in Toledo, Steve Weber alleged that the National Football League interfered with his right to sell DOLPHINS.COM and JETS.COM, two domain names he registered in 1997. The case was dismissed on July 31, 2000, but an appeal was filed immediately. In August, 20 filed a UDRP proceeding for these names.

DON-HENLEY.COM

Don Henley, a retired USAF Tech Sargent on disability, has the unfortunate coincidence of sharing the same name as a famous rock star. On September 22, 1999, attorneys for the musician sent a cease and desist to the US veteran for his registration of the DON-HENLEY.COM domain name. The vet's site is used to express his religious views but not to engage in commerce. The bigfoot letter includes the following comment: "We understand that Donald Henley may also be your personal name. However, that does not give you the right to use that name in a way that is likely to confuse the public, nor to preclude your client from exercising his trademark rights in connection with the domain name." See, e.g., John R. Thompson Co. vs. Holloway, 366 F.2d 108 (5th Cir. 1966) ("a man has no absolute right to use his own name, even honestly, as the name of his merchandise or his business. As such, it becomes a trademark or servicemark subject to the rule of priority in order to prevent deception of the public.") The registrant considers this claim "foolish and mean-spirited" and initiated a petition online to protest this attempt to usurp his rights to the name. Meanwhile, the musician has registered 19 variations of his name in .COM, .NET and .ORG.

DRREDDYSLAB.COM
The New Delhi High Court issued India's first permanent injunction against a cybersquatter, ruling that the registrant of DRREDDYSLAB.COM was trying to pass off' his website as that of Dr Reddy's Laboratories and asking NSI to transfer the domain name. The injunction also restrains the use of any other deceptively similar trademark or domain name for internet related services which may lead to dilution of distinctiveness of the plaintiff's trademark "Dr Reddy's".

EARTH.COM
In November 1998, Massachusetts clothing company sued the operator of a small hobbyist website at EARTH.COM, alleging unfair competition of Mondial Trading Company's trademark to market a line of shoes. EARTH.COM was established in 1994 and is not used for any commercial activiities. Mondial acquired the "earth" and "earth shoe" trademarks, which were registered in 1985. Mondial asked the court to transfer all interest in EARTH.COM to the trademark owner but dismissed (without prejudice) its litigation against the domain registrant in March 1999.
  • Mondial Trading Co. v. Tony Sanders, dba EARTH.COM, Notice of Dismissal, U.S. District Court of Massachusetts, 98 Civ 12376 WGY, (March 5, 1999)
  • Domain dispute hits earth, by Dan Goodin (CNet- February 12, 1999)
  • Mondial Trading Co. v. Tony Sanders, dba EARTH.COM, Complaint, U.S. District Court of Massachusetts, 98 Civ 12376 WGY, (November 19, 1998)

EASTDAYS.COM, EASTDAY.COM.CN
The Shanghai Second Intermediate People's Court tried the illicit competition case filed by Shanghai's Dongfang Net against Jinan's Dream Multimedia Network Technologies Development Center. Dongfang Net accused the Jinan firm of infringement on its domain name EASTDAY.COM, siteof the Chinese state-run news portal and demanded 1 million renminbi (US$120,773) in compensation for economic losses caused by Defendant's EASTDAYS.COM.
 
Elsewhere, EASTDAY.COM lost its effort to obtain EASTDAY.COM.CN, partially owned by a company headed by the son of China's president and backed by Beijing's two largest newspaper publishers. A Shanghai court ruled that cybersquatting had not been proven but did award EASTDAY.COM 300,000 yuan for infringement of its format and design.

EBAYAUST.COM
On February 9, 2001, online auctioneer Ebay sent a cease and desist letter to EBay Pty Ltd, a 20-year old Australian company. While the auctioneer claimed EBAY.COM.AU, the husband/wife launched a book publishing in December 1999 after registering EBAYAUST.COM. The auctioneer claims the domainname trades on its reputation and goowill. Athough the managing director of the Australian branch acknowledged the longstanding ownership of theEBay Pty trading name, he stood by EBay's demands.

ECARDS.COM
A California jury awarded $4-million in damages against a small Canadian company that established an electronic greeting card business, ECARDS.COM. The lawsuit was filed by the operator of E-CARDS.COM, who alleged unfair competition with its business as a purveyor of Internet greeting cards. Ecards questioned whether the U,S. judgment could be enforced in Canada and plans to appeal, explaining that the judge failed both to instruct the jury properly and barred its right to make an affirmative defense.

EDGARONLINE.COM
Edgar Online, Inc. operating a website at EDGAR-ONLINE.COM, filed suit against Dan Parisi for false designation of origin and unfair competition under the Lanham Act and trademark infringement under the New York statutes for use of EDGARONLINE.COM. Edgar is a trademark of the SEC. Parisi argued that the name was generic but the court held it had acquired secondary meaning and omitting a hyphen in the domain name did not dispell confusion. The court also held that defendant's fair use assertion was unlikely to succeed and granted Edgar Online a preliminary injunction. Parisi registered several hundred domain names, including WHITEHOUSE.COM.
  • Edgar Online, Inc. v. Dan Parisi, dba WallstreetEdge, Transcript of Opinion, USNJ, CIV 99-2288, (June 4, 1999)

ELIZABETHHURLEY.CO.UK
Actress Elizabeth Hurley sent a cease and desist letter to the domain registration company Easyspace, which allowed a customer to register ELIZABETHHURLEY.CO.UK. Visitors to the site are redirected to COCAINESEX.COM The letter threatened a $10M lawsuit if the "unauthoirized" registration of her name. British news reported that Easyspace plans to turn over to the actress a clutch of domain names it registered incorporating her name to pre-emptively protect her goodwill and reputation.

ENTREPRENEURPR.COM

Entrepreneur Media, Inc. (EMI) v. Scott Smith, EntrepreneurPR, 9th Circuit Court, Opinion, No. 00-56559 (February 11, 2002) - The publisher of Entrepreneur magazine claimed Scott Smith infringed its federally registered trademark "entrepreneur" by using the word n connection with his public relations company and domain name ENTREPRENEURPR.COM. . The district court, Cooper J., granted sum-mary judgment in favor of EMI but the Ninth Circuit reversed the injunction in part,and remanded the case for a trial on the merits. The appellate court held, "Although EMI has the exclusive right to use the trademark 'entrepreneur' to identify the products described in its registration, trademark law does not allow EMI to appropriate the word 'entrepreneur' for its exclusive use." The court noted, ""Similarity of marks or lack thereof are context specific concepts, In the Internet context, consumers are aware that domain names for different websites are quite often similar because of the need for language economy, and that very small differences matter." In May 25, 1999, EMI also filed a federal lawsuit against Greg McLemore, CEO of WebMagic, Inc., alleging trademark infringement, dilution, unfair competition and other causes of action due to the registration of ENTREPRENEURS.COM. EMI subsequently dropped the lawsuit.

EPIX.COM

Interstellar Starship Services, Ltd. v. EPIX, Inc., 983 F. Supp.1331, 45 U.S.P.Q.2d 1304 (D. Or. Nov 20, 1997): Epix, Inc. owns a federal trademark for "Epix," used in connection manufacturing and selling video imaging hardware and software. Interstellare Starship Services operated a website at EPIX.COM, used to publicize the activities of a cabaret theater group. Epix claimed use of the domain name constituted trademark infringement. The court granted a declarator judgment for plaintiff as thedomain name was used in connection with services sufficiently different from defendants to avoid likelihood of confusion. Appellate court reversed On July 19, 1999, saying that conflicting evidence regarding the trademark infringement complaint should be resolved by a jury, rather than by the district court on summary judgment but affirmed the district court's refusal to grant attorney's fees to Interstellar. A Writ of Certiorari, filed with the U.S. Supreme Court on November 30, 1999, raises key questions about whether the Commerce Clause and Lanham Act Federal Courts have jurisdiction over domain names.

EREFEREE.COM

A Wisconsin federal judge ruled against the registrant of EREFEREE.COM, reversing s the prior decision of an arbitrator from the UDRP. The ruling appears grant splaintiff Referee Magazine exclusive right to use the word "referee" in connection with online activities.

ERNESTANDJULIOGALLO.COM

E. and J. Gallo Winery v. Spider Webs Ltd., et al., Civ. Act. No. H-00-450 (S.D.) - Filed under the ACPA, the court held that the defendants had diluted the trademark name of plaintiff by registering ERNESTANDJULIOGALLO.COM and labelling the company the "Whiney Whinery". The lower ourt ordered defendants to transfer the domain name to pl E. and J. Gallo Winery and awarded t$25,000 in statutory damages to plaintiffs. Defendants had also registered approximately 2000 other domain names, including a names of famous companies, cities and buildings. On April 3, 2002, the Fifth Circuit Court of Appeals for the Southern District of Texas affirmed the summary judgment to Gallo on the ACPA and Texas Anti-Dilution Statute claims, the injunction, the order to transfer of the domain name to Gallo and the statutory damages awarded to Gallo. According to plaintiff's attorney, the decision was the first application of the ACPA for the 5th Circuit.The lower court's injunction prohibiting Spider Webs from registering any domain name that might be associated with the Ernest and Julio Gallo Winery was also affirmed,

ESTAMPS.COM

E-Stamp Corp. v. Dave Lahoti (C.D. CA, Case No. 00-9287) - C.D. Calif - A federal judge found Dave Lahoti guilty of trademark infringement and levied a permanent injunction and $305,615.20 against him for registering ESTAMPS.COM and variations. Lahoti offered to sell the domain name in response to an inquiry and then was branded as a cybersquatter by the potential purchaser. Lahoti explained he only responded to Stamp.com's inquiry to buy the domain name and that he was sued for putting up postage technology news discussing e-stamps. During the three-day trial, Lahoti characterized ESTAMPS as a generic term: " Even the USPS calls them 'e-stamps'." Lahoti has filed a notice of appeal with the Ninth U.S. Circuit Court of Appeals.

ESTREETJOURNAL.COM
General Counsel for the Wall Street Journal newspaper sent a cease and desist letter to Abdul Jaludi , the registrant of ESTREETJOURNAL.COM after he llisted the name for sale for $2,500. The letter claimed the domain name mimics the famous mark and diminishes the capacity of the trademark owner to identify goods and services on the Internet. The letter offered $70 reimbursement along with a registration transfer form.

ETOY.COM
On September 10, 1999, the online toy retailer EToys filed a lawsuit against the registrants of ETOY.COM, a site for digital artists in Europe. The publicly-traded toy seller (with a valuation of $6.5 billion) alleged trademark infringement, dilution, and unfair competition. The California Superior Court issued a preliminary injunction on November 29, 1999 along with $10,000 per day fines until the name was shut down.. ETOY.COM was registered in October 1995, more than two years before ETOYS.COM. Although the toy seller registered the trademark first, EToy claimed an earlier use in commerce. A public affairs representative for the artist group also said it had received several offers for the domain name from EToys, the latest for $536,000 in cash and shares. The injunction raised a firestorm of protest, including boycott requests and a new site at ETOYS-SUCKS.COM. EToy also launched a site at TOYWAR.COM to protest the reverse domain name hijacking of its domain name. The registrant said the dispute was exacerbated on December 10 when NSI placed the ETOY.COM domain name on hold, preventing its use for e-mail services not prohibited by the injunction. An appeal on the injunction was set for hearing on December 27, 1999. but Etoys proposed dropping all claims against each other in exchange for some control over the content of the ETOY.COM site. The art media group, balked at the proposal, leaving the door open for more legal action. Later, EToys dropped the limitation on content and offerred to pay $25K of the art group's legal costs. The dispute was settled on January 25, 2000, with the art group emerging victorious. As part of the settlement, EToys paid up to $40,000 in legal fees and other expenses the art group incurred during the dispute. Steps were taken to remove the block on the website, which had been temporarily shut down by court order, and both organizations dropped their lawsuits against each other. A year later, the artists group filed a complaint in U .S. District Court of Southern California in San Diego alleging that eToy, Inc. used a close imitation of the registered 'etoy' mark to sell its products and advertise its services on the Internet. The lawsuit seeks the toy retailer's domain name, ETOYS.COM.

EVISA.COM

Visa International Service Association v. JSL Corp, U.S.NV, CV-S-01-0294-LRH(LRL) - JSL registered EVISA.COM in August 1997for use on behalf of Eikaiwa Visa, an English language school in Japan. "Eikaiwa" means "English conversation". In August of 1999, VISA International Service Association filed a trademark application for "Evisa, launched its "Evisa " service and hired a private investigator to inquire whether EVISA.COM was for sale. JSL offered to sell the name rights to EVISA including the domain, for $250,000. In March 2001, Visa filed suit in Las Vegas federal court, charging JSL with trademark infringement of Visa's VISA and EVISA marks, and with cybersquatting and trademark dilution. The court cited Visa's four year delay in seeking a remedy and denied its motion for preliminary injunction. However, the court granted Visa's Motion for Summary Judgment and directed JSL to cease using EVISA.COM and deactivate the website. JSL filed a motion in opposition to the motion for summary judgment. The court ruled that the website--run by Joe Orr from his apartment-- "diluted" Visa's trademark, even though the site uses the word "visa" in its ordinary dictionary definition, not in relation to credit card services. EFF has appealed the injunction against JSL Corp's use of EVISA.COM for a multilingual website

FANDOM.TV

Carol Burrell, a Sci-Fi devotee, established some websites as a way to unite the members of the fan community she valued. She compiled her fan devotions into a more comprehensive television site, FANDOM.TV, rexploring a wide range of shows tht had a cult following. The domain name was registered in July 2000. On October 30, 2000, she received a cease and desist letter from the legal representatives of Fandom.com, a California company with formidable financial prowess. The dictionary definition of "fandom" dates the word back to 1903, Fandom, Inc., abandoned the mark "Fandom" on May 1, 2000, but re-applied November 14, 2000, after sending the cease and desist to FANDOM.TV's administrator and two weeks after she applied for a trademark registration for FANDOM.TV. To date, Burrell has received a second cease and desist with a higher offer--$1,500--for the domain name. A letter signed by "Fox" was sent to mailing lists urging a boycott of FANDOM.COM. A website at FANDOMFIGHTSBACK.COM has been developed to protest the domain dispute.

FISHER.COM

In April 2001, the National Arbitration Forum decided that a registrant must transfer a domain back to Complainant, Fisher Controls, although the registration had been made from the available pool. Complainant argued that the registrar dropped the 1996 domain registration in error, since the renewal payment was misapplied to a different account. Respondent registered FISHER.COM on February 13, 2001 and applied the following day for a U.S. trademark to use the "fisher" family name as a domain name for geneological research and education. The ArbForum held that subsequent resigration of a domain name by anyone other than the Complainant indicates bad faith, absent evidence to the contrary. Furthermore, Respondent's failure to put the disputed domain name to legitimate use (with only a placeholder on the home page) also provides evidence of bad faith (i.e., passive holding is bad faith). After the UDRP decision, the Registrant, Registral.com, filed suit against both the Complainant and NAF in Federal Court in the Southern District of Texas. In July 2001, the judge issued a preliminary injunction and ordered FISHER.COM to be transfered Fisher Controls, effectively affirming the NAF decision.

FORDFIELD.COM, FORDFIELD.NET

Ford Motor Co filed a federal lawsuit against entrepreneur Michael Ouellette in 2001, accusing him of trademark infringement and cybersquatting. Ouellette registered FORDFIELD.COM and FORDFIELD.NET and acquired the name Ford Field Inc. for a t-shirt and grass seed business in Michigan. In August 2002, Ford settled the lawsuit just days before the $350 million Detroit Lions stadium named Ford Field was scheduled to open. The automaker paid Ouellette an undisclosed sum for the domain names and corporate name.

FSA.CO.UK

Findlay Steele, a family run software company, registered FSA.CO.UK in April 1997. Six months later, the UK's Securities & Investments Board was renamed as the Financial Services Authority (FSA). It registered FSA.GOV.UK and offered to buy Findlay Steele's domain name. In January 2001, FSA demanded the domain name to prevent confusion and prevent the confidential information it received. Nominet announced its decision in favor of the financial watchdog on September 21, 2001 although it is undisputed that Findlay Steele registered the name in good faith. On appeal, an independent expert recommended overturning Nominet's decision. Theexpert wrote in the opinion that reasonable steps were taken to minimize confusion.

F*GENERALMOTORS.COM

Ford Motor Company v. 2600 Enterprises and Emmanuel Goldstein, aka Eric Corley, Eastern District of Michigan, Civ. No. 01-60084DT: General Motors sent a cease and desist letter on October 11, 2000 to 2600 Magazine, a controversial quarterly hacker publication which registered FUCKGENERALMOTORS.COM The letter claimed the domain registration constituted trademark infringement. Several months later, Ford Motor Co. filed suit against the magazine for pointing the website to its own home page, claiming the site tarnished its trademark. In December 2001, the U.S. District Court dismissed Ford's case against 2600 Magazine because the website involved no visible commercial goal, and thus Ford could prove no trademark infringement. Ford intends to file an appeal.

FURRYTAILS.COM

Furrytails Ltd. a U.K. based distributor of plush toys, lost its lawsuit to acquire the FURRYTAILS.COM domain name registered by American Andrew Mitchell. In January 2001, Furrytails Ltd. lost in a NAF UDRP hearing and, based on new evidence, filed another challengewith a 3-member WIPO arbitration panel. Mitchell operates an identically-named business, but is also a former employee of the U.K. distributor.

GNUTELLA.DE, NEWTELLA.DE

The German unit of Nutella won a ruling January 17, 2001 from a court in Cologne that prevents the owners GNUTELLA.DE and NEWTELLA.DE from using those domain names. The maker of the popular nougat treat expressed concerns that the company's global image would be damaged "if millions of Internet users would associate the word 'Nutella' with a virtualconglomerate of copyright pirates and friends of child pornography...." Original documentation suggests the name was a combination of the Nutella brand and an acronym for the free Linux operating system as a "sexy product name that makes you hungry with cravings for chocolaty love."

GOOGLE.NO

Google, Inc. sued the Norweigan company SMSfun, registrant of GOOGLE.NO, alleging trademark infringement and breach of the marketing law. SMSfun registered the domain name in February 2001, while the search engine company registered Google as a Norweigan trademark in December of that year. Oslo Namsrett ruled in favour of SMSfun stating that Google, Inc. has not been able to show risk of damage or defamation if SMSfun discontinues to use the domain name. SMSfun uses the domain to market sunglasses.

GOPHILLIES.NET

Four professional sports leagues filed suit against the operator of a free email service hoping to bar the use of league trademarks in email addresses such as ''johndoe@gophillies.net.'' The suit against Canadian businessman Jeff Burgar was filed in U.S. District Court in New York. Burgar's FLAIRMAIL.COM site offers Web users e-mail addresses featuring variations of 175 pro sports teams (such as ASTROS1.COM), plus hobbies, geographic locations, historic figures and sexually oriented names.

GWBUSH.COM
A satirical website at GWBUSH.COM caused the Texas governor and likely presidential candidate to call for "limits to freedom" and issue a cease and desist letter citing misappropriation of text and images from GEORGEWBUSH.COM. The politician also filed a complaint on May 3, 1999 with the Federal Elections Commission. The brouhaha drew media attention worldwide. Documents and links to press reports at http://www.rtmark.com/. In April 2000, the FCC dismissed the complaint against the parody site, saying it was too low a priority to warrant the use of the Commission's resources but did not address the larger issue of political activity by individual voters on the Web

Also in May of 1999, millionnaire presidential candidate Steve Forbes registered 19 domain names suggesting Jeb Bush, his rival's brother, as his potential vice-presidential running mate. Among the domains Forbes registered are: STEVEANDJEB.COM, FORBESANDJEBBUSH.NET, FORBES-JEBBUSH2000.COM.

HARDROCK.COM, HARDROCKCAFE.COM

Hard Rock Cafe International alleged that defendant Peter Morton breached his License Agreement by failing to convey the HARDROCK.COM and HARDROCKHOTEL.COM domain names in the sale of the Hard Rock Cafe and operating the Hard Rock Hotel in Las Vegas. The court held that Morton did not breach the License Agreement, denied plaintiff's claim as the domain name was registered after the purchase agreement was executed. Insufficient evidence was shown to support an award of damages.

  • Hard Rock Cafe International v. Peter A. Morton and Hard Rock Hotel, Opinion and Order, SDNY, 97 Civ 9483 RPP (June 4, 1999)

HARRODSBANKING.COM, HARRODSBANK.COM, HARRODSAMERICA.COM

An in rem action alleging vioation of the ACPA, a U.S. District Court Judge ruled that Harrods (Buenos Aires) Ltd. acted in bad faith when it registered more than 60 domain names bearing the Harrods name. Harrods (Buenos Aires) Ltd. formerly operated a department store in Argentina that was opened by the owners of Harrods in 1912. Harrods disassociated itself with the store before 1960, but the store continued using the name until at least 1995, Although Harrods (Buenos Aires) Ltd. owns trademarks for the Harrods name in several South American nations, the judge rejected the company's claim that ithe registration of the domain names was a "fair use". No goods or services were offered through any of registrant's domain names, and the court held that registrant intended to create likelihood of confusion in order to divert plaintiff's customers for its own commercial gain, In August 2002, a US court of appeals upheld the lower court‚s ruling granting domain name rights to UK retailer Harrods,

HARRYPOTTERGUIDE.CO.UK

Warner Bros., which acquired rights to Harry Potter movies and merchandise from author J.K. Rowlings, sent cease and desist letters to hundreds of unofficial fan sites and other pages that used the Harry Potter moniker in their domain names, which prompted some to organize a boycott of Harry Potter paraphernalia in protest. But the media giant backed down from its crusade against the 15-year-old owner of HARRYPOTTERGUIDE.CO.UK , whom it had accused of infringing on the company's intellectual property rights. The subsidiary of AOL Time Warner, has agreed to rely on the teenager's good faith and assurance that will continue only noncommercial use of the domain name.

HARVARD*.COM,
NOTHARVARD.COM,
RADCLIFFE*. COM

NOTHARVARD.COM filed a pre-emptive suit against Harvard University seeking a declaratory judgment from the court that its domain name is noninfringing and protectable under trademark law. NOTHARVARD is an Austin, Texas, company that sells Web-based technology to other sites wishing to offer free online courses to their users. The same individual registered NOTNOTHARVARD.COM, NOTHARVARDUNIVERSITY.COM and NOTHARVARDU.COM. The preemptive lawsuit was seen as a publicity stunt by the academic institution, which nonetheless filed a countersuit. In September 2000, the year-old company changed its name to Powered, Inc.

President and Fellows of Harvard College v. Michael Rhys, D. Mass., No. 99CV12489RCL, (December 6, 1999): A week after the U.S. outlawed trademark cyberpiracy, Harvard University filed a civil suit in US District Court in Boston against two individuals and the company Web-Pro, which registered 65 Internet domain names incorporating the words Harvard and Radcliffe. Among the disputed domains listed for resale by Web-Pro for a minimum of $10,000 apiece are: HARVARDYARDSALE.COM, HARVARD-LAWSCHOOL.COM, VIRTUALHARVARD.COM,HARVARDGRADUATESCHOOL.COM and RADCLIFFECOLLEGE.COM. A cease and desist letter from Harvard's legal counsel, which went unanswered, preceded the lawsuit, which asked the court to preliminarily and permanently enjoin the defendants from using the Harvard or Radcliffe marks.

HATFIELD.COM

HQM, LTD. and Hatfield inc. v. William Hatfield, Memorandum Opinion, U.S.MD, Civ AW-99-2093 (December 2, 1999) - In one of the most blatant examples of reverse domain name hijacking, registered owners of the "Hatfield" mark, used in connection with meat products, filed suit against William B. Hatfield over his registration of HATFIELD.COM in February 1995. Although the domain name was used solely for email, the plaintiffs alleged service mark infringement, unfair competition, and federal dilution. Since Hatfield failed to respond to letters from HQM, the corporation alleged his purpose was to hold the domain name hostage. The court said plaintiffs' claims failed as a matter of law and rejected every one, including the property-right-in gross model. The plaintiffs have filed an appeal.

  • HQM, LTD. and Hatfield inc. v. William Hatfield, Memorandum Opinion, U.S.MD, Southern Division Civ AW-99-2093,71F.Supp.2d 500, 1000U.S. Dist Lexis 18598 (December 2, 1999)

HEALTHNET.ORG

SatelLife, a Massachusetts non-profit that operates a satellite communications network for healthcare professionals around the world. and Health Network, a California HMO, each claim the right to use the name HealthNet in their Internet addresses. The HMO uses both HEALTHNET.COM and HEALTHNET.NET and invoked NSI's domain dispute policy in August 1999 to claim rights to HEALTHNET.ORG, too. HEALTHNET.ORG was registered in 1993 to SatelLife, whereas HEALTHNET.COM was first used by the HMO in 1996 but the mark was registered in 1981. SatelLife filed an action in federal court in Boston to preserve its Internet identifier, two days before NSI would have placed the HEALTHNET.ORG domain name on hold status. SatelLife says Health Net's lawyers will not negotiate without a "gag" agreement to not talk to the press or share information about the negotiations. This case highlights the escalating conflict of whether commercial use can trump non-commercial rights to the same name.

HONDA.NET

American Honda Motor Co. filed suit against a Florida Web designer who registered the domain name HONDA.LNET in 1996 to develop a search engine and link site for fans of the popular auto maker. Filed in federal court for the Central District of California, the lawsuit seeks $100,000 in damage payments And a court order forcing the registrant to transfer the domain name and HONDACRAFT.COM to the auto company. Alleging trademark dilution, infringement, and cyberpiracy, the suit argues that Honda Motor Corp. spent hundreds of millions of dollars promoting itself and should have the exclusive right to reap the profits from those efforts. The registrant claims the search engine was a non-commercial effort to help people find other Honda sites.

HOOPLA.COM

HOOPLA.COM, a domain registered by writer and designer Leslie Harpold, was transferred to another party on the authority of a fradulent faxed request. Apparently the registrar has learned nothing from the SEX.COM litigation in which a party also acquired a domain name based merely upon a forged document faxed to the Network Solutions. Harpold has retained a Florida lawyer.

HURRICANE.COM

Coral Technologies Inc., was sued in New York District Court for "trademark violations" in its use of HURRICANE.COM by Hurricane Technology Partners. Hurricane registered the mark in 1996 for advertising services via an on-line electronic communication network. Coral registered HURRICANE.COM in 1994 to establish a site with weather links.

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DOMAIN
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